CAFC affirms SD Texas in Vapor Point case. Inventorship issues.

The background:


Vapor Point, L.L.C., Keith Nathan (“Nathan”), and
Kenneth Matheson (“Matheson”) (collectively “Vapor
Point”) sued Elliott Moorhead (“Moorhead”), NanoVapor
Fuels Group, Inc., and Bryant Hickman (“Hickman”)
(collectively “NanoVapor”) in the United States District
Court for the Southern District of Texas, seeking to have
Nathan and Matheson recognized as joint inventors under
35 U.S.C. § 256 on NanoVapor’s U.S. Patent Nos.
7,727,310 (“the ’310 patent”) and 8,500,862 (“the ’862
patent”). NanoVapor responded by suing Vapor Point,
seeking to have Moorhead recognized as a joint inventor
under 35 U.S.C. § 256 on Vapor Point’s U.S. Patent Nos.
7,740,816; 7,803,337; 8,337,585; 8,337,604; 8,337,763 and
for declaratory relief regarding inventorship of
NanoVapor’s ’310 and ’862 patents.



One of the issues was "stealing" technology:


NanoVapor alleged that Nathan and Matheson “plotted
to steal [NanoVapor’s] technology and destroy
[NanoVapor’s] business when [Nathan and Matheson]
developed the commercial embodiment of NanoVapor’s
patent-pending concept.” Id. According to NanoVapor,
“an outside group conducted due diligence testing that
exceeded expectations,” after which Nathan and Matheson
“decided to steal the technology and associated trade
secrets.” Id. NanoVapor asserts that Nathan and Matheson
“each requested a 20% stake in NanoVapor, which
[NanoVapor] rejected.” Id.



Some complexities:


In addition to its requests to correct the inventorship
of NanoVapor’s patents, Vapor Point also asserted a
number of state law claims against NanoVapor: commonlaw
fraud, fraud by nondisclosure, unjust enrichment,
tortious interference, misappropriation of trade secrets,
and the Texas Theft Liability Act. First Amended Complaint
at ¶¶ 61–104 (Counts III–VIII), Vapor Point (S.D.
Tex. Aug. 16, 2013), ECF No. 151. NanoVapor, in turn,
asserted a number of affirmative defenses to the claims in
Vapor Point’s First Amended Complaint, including that
“[Vapor Point] cannot prevail because [Vapor Point has]
an obligation to assign any invention to NanoVapor Fuels
Group, Inc.”



Some of the technology



In that decision, the district court addressed the “four
key concepts in the ’310 and ’862 patents”: (1) using
biodiesel as a vapor capture medium; (2) removing VOCs
from a vessel containing fuel vapors and introducing them
into a vapor capture medium (such as biodiesel); (3) using
a particulatizer to create micro-sized VOC particles for
treatment; and (4) using diffusion plates to distribute
micro-sized particles across the vapor capture medium.
Id. at 11. The district court found that Nathan contributed
to the conception of the first three of these four key
concepts and that Matheson contributed to the third and
fourth concepts. See id. at 16–24. The district court
denied NanoVapor’s claim that Moorhead should be a
named inventor on Vapor Point’s patents. See id. at 24–
26.


Of inventorship


NanoVapor argues, inter alia, that the district court’s
determinations on inventorship were not supported by
clear and convincing evidence. See Appellant’s Br. at 23–
30.
For the most part, we disagree. Given the evidence
adduced, we find that the district court was correct to
conclude that both Nathan and Matheson should be listed
as inventors on the ’310 patent, which is the only patent
asserted in NanoVapor’s infringement claim. All inventors,
even those who contribute to only one claim or one
aspect of one claim of a patent, must be listed on that
patent. See Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d
1456, 1460 (Fed. Cir. 1998) (“[A] co-inventor need not
make a contribution to every claim of a patent. A contribution
to one claim is enough.”) (citation omitted). The
district court’s findings that Nathan contributed to three
of the four key aspects of the invention are supported by
substantial evidence. And, substantial evidence supports
the district court’s conclusion that Matheson contributed
to the conception of the use of diffusion plates, as recited
in claims 11 and 12 of the ’310 patent. While we agree
with NanoVapor that the district court erred in finding
that Matheson contributed to the conception of the use of
a particulatizer to create micro-sized VOC particles for
treatment and the use of diffusion plates to distribute
micro-sized particles across the vapor capture medium,
that error does not change the validity of the ultimate
judgment because Matheson was still properly found to be
an inventor of the diffusion plates.2
These findings are sufficient to support the district
court’s inventorship judgment. Co-inventors need not
“physically work together or at the same time,” “make the
same type or amount of contribution,” or “make a contri-
bution to the subject matter of every claim of the patent.”
35 U.S.C. § 116. “[I]nventorship is determined on a claimby-
claim basis.” Trovan, 299 F.3d at 1302 (citing Ethicon,
135 F.3d at 1460).



As a footnote, LBE once was confronted by a scientist
who asserted that conception, in the absence of reduction to practice,
was insufficient to establish inventorship. Note the text of
the decision:


And, substantial evidence supports
the district court’s conclusion that Matheson contributed
to the conception of the use of diffusion plates, as recited
in claims 11 and 12 of the ’310 patent.

(...)

Matheson was still properly found to be
an inventor of the diffusion plates