Clear as Mud: An Empirical Analysis of the Developing Law of Joint Inventorship in the Federal Circuit

0383-0416_COHEN_081313 (DO NOT DELETE) 9/11/2013 1:43 PM CLEAR AS MUD: AN EMPIRICAL ANALYSIS OF THE DEVELOPING LAW OF JOINT INVENTORSHIP IN THE FEDERAL CIRCUIT Eric Ross Cohen † Naming the inventors on a patent is more than a formality: Doing so incorrectly may significantly hinder the patent holder’s ability to enforce his rights or may render the patent invalid altogether.1 The named inventor receives much more than recognition; he is the owner of the patent and the only one who may assert the accompanying property rights against alleged infringers.2 As such, there are strict requirements in place for who qualifies as the inventor for a patent.3 When there is clearly only a single, sole inventor, these issues tend not to cause much confusion beyond priority disputes.4 However, when multiple people work together and produce a “joint invention,” these rights and restrictions take on new significance. Courts must frequently analyze and weigh the individual contributions of the putative inventors and determine whose acts are sufficient for “inventorship” and whose acts fall short.5 This nuanced and often seemingly arbitrary © 2013 Eric Ross Cohen. † J.D. Candidate, 2014, University of California, Berkeley School of Law. 1. See 35 U.S.C. §§ 102(f), 256 (2006); see also infra Section I.C. Except where otherwise noted, all statutory references are pre- Leahy-Smith America Invents Act, Pub. L. No. 11229, 125 Stat. 284 (2011) [hereinafter “America Invents Act”]. 2. This assumes there is no assignment agreement to a third party. 35 U.S.C. § 261 (“[P]atents shall have the attributes of personal property.”); § 262 (“In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention . . . without the consent of and without accounting to the other owners.”); see also W. Fritz Fasse, The Muddy Metaphysics of Joint Inventorship: Cleaning Up after the 1984 Amendments to 35 U.S.C. § 116, 5 HARV. J.L. & TECH. 153, 156 n.19 (1992) (“[A]n invention will initially belong to the inventor(s), but there may be an immediate duty to assign to the employer which is enforceable in court.” (quoting Richard C. Witte & Eric W. Guttag, Employee Inventions, 71 J. PAT. & TRADEMARK OFF. SOC’Y 467, 469 (1989))). 3. See, e.g., 35 U.S.C. § 101 (requiring “invention” or “discovery”), § 102(g) (requiring “conception” and “reduction to practice” of invention). 4. See, e.g., Coleman v. Dines, 754 F.2d 353 (Fed. Cir. 1985); Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367 (Fed. Cir. 1986). 5. See, e.g., Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223 (Fed. Cir. 1994); Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466 (Fed. Cir. 1997); Monsanto Co. v. Kamp, 269 F. Supp. 818 (D.D.C. 1967); Mueller Brass Co. v. Reading Indus., Inc., 352 F. Supp. 1357 (E.D. Pa. 1972). 0383-0416_COHEN_081313 (DO NOT DELETE) 9/11/2013 1:43 PM 384 [Vol. 28:383 BERKELEY TECHNOLOGY LAW JOURNAL evaluation process has given the law of joint inventorship the reputation of being “one of the muddiest concepts in the muddy metaphysics of the patent law.”6 Nevertheless, a clear joint inventorship doctrine is critical both for institutional researchers as well as entrepreneurs seeking to structure their operations and business alliances.7 Because most modern research and development of patentable inventions takes place in institutional settings— where large teams of people work alongside one another—the commercial and scientific importance of a predictable joint invention doctrine is of vital importance to a multitude of modern enterprises.8 This Note will analyze all of the joint inventorship cases that have come before the United States Court of Appeals for the Federal Circuit since its inception in 19829 and will describe the evolution of the doctrine over the past three decades. Specifically, the Note evaluates the court’s jurisprudence since the 1984 congressional amendment of § 116, which regulated the naming of multiple inventors and eased the process for listing groups working on a single patentable idea on the same patent.10 Since the 1984 amendment, the court has decided sixty-five published cases.11 Predictably, in the vast majority of these cases the court evaluated whether the putative inventor had made the requisite contribution to the invention in order to qualify as a joint inventor.12 Even well-reasoned cases, standing alone, tend to affirm the impression that the law is unclear and unhelpful for practitioners guiding researchers and institutions because of the highly case-specific nature of the analysis. However, when read as a unified body of law, the Federal Circuit’s joint inventorship jurisprudence reveals a cohesive narrative and a 6. Mueller Brass, 352 F. Supp. at 1372. 7. See Lawrence M. Sung, Collegiality and Collaboration in an Age of Exclusivity, 3 DEPAUL J. HEALTH CARE L. 411, 435–39 (2000) (arguing that the current joint inventorship jurisprudence discourages collaboration and has caused the scientific community to become overly “cautious”). 8. Id.; see also Joshua Matt, Searching for an Efficacious Joint Inventorship Standard, 44 B.C. L. REV. 245, 254 (2002) (discussing the “modern paradigm” of institutional research). Matt explains that joint inventorship claims have become “an attractive option for disgruntled scientists suing either their former research partners or former employers. Likewise, defendants accused of infringement might endeavor to find an unnamed, overlooked and minor contributor to defeat a claim of infringement.” Id. at 247. 9. Federal Courts Improvement Act of 1982, Pub. L. No. 97-164, 96 Stat. 25. 10. Patent Law Amendments Act of 1984, Pub. L. No. 98-622, § 104(a), 98 Stat. 3383, 3384–85 (amending 35 U.S.C. § 116); see Matt, supra note 8, at 246 (explaining that the revision to § 116 “lowered the bar for joint inventorship status”); infra Section I.B. 11. See infra Appendix. 12. See generally Aaron X. Fellmeth, Conception and Misconception in Joint Inventorship, 2 N.Y.U. J. INTELL. PROP. & ENT. L. 73 (2012) (describing the difference between contribution to an individual claim versus the invention as a whole). 0383-0416_COHEN_081313 (DO NOT DELETE) 9/11/2013 1:43 PM 2013] EMPIRICAL ANALYSIS OF JOINT INVENTORSHIP LAW 385 set of guiding principles. Ultimately, despite the doctrine’s “muddy” reputation, this Note describes that a predictable and coherent joint inventorship doctrine exists in patent law. Part I of this Note presents an overview of the current state of the law of joint inventorship with an emphasis on the major doctrinal developments over the preceding thirty years.13 This Part offers a brief but encyclopedic grounding in the rules that currently govern § 116 and § 256.14 Part II presents the results of the empirical analysis.15 This Part describes the historical development of joint inventorship jurisprudence16 and comes to three conclusions: in recent years the Federal (...truncated)