Cassidian Communications, Inc. v. microDATA GIS, Inc.
Filing
225
MEMORANDUM OPINION AND ORDER. Signed by Judge Rodney Gilstrap on 04/20/2015. (nkl, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
CASSIDIAN COMMUNICATIONS, INC.,
Plaintiff,
v.
MICRODATA GIS, INC., et al.,
Defendants.
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Case No. 2:12-CV-162-JRG
MEMORANDUM OPINION AND ORDER
Before the Court is Airbus DS Communications’1 Motion to Correct Inventorship of U.S.
Patent No. 6,744,858 (“’858 Patent”) According to 35 U.S.C. Section 256 and Federal Rule of
Procedure 60(b) Motion to Vacate the Judgment That Claims of the Patent are Invalid (Dkt.
No. 206, filed August 26, 2014.) The Court also takes notice of the briefing in the appellate
record that resulted in the related remand to this Court from the United States Court of Appeals
for the Federal Circuit. For the following reasons, the Court GRANTS-IN-PART Airbus’s
Motion as set forth below.
APPLICABLE LAW
Though 35 U.S.C. § 102 has since been amended by the America Invents Act, the historic
version of the statute that governs the ’858 Patent provides that “a person shall be entitled to a
patent unless . . . (f) he did not himself invent the subject matter sought to be patented.”
35 U.S.C. § 102(f) (2011). “Upon [] a finding of incorrect inventorship, a patentee may invoke
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Plaintiff Cassidian Communications, Inc. changed its name to Airbus DS Communications on
August 1, 2014. (Dkt. No. 206-1 ¶ 1.) For consistency, the Court will refer to Plaintiff as Airbus.
[35 U.S.C. § 2562] to save the patent from invalidity.” Pannu v. Iolab Corp., 155 F.3d 1344,
1350 (Fed. Cir. 1998). “Accordingly, the patentee must then be given an opportunity to correct
inventorship pursuant to that section.” Id. “[A] patent with improper inventorship does not
avoid invalidation simply because it might be corrected under section 256.” Id. “Rather, the
patentee must claim entitlement to relief under the statute and the court must give the patentee an
opportunity to correct the inventorship.” Id. “If the inventorship is successfully corrected,
section 102(f) will not render the patent invalid.” Id. “On the other hand, if the patentee does
not claim relief under the statute and a party asserting invalidity proves incorrect inventorship,
the court should hold the patent invalid for failure to comply with section 102(f).” Id. at
1350-51. “On such a finding and absent correction, the patent would be rendered invalid under
section 102(f).” Id. at 1353.
While there are other sections of 35 U.S.C. that broadly address the correction of a patent
(e.g. §§ 254, 255 for mistakes by the PTO and the applicant), it is worth observing that § 256
was separately and specifically enacted for the correction of named inventors. The Federal
Circuit has discussed the change created by the enactment of § 256:
Before the enactment of section 256, patentees and their assignees
committed inventorship errors at their peril; misjoinder or
nonjoinder of an inventor rendered the patent invalid. Section 256
affords the opportunity to correct the patent. S.Rep. No. 1979,
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35 U.S.C. § 256 (2014), which is shown as amended by the America Invents Act, provides as
follows for the “Correction of named inventor”:
(a) Correction.—Whenever through error a person is named in an issued patent as the inventor, or
through error an inventor is not named in an issued patent, the Director may, on application of all the
parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a
certificate correcting such error.
(b) Patent Valid if Error Corrected.—The 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. The court before which such matter is called in question may order correction of the patent
on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.
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82nd Cong., 2nd Sess. at 7 (1952), U.S.Code Cong. &
Admin.News 1952, pp. 2394, 2401. If the patentees and their
assignees agree, correction can be had on application to the
Commissioner. In the event consensus is not attained, however, the
second paragraph of section 256 permits redress in federal court.
See P.J. Federico, Commentary on the New Patent Act, 35
U.S.C.A. 1 (1954) (“If [the parties] do not concur, the correction
can only be made on order of a court.... [S]ection 256 ... gives a
court authority to order correction”).
