Co-Inventor's Triumph: Federal Circuit Affirms Contribution To Hose Patents

• Jurisdiction: United States,Federal
• Law Firm: NovoTech Patent Firm
• Subject Matter: Intellectual Property, Patent
• Author: Mr Babak Akhlaghi
• Published date: 24 July 2023

The Federal Circuit upheld a decision of the district court to amend inventorship, determining that the alleged co-inventor made significant contributions to the conception of at least one claim in each contested patent. Blue Gentian, LLC v. Tristar Products, Inc., Case Nos. 21-2316; -2317 (Fed. Cir. June 9, 2023) (Prost, Chen, Stark, JJ.)

Blue Gentian, LLC initiated a lawsuit against Tristar Products, Inc., alleging infringement of multiple patents related to an expandable hose, all of which listed Michael Berardi as the sole inventor. In response, Tristar lodged a counterclaim to rectify the asserted patents' inventorship. Following an evidentiary hearing, the district court concluded that Gary Ragner, a non-party, should have been listed as a co-inventor on all the asserted patents. As a result, the district court ruled in favor of Tristar's inventorship counterclaim, ordering the amendment of the patents under 35 U.S.C. ' 256. Blue Gentian appealed.

In 2011, Ragner Technology Corporation, founded by Mr. Ragner, was in search of investors to launch its MicroHose. In pursuit of this, Mr. Ragner and others met with Mr. Berardi, the named inventor of the disputed patents, at Mr. Berardi's residence. During this meeting, Mr. Ragner proposed three key elements to Mr. Berardi: (1) the attachment of inner and outer tubes solely at the ends, (2) an outer tube made of fabric, and (3) an elastic inner tube capable of retracting the hose without requiring a metal spring. These three crucial elements were incorporated in at least one claim of each of the asserted patents. Mr. Berardi filed his first patent application for an expandable hose in November 2011, less than three months after the meeting. Blue Gentian sued Tristar, licensee of Mr. Ragner's patents, for infringement in 2012 for infringement of Gentian's patents. Tristar counterclaimed to correct inventorship. After an evidentiary hearing, the district court concluded that Mr. Ragner should have been a named inventor on all of the asserted...