Nox Medical Ehf v. Natus Neurology Inc.
MEMORANDUM ORDER Granting 31 MOTION to Dismiss Count IV of Counterclaims. Signed by Judge Richard G. Andrews on 6/20/2016. (nms)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
NOX MEDICAL EHF,
Civil Action No. 15-709-RGA
NATUS NEUROLOGY INC.,
Presently before the Court is Plaintiffs Motion to Dismiss Count IV of Defendant's
Counterclaims. (D.I. 31). The issues have been fully briefed. (D.I. 32, 36, 37). For the reasons
set forth herein, Plaintiffs motion to dismiss is GRANTED.
On August 17, 2015, Plaintiff filed this action, alleging infringement of U.S. Patent No.
9,059,532 ("the '532 patent").· (D.I. 1). In Count IV of its counterclaims, Defendant seeks a
"Declaratory Judgment oflnvalidity and/or Unenforceability for Failure to Comply With the
Rules Governing U.S. Stage National Entry of a PCT Application." (D.I. 29 at 43). On May 4,
2016, Plaintiff filed this motion to dismiss. (D.I. 31).
On December 24, 2012, the applicant of the '532 patent filed U.S. Patent Application No.
13/806,834 ("the '834 App."), which claimed priority from International Patent Application No.
PCT/IS2011/050010. (D.I. 29 if 83). On January 15, 2013, the PTO mailed the applicant a
"Notice of Missing Requirements Under 35 U.S.C. § 371 In The United States
Designated/Elected Office," specifically informing the applicant that the " [o] ath or declaration of·
the inventors, in compliance with 37 CFR l.497(a) and (b)" "MUST be furnished within the
time period set forth." (Id.
if 84 (emphasis in original)). On March 18, 2013, the applicant
responded to the notice and supplied an oath and declaration made by inventor Kormakur Hlini
The PTO subsequently accepted the '834 App. and identified March
18, 2013 as the "date of completion of all 35 U.S.C. 371 requirements." (Id.
OnJanuary 19, 2016, Plaintiff filed, pursuant to 37 C.F.R. § 1.324 and 35 U.S.C. § 256, a
"Statement to Correct Inventorship," seeking to add Sveinbj6m H6skuldsson as a named
inventor on the '532 patent. (Id.
if 89; D.I. 32, Ex. A). The PTO issued a Certificate of
Correction on February 2, 2016, adding Mr. H6skuldsson as an inventor. (D.I. 29 if 23).
Defendant.contends that "[b]ecause Mr. Hokuldsson was not identified as an inventor on
the claimed subject matter ... and did not submit an inventor's oath or declaration to the PTO
within the statutory time period .... , the '532 Patent was obtained in contravention of the
[Patent Act], ... [and] should be judged invalid and/or unenforceable." (Id.
Plaintiff argues that the Federal Circuit's holding in Aristocrat Techs. Aus. PTY Ltd. v.
Int'l Game Tech., 543 F.3d 657 (Fed. Cir. 2008), forecloses invalidity defenses premised on a
failure to satisfy§ 371. (D.I. 32 at 9-12). Plaintiff also argues that§ 256 bars a "counterclaim
for declaratory judgment of invalidity based on incorrect inventorship under § 3 71 (c)(4) and
(d)." (Id. at 12).
I do not need to decide whether, in light of Aristocrat, an applicant's noncompliance with
§ 371(c)(4) maybe used as an invalidity defense. Since the defects of the '532 patent have been
rectified by a Certificate of Correction issued pursuant to§ 256, Count IV of Defendant's
counterclaims fails as a matter of law.
Section 256 provides that "[t]he error of omitting inventors or naming persons who are
not inventors shall not invalidate the patent in which such error occurred if it can be corrected as
provided in this section." 35 U.S.C. § 256 (post-AIA). 1 Defendant argues that the "statute
allows for correction of inventorship only to validly issued patents." (D.I. 36 at 20). Since the
'834 App. should have been deemed abandoned pursuant to§ 37l(d), Defendant argues, "the
'532 patent 'was stillborn"' and therefore not validly issued. (Id. (quoting Roper Corp. v. Litton
Sys., Inc., 757 F.2d 1266, 1270 (Fed. Cir. 1985)). Thus, according to Defendant,§ 256 is
Defendant's reading must be rejected. The text of§ 256 does not limit its application in
any way, aside from the requirement that the error "can be corrected as provided in this section."
35 U.S.C. § 256(b) (post-AIA). Defendant also fails to cite any cases supporting its
interpretation. I do not find this surprising, as Defendant's reading violates basic principles of
In the pre-AIA regime, both§ 111 (domestic applications) and§ 371 (applications
entering national stage from a PCT international application) require compliance with 35 U.S.C.
§ 115. 35 U.S.C. §§ 11 l(a)(2)(C), 371(c)(4) (pre-AIA). Section 115 provides that "[t]he
applicant shall make oath that he believes hiinself to be the original and first inventor of the
[invention] for which he solicits a patent; and shall state of what country he is a citizen." 35
U.S.C. § 115 (pre-AIA). 2 Both§ 111 and§ 371 describe the consequences for failure to comply
with § 115. Section 111 provides that, "[ u]pon failure to submit the ... oath ... , the application
shall be regarded as abandoned." 35 U.S.C. § 11 l(a)(4) (pre-AIA). Section 371 provides that
The AIA amendments to 35 U.S.C. § 256 took effect on September 16, 2012. The AIA provides that
those amendments "shall apply to proceedings commenced on or after that effective date." Leahy-Smith
America Invents Act, Pub. L. No. 112-29, sec. 20(1) (2011). Since the proceedings to correct inventorship
began on January 19, 2016, post-AIA § 256 applies.
"When an invention is made by two or more persons jointly, they shall apply for patent jointly and each
make the required oath ...." 35 U.S.C. § 116 (pre-AIA); see also 37 C.F.R. §§ 1.45(a), l.497(b)(l) (preAIA).
the "[f]ailure to comply with the requirements [of subsection c(4)] shall be regarded as
abandonment of the application." 35 U.S.C. § 371(d) (pre-AIA).
Under Defendant's interpretation of the statute, any applications which failed to name a
joint inventor-and therefore failed to supply an oath from that joint inventor-would be
deemed "stillborn" and ineligible for correction under§ 256. The "shall not invalidate the
patent" language of§ 256(b) would thus be largely inoperative. In other words, if Defendant's
interpretation were adopted, a significant portion of§ 256 "would be rendered insignificant, if
not wholly superfluous." TRW Inc. v. Andrews, 534 U.S. 19, 31 (2001) (quotation marks
omitted). Such a reading, which also fails to find any support in the statutory language, must be
Here, when filing a national stage application pursuant to 35 U.S.C. § 371, the applicant
of the '834 App. omitted Mr. Hoskuldsson as inventor. While that omission violated§ 371(c)(4)
and§ l.497(b)(l), the PTO issued the patent. Since that "error of omitting [an] inventor" was
"corrected as provided in[§ 256]," it "shall not invalidate [the '532 patent]." 35 U.S.C. § 256(b)
(post-AIA). Defendant's counterclaim fails as a matter oflaw and must be dismissed.
For the reasons stated above, Plaintiff's motion to dismiss (D .I. 31) is GRANTED.
It is SO ORDERED this
lg_ day of June, 2016.
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