MCV, Inc. v. King-Seeley Thermos Co., 870 F.2d 1568, 1570 (Fed. Cir. 1989). Further, the
Federal Circuit has held, in addressing the prior version of the statute, “[t]he legislative history of
the 1982 amendments to 35 U.S.C. §§ 116 and 256 strongly suggests that Congress intended to
permit correction of inventorship, without regard to the conduct of the named inventor, as long
as there was no deceptive intention on the part of the true inventor.” Stark v. Advanced
Magnetics, Inc., 119 F.3d 1551, 1554 (Fed. Cir. 1997) (citation omitted). The Federal Circuit
also held that construing “the term ‘error’ [in 35 U.S.C. § 256] to include all varieties of
mistakes—honest and dishonest—harmonizes well with the title 35 policy of seeking to reward
the actual inventors of technological advances.” Id. This Court observes that the current version
of the statute removed the language—found in the preceding version of the statute—specifying
that the “error arose without any deceptive intention on [the inventor’s] part.”
“Incorrect inventorship is a technical defect in a patent that may be easily curable.”
Winbond Electronics Corp. v. Int'l Trade Comm'n, 262 F.3d 1363, 1371 (Fed. Cir.) opinion
corrected, 275 F.3d 1344 (Fed. Cir. 2001) (citing Canon Computer Sys., Inc. v. Nu–Kote Int'l,
Inc., 134 F.3d 1085, 1089 (Fed.Cir.1998)). “The Patent Act accords each patent a presumption of
validity.” Id. (citing 35 U.S.C. § 282 (1994)). “This presumption embraces as well the notion
that a patent’s named inventors are the true and only inventors.” Id. (citing Hess v. Adv.
Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed.Cir.1997)). “A Certificate of Correction
extends that presumption to the corrected document.” Id. “To rebut this presumption, a party
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challenging patent validity for omission of an inventor must present ‘clear and convincing,
corroborated evidence’ that the correction was improper.” Id. (citing C.R. Bard, Inc. v. M3 Sys.,
Inc., 157 F.3d 1340, 1352 (Fed. Cir. 1998)).
“Absent fraud or deceptive intent, the correction of inventorship does not affect the
validity or enforceability of the patent for the period before the correction.” Viskase Corp. v.
Am. Nat. Can Co., 261 F.3d 1316, 1329 (Fed. Cir. 2001) (citing Stark v. Advanced Magnetics,
Inc., 119 F.3d 1551, 1554–56 (Fed. Cir. 1997)).
BACKGROUND
This Court held a jury trial in this case which resulted in the jury returning a unanimous
verdict on December 20, 2013. At the trial, Defendants challenged the validity of the ’858
Patent for improper inventorship on the basis that Mr. William R. Whitehurst, whose name was
not listed in the ’858 Patent, is an inventor of the claimed technology. Airbus argued that Mr.
Whitehurst was not a co-inventor, and Airbus presented statements from each of the inventors
shown on the face of the ’858 Patent, stating that Mr. Whitehurst made no contribution to the
claimed invention. Nonetheless, the jury found that Airbus’s patents were invalid and not
infringed. (Dkt. No. 155, filed December 20, 2013.)
Airbus then sought, among other things, judgment as a matter of law to overturn the
jury’s finding of invalidity. At trial, Defendants presented three separate theories challenging the
validity of the asserted claims of the ’858 Patent: (1) improper inventorship; (2) anticipation; and
(3) lack of written description or enablement.
The Court granted Airbus’s motion as to
anticipation and lack of written description or enablement but denied Airbus’s motion as to
improper inventorship, finding “that a verdict of improper inventorship is not against ‘the great
weight of the evidence.’” (Dkt. No. 201 at 11, 24.) The Court also denied Airbus’s motion for a
new trial on the same issue. (Id.)
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On August 26, 2014, after the Court denied Airbus’s motions for a new trial and for
judgment as a matter of law on invalidity, Airbus filed the instant Motion seeking to correct the
inventorship of the ’858 Patent and relieve it from the judgment of invalidity. Airbus’s Motion
included declarations by each of the inventors on the face of the ’858 Patent, testifying that they
believed that their statements were correct at the time of filing, that they understood the jury had
found that Mr. Whitehurst was a co-inventor (and the Court had concluded the jury had sufficient
evidence), and that they had no disagreement with Airbus’s request to add Mr. Whitehurst as an
inventor. On August 29, 2014, Airbus also submitted a petition to correct the inventorship of the
’858 Patent to the United States Patent and Trademark Office (“USPTO”).
Airbus then filed its appeal to the United States Court of Appeals for the Federal Circuit
on October 6, 2014. Airbus sought an indicative ruling on the instant Motion under Federal Rule
of Civil Procedure (“F.R.C.P.”) § 62 on October 16, 2014. (Dkt. No. 216.) This Court denied
Airbus’s motion for an indicative ruling and carried its ruling on the instant Motion pending a
determination by the Federal Circuit. (Dkt. No. 218.) Following a motion on appeal, the Federal
Circuit remanded “for the district court to decide Airbus’s motion to vacate the invalidity
judgment pursuant to Fed. R. Civ. P. 60” having stated the following:
Airbus brought this suit, charging Defendants-Appellees with
infringement of U.S. Patent No. 6,744,858. The district court
entered judgment against Airbus based on a jury verdict that a coinventor, William R. Whitehurst, was omitted from the patent.
