When is an Inventor not an Inventor?

In Nartron Corp. v. Schukra U.S.A., Inc., the Federal Circuit considered the standards for adding an alleged co-inventor to an existing patent. The case serves as a reminder that the simple fact that more than one person contributes to a development project does not mean that every member of the project should be a named inventor on patents that issue as a result.

Schukra makes lumbar support systems for automobile seats. Schukra contracted with Nartron for Nartron to design a control system that would allow existing car seats to massage undoubtedly grateful passengers. A Schukra employee, one Benson, provided the Nartron project team with the idea of an "extender for a lumbar support adjustor" that eventually found its way in to a third-level dependent claim in US Patent 6,049,748. Benson was not one of the named inventors on the patent.

Nartron designed the control system, secured the '748 patent, and eventually sued Schukra and a Schukra supplier for patent infringement. The supplier co-defendant raised the issue of whether Benson was an inventor who should have been named on the patent and also joined as a plaintiff to the infringement suit; since Benson was a Schukra employee and contributed to the invention as such, this would have made it difficult for Nartron to sue Schukra (as well as the supplier).

The district court agreed with the co-defendant, and granted its motion to dismiss, holding that Benson was a co-inventor of the '748 patent based on his conception of the "extender element" of that patent's multi-dependent claim 11. Nartron appealed.

The Federal Circuit reviewed Benson's contribution to the invention disclosed in the '748 patent, and reversed, concluding that "[a]ny contribution Benson made to the invention in claim 11 by contributing an extender was insignificant and therefore prevents Benson from attaining the status of a co-inventor."

Several things contributed to this finding. First, Benson's contribution of "the extender for a lumbar support adjustor" was "insignificant when measured against the full dimension of the invention of claim 11," not only because it was in the prior art, but also because it was already part of existing car seats. In that sense, Benson's suggestion "amounted to the exercise of ordinary skill in the art."

Second, the focus of the '748 patent was not so much on the structure of the seat (of which Benson's extender was a physical part), but on the control module that operates the seat.

Finally, the complete invention of claim 11 included all of the features of claims 1, 5, and 6, from which that claim depended. The court noted that Benson would not necessarily achieve the status of co-inventor simply by contributing the idea expressed in claim 11 if he did not contribute to any of claims 1, 5, or 6.

The takeaway: Take a careful look at who contributed to the invention that is to be patented and what their respective contributions were; not every project team member is necessarily an inventor. Those who merely suggest obivious applications for the team's inventions may not be entitled to be co-inventors.