Wednesday, March 26, 2014

CAFC in Stoneeagle: "Otherwise, patent attorneys and patent agents would be co-inventors on nearly every patent."

From StoneEagle v. Gilman:

But even where a federal question is raised, the federal courts’ jurisdiction is still limited by the “Cases” or “Controversies” requirement of Article III of the Constitution. Prasco, 537 F.3d at 1335. Relevant to the present case, the Supreme Court has explained that the phrase “case of actual controversy” in the Declaratory Judgment Act refers to this constitutional requirement. See MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007). Accordingly, to demonstrate a sufficient contro- versy for a declaratory judgment claim that satisfies the requirements of Article III, “the facts alleged, under all the circumstances, [must] show that there is a substantial controversy, between parties having adverse legal inter- ests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” Id.

In this case, StoneEagle’s declaratory judgment claim involves both ownership and inventorship. However, ownership is typically a question of state law. Jim Arnold Corp. v. Hydrotech Sys., Inc., 109 F.3d 1567, 1572 (Fed. Cir. 1997) (“[T]he question of who owns the patent rights and on what terms typically is a question exclusively for state courts.”). In contrast, inventorship is a federal question. For example, Univ. of Colo. Found., Inc. v. Am. Cyana- mid Co., 196 F.3d 1366, 1372 (Fed. Cir. 1999). Thus, jurisdiction in this case turns on whether StoneEagle’s complaint alleges a sufficient controversy concerning inventorship. It does not.


Here, StoneEagle only alleges that Gillman “suddenly and falsely claimed that it is his patent, that he wrote the patent, that it is on his computer, and that he ‘authored’ or ‘wrote’ it, or words to that effect.” J.A. 80. These allegations may give rise to a dispute concerning ownership, but they do not implicate inventorship. Indeed, StoneEagle does not allege that Gillman claimed he invented the health care payment system, much less conceived of the idea or contributed to its conception. Rather, StoneEagle only alleges that Gillman claims to have written the patent application.
This court has stated that assistance in reducing an invention to practice generally does not contribute to inventorship. E.g., Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460, 1465 (Fed. Cir. 1998). In this case, the most favorable inference from the record in favor of StoneEagle shows only that Gilllllman assisted in constructively reducing an invention to practice. See Solvay S.A. v. Honeywell Int’l, Inc., 622 F.3d 1367, 1376 (Fed. Cir. 2010). Those activities confer no more rights of inventor- ship than activities in furtherance of an actual reduction to practice. Otherwise, patent attorneys and patent agents would be co-inventors on nearly every patent. Of course, this proposition cannot be correct.

Bottom line: Because StoneEagle did not allege an actual controversy over the inventorship of the ’686 patent, the district court lacked jurisdiction over StoneEagle’s declaratory judgment claim.


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