Weaver v. Houchin ? Inventorship Lessons

Case No. 2011-1327 (Lourie, Bryson, Moore) (nonprecedential)

Keeping with the topic of inventorship after the previous post on Bard, the dispute in the recent nonprecedential case Weaver v. Houchin offers some supplementary lessons for inventors left out of an application. There have also been some intriguing issues lately involving third-parties and inventors trying to interfere with issued patents, addressed in the lessons below.

Robert Houchin is the sole named inventor on US Patent 7,316,614, directed to sweepstakes methods and apparatuses. During prosecution, four interlopers unsuccessfully attempted to be unilaterally added as inventors in the application. Following issuance of the ?614 patent, the same interlopers brought an action under ? 256 to be added as inventors. Three of the four dropped the suit, leaving just one interloper plaintiff, Johnney Weaver. The district court granted summary judgment for Houchin, finding that Weaver had not shown inventorship. Weaver appealed . . .

The four interlopers all testified to each other?s co-inventorship; essentially each plaintiff corroborated the claims of involvement in the ?614 patent?s methods and apparatuses. The omitted inventors also proffered related sweepstakes manuals and photographs showing various related games invented by some of them. Third-party testimony from a witness not involved in the invention of the ?614 patent also corroborated the co-inventor allegations.

The Federal Circuit agreed that none of this evidence gave rise to a question of fact that would defeat summary judgment; indeed, the opinion suggests the evidence was nearly worthless. As for the plaintiffs? self-corroboration, this is generally insufficient in inventorship disputes:

without corroboration, the oral testimony cited by Mr. Weaver is simply insufficient as a matter of law to meet the clear and convincing standard of proof required to establish co-inventorship. ?Throughout the history of the determination of patent rights, oral testimony by an alleged inventor . . . is regarded with skepticism, and as a result, such inventor testimony must be supported by some type of corroborating evidence.? Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993).
. . . Mr. Weaver, along with his co-plaintiffs, submitted his evidence of co-inventorship to the court in the ?Plaintiffs? Description of Each Plaintiff?s Contribution to the Patent and Supporting Evidence? (Inventorship Description). Most of the evidence, however, is testimony from Mr. Weaver and his alleged co-inventors, which is legally insufficient proof of corroboration. Medichem, 437 F.3d at 1171.

The court also dismissed the third-party testimony as irrelevant, requiring that corroborating testimony include personal knowledge of a purported co-inventor?s contribution, like direct presence or participation in the inventive process.

The manuals and photographs of related gaming systems were also insufficient; the sweepstakes disclosed in these pieces of evidence were either invented by other plaintiffs (not Weaver) or had no proven tie to the subject matter of the ?614 patent. Particularly, Weaver had testified that ?[t]here may be one thing . . . that I kind of really contributed to? ? ?a credit card style card, and that was kind of my suggestion,? but the undated photograph of Weaver?s system did not show anything about a credit card style card as used in the ?614 patent. Because of the legal insufficiency of Weaver?s evidence of co-inventorship in the ?614 patent, the Federal Circuit upheld summary judgment dismissing Weaver?s claim.

Lessons: To avoid losing out on inventorship, the take-away here is as simple as making sure to document contributions to an invention, particularly when working with independent or separately-employed collaborators to whom you don?t otherwise owe a duty of assignment. Post-hoc testimony, even if corroborated by third parties and other non-joined inventors, will not suffice. Indeed, the Weaver panel seemed to very much be looking for corroboration from a named inventor or someone intimately involved in the conception and patenting process. Several other self-authenticating (or even merely sufficiently credible) documenting means could also work ? a timely email sent through a third-party server to a co-inventor describing contributions, dated and complete manuals or documentation of conception or possession of the invented subject matter, a routine and secure inventor?s journal describing contribution on relevant dates, etc.
On the flip-side, as discussed in the Bard and Falana posts, applicants and assignees should vigilantly identify anyone who could be considered an inventor (or to whom inventive subject matter has been disclosed) and either ensure those individuals have an assignment obligation (preferred) or have good evidence that those individuals are not inventors.

Also, in this vein, Brian Schar at American IPA brings up an interesting point from the recent Yahoo-Facebook patent dust-up, where a former Yahoo inventor is suggesting that his asserted patents are ?nonsensical.? Perhaps assignees should further consider binding all identified potential inventors not only to duties of assignment, but also duties of cooperation, or at least non-disparagement, in procuring ?sensical? patents. I?m no First Amendment or criminal lawyer, but I wonder how such non-disparagement agreements and 18 USC 1001 requirements would play out for an inventor who believes (or comes to believe) that his or her patent is invalid.

Comment: No surprises here for me ? the ?614 patent had been the subject of a petition to make special based on ongoing infringement. I?d speculate that the interlopers were somehow loosely involved with the inventor Houchin, saw a gravy train, and tried to hop aboard. Summary judgment was a good conductor for that train.

When the interlopers tried to get added before the USPTO, the Office denied them on the ground that it does not ever arbitrate third-party inventorship disputes. Could Weaver have filed an identical application, naming himself and all others as inventors, to provoke an interference? Would inventorship be decided or corrected in such a proceeding under 37 C.F.R. ? 1.48(j)? I really have no idea if this is possible, but if it is, then it appears the USPTO does arbitrate third-party inventorship disputes. Further, under the new derivation proceedings, it seems all the USPTO will do is referee inventorship.

Source: http://alleylegal.com/2012/03/weaver-v-houchin-inventorship-lessons/

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