Strong Evidence Leads To Correction Of Inventorship On Issued Patent

• Published date: 18 July 2023
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Adriana Burgy and Stacy Lewis

Holding

In Blue Gentian, LLC v. Tristar Prods. Inc., No. 21-2316, 21-2317 (Fed. Cir. June 9, 2023), the Court of Appeals for the Federal Circuit ("the Federal Circuit") affirmed a decision of the District Court of New Jersey ordering a correction of inventorship on six asserted patents under 35 U.S.C. '256.

Background

Blue Gentian sued Tristar for infringement of U.S. Patent Nos. 8,291,941 ("the '941 patent"), 8,291,942 ("the '942 patent"), 8,479,776 ("the '776 patent"), 8,757,213 ("the '213 patent"), D722,681 ("the '681 design patent"), and D724,186 ("the '186 design patent"). Michael Berardi was the sole named inventor on each. Id. at *2. Tristar counterclaimed to correct inventorship, arguing that a Gary Ragner, a nonparty, should have been named as a co-inventor. Id. at *2.

Claim 1 of the '941 patent, exemplary of the utility patent claims, reads:

1. A hose comprising:

a flexible elongated outer tube constructed from a fabric material having a first end and a second end, an interior of said outer tube being substantially hollow;

a flexible elongated inner tube having a first end and a second end, an interior of said inner tube being substantially hollow, said inner tube being formed of an elastic material;

a first coupler secured to said first end of said inner and said outer tubes;

a second coupler secured to said second end of said inner and said outer tubes with the inner and outer tubes unsecured to each other between first and second ends; . . .

Id. at *3-4 (emphasis in original).

In 2011, Ragner, Berardi, and several others met to discuss investing in an expandable hose product. Id. at *5. Ragner, with a background in physics and engineering, had previously designed many expandable hoses and was a named co-inventor on patents relating to expandable hoses. Id. Berardi, with a social science background, had no previous experience in designing hoses. Id. Berardi, however, testified that he watched a video...