After Airbus filed its Notice of Appeal, the United States Patent
and Trademark Office issued a Certificate of Correction naming
Mr. Whitehurst as an inventor.
Airbus argues that the invalidity judgment should be vacated
because the facts supporting it have changed. Under the
circumstances, the court will grant Airbus’s request for a limited
remand to allow the district court to determine whether or not to
vacate the invalidity judgment only pursuant to Fed. R. Civ. P. 60.
There is no basis to vacate the non-infringement judgment. We
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note that Airbus has stated that if the invalidity judgment is
vacated, it will dismiss the appeal in its entirety.
(Dkt. No. 223 at 2; Fed. Cir. Case No. 15-1037, Dkt. No. 28.)
ANALYSIS
Airbus’s Motion asks the Court to order the inventorship of the ’858 patent corrected
under 35 U.S.C. § 256 and then to vacate the Court’s judgment that the patents are invalid for
improper inventorship under F.R.C.P 60(b)(5)3 or 60(b)(6).4 (Mot. at 1.) As discussed above,
Airbus simultaneously pursued a certificate of correction with the USPTO under § 256. The
USPTO granted Airbus’s petition to correct inventorship on November 5, 2014 and issued a
Certificate of Correction, naming Mr. Whitehurst as a co-inventor, on January 6, 2015. For
purposes of the Court’s limited remand under F.R.C.P 60, the Court accepts the Certificate of
Correction of inventorship under 35 U.S.C. § 256(a), finding no evidence in the record currently
before the Court that there is clear and convincing evidence of error in the USPTO’s issuance of
the Certificate of Correction.5
At a cursory level, Airbus’s Motion might appear to present a difficult and seemingly
circular proposition. Airbus’s argument, paraphrasing the language of Pannu, is essentially as
follows: if (1) the patentee does not claim relief under § 256; (2) the party asserting invalidity
proves incorrect inventorship; and (3) the court holds the patent invalid for failure to comply
with § 102(f), then (A) the patentee can then seek a certificate of correction of inventorship
3
F.R.C.P 60(b)(5) provides that “On motion and just terms, the court may relieve a party or its
legal representative from a final judgment, order, or proceeding for the following reasons: . . . . (5) the
judgment has been satisfied, released, or discharged; it is based on an earlier judgment that has been
reversed or vacated; or applying it prospectively is no longer equitable.”
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F.R.C.P 60(b)(6) provides that “On motion and just terms, the court may relieve a party or its
legal representative from a final judgment, order, or proceeding for the following reasons: . . . . (6) any
other reason that justifies relief.”
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In so doing, the Court does not make an independent finding under 35 U.S.C. § 256(b).
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under § 256; (B) if the patentee obtains a certificate correcting inventorship, the error under
§ 102(f) is eliminated; (C) the patentee may then move the Court to vacate its judgment of failure
to comply with § 102(f) under Rule 60; and (D) the Court can grant the motion, vacating its
judgment of invalidity for failure to comply with § 102(f). Considering § 256, this outcome
should not be surprising. It is clear to this Court—as it has been to the other Courts that have
addressed § 256—that Congress intended § 256 to broadly allow the correction of errors in
inventorship, and if correctable, such errors should not alone bring about invalidity.
The Court finds that the circumstances justify relief under F.R.C.P. 60(b)(6). The Court
has found that the only ground under which the ’858 Patent’s invalidity was supported was under
35 U.S.C. § 102(f) for the failure to name Mr. Whitehurst as an inventor. The Court has been
presented with a Certificate of Correction for the ’858 Patent that now includes Mr. Whitehurst
as an inventor. The Court therefore GRANTS-IN-PART the portions of Airbus’s Motion
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requesting relief under F.R.C.P. 60(b)(6). The Court, utilizing its authority under F.R.C.P.
60(b)(6), hereby relieves the Plaintiff from the Court’s judgment of invalidity of the U.S. Patent
No. 6,744,858 for improper inventorship. The Court’s judgment of invalidity, but only as to
invalidity, is therefore VACATED. The Court notes that the scope of Court’s remand is limited,
and, in making its determination, the Court does not decide any other issue, such as
enforceability.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 20th day of April, 2015.
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RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE
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