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Egenera, Inc. v. Cisco Systems, Inc.

United States District Court, D. Massachusetts

December 3, 2018




         A central dispute in the parties' dispositive motions is whether Peter Schulter is an inventor of the asserted '430 patent. The salient events are as follows.

         Schulter joined Egenera on October 2, 2000. On April 20, 2001, Egenera submitted to the United Statement Patent and Trademark Office (PTO) the provisional application to which the '430 patent claims priority, listing Schulter amongst its eleven inventors. The utility application was subsequently filed on January 4, 2002, and the '430 patent issued in due course on June 12, 2007. Egenera instituted this patent infringement action against Cisco in August of 2016, identifying Schulter as an inventor of the '430 patent in its initial and supplemental disclosures in March, May, and June of 2017.

         In April of 2017, Cisco petitioned the Patent Trial and Appeal Board (PTAB) for inter partes review (IPR) of the '430 patent, contending, inter alia, that certain claims of the '430 patent are obvious in view of prior art (including a patent (Grosner) with a priority date of November 2, 2000). On August 16, 2017, Egenera responded to the IPR petition, arguing, in part, that Grosner did not constitute prior art because the '430 patent was earlier conceived. (The '430 patent is governed by the first-to-invent rules predating the America Invents Act.) In support, Egenera relied on a document entitled “Egenera Interframe I/O Architecture, ” dated September 29, 2000, and authored by inventor Max Smith, which according to Egenera, fully described the patented invention.

         The Interframe I/O Architecture document precedes Schulter's employment by Egenera. On September 11, 2017, Egenera petitioned the PTO to remove Schulter as an inventor of the '430 patent. In support, Egenera offered a declaration signed by Schulter on August 15, 2017, stating that he was erroneously named as an inventor. The remaining ten inventors also declared that they either agreed with or did not disagree with Schulter's removal. The PTAB denied institution of the IPR on November 13, 2017, without making any finding as to the priority of the '430 patent. On January 15, 2018, the PTO approved Egenera's petition to remove Schulter as an inventor.

         Cisco contends that Schulter is an inventor of the '430 patent, and that his exclusion invalidates the patent. See Checkpoint Sys., Inc. v. All-Tag Sec. S.A., 412 F.3d 1331, 1338 (Fed. Cir. 2005) (“If nonjoinder of an actual inventor is proved by clear and convincing evidence, a patent is rendered invalid.”), quoting Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998) (citation omitted in Checkpoint). (While not at issue for the purposes of this opinion, Cisco also alleges that Egenera submitted false affidavits to remove Schulter in order to antedate critical prior art and avoid invalidation before the PTAB.) For its part, Egenera maintains that Schulter was innocently misnamed as an inventor on the '430 patent applications, that it realized the error in the process of responding to the IPR petition and has since corrected it, and that further, should Schulter now prove to be a bona-fide inventor, the remedy is correction, not invalidation. See id. (“If a patentee can demonstrate that inventorship can be corrected as provided by [35 U.S.C. § 256], a district court must order correction of the patent, thus saving it from being rendered invalid.”), quoting Pannu, 155 F.3d at 1350.

         Putting aside allegations of inequitable conduct, the court agrees with Cisco as a threshold matter that Egenera may not now seek to restore Schulter as an inventor to rectify any nonjoinder. Under 35 U.S.C. § 256, a certificate of correction may issue “[w]henever . . . through error an inventor is not named in an issued patent . . . .” While as a general rule correction of inventorship is liberally permitted, see Coleman v. Dines, 754 F.2d 353, 357 (Fed. Cir. 1985), the circumstances here are constrained by the doctrine of judicial estoppel. “The doctrine of judicial estoppel prevents a party from asserting a claim in a legal proceeding that is inconsistent with a claim taken by that party in a previous proceeding.” New Hampshire v. Maine, 532 U.S. 742, 749 (2001), quoting 18 Moore's Federal Practice § 134.30 (3d ed. 2000).

[S]everal factors typically inform the decision whether to apply the doctrine in a particular case: First, a party's later position must be “clearly inconsistent” with its earlier position. Second, courts regularly inquire whether the party has succeeded in persuading a court to accept that party's earlier position, so that judicial acceptance of an inconsistent position in a later proceeding would create “the perception that either the first or the second court was misled[.]” . . . A third consideration is whether the party seeking to assert an inconsistent position would derive an unfair advantage or impose an unfair detriment on the opposing party if not estopped.

Id. at 750-751 (citations omitted). Egenera's suggestion that Schulter may be relisted as an inventor as circumstances may dictate is “clearly inconsistent” with its September 2017 petition to the PTO, submitted with affidavits from Schulter and the ten remaining inventors, that Schulter's name was erroneously listed. The PTO accepted these representations, and in January of 2018, granted Egenera's petition to modify the inventorship. As is clear from the chronology, supra, disavowing Schulter enabled Egenera to advance an earlier priority date before the PTAB (Egenera could not have plausibly asserted a priority date prior to a joint inventor's hire date). Having persuaded the PTO that Schulter is not an inventor of the '430 patent, Egenera cannot now resurrect his inventorship.[1] See Yeda Research and Dev. Co. v. Imclone Sys. Inc., 443 F.Supp.2d 570, 623-624 (S.D.N.Y. 2006) (Having persuaded the PTO that a certain figure disclosed a certain claim element in obtaining the patent, “[the court] will not permit defendants to argue now that their assertions to the PTO were incorrect.”).

         Turning to the substance of the dispute, “[i]nventorship is a question of law.” Vapor Point LLC v. Moorhead, 832 F.3d 1343, 1348 (Fed. Cir. 2016).

Conception is the touchstone of inventorship, the completion of the mental part of invention. It is “the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” Conception is complete only when the idea is so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.

Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227-1228 (Fed. Cir. 1994) (citations omitted).

The conceived invention must include every feature of the subject matter claimed in the patent. Nevertheless, for the conception of a joint invention, each of the joint inventors need not “make the same type or amount of contribution” to the invention. Rather, each needs to perform only a part of the task which produces the invention. On the other hand, one does not qualify as a joint inventor by merely assisting the actual inventor after conception of the claimed invention. One who simply provides the inventor with well-known principles or explains the state of the art without ever having “a firm and definite idea” of the claimed combination as a whole does not qualify as a joint inventor. . . . Furthermore, a co-inventor need not make a contribution to every claim of a patent. A contribution to one claim is enough. Thus, the critical question for joint conception is who conceived, as that term is used in the patent law, the subject matter of the claims at issue.

Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998) (citations omitted). “Because [conception] is a mental act, courts require corroborating evidence of a contemporaneous disclosure that would enable one skilled in the art to make the ...

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