Friday, September 01, 2017

CARDIAQ largely prevails at CAFC

The case is about a joint venture gone bad:

The joint work ended after about one year, but
during that year, Neovasc secretly launched its own TMVI
project. Neovasc eventually secured a patent on its
TMVI, U.S. Patent No. 8,579,964, without naming anyone
from CardiAQ as co-inventors.


In May 2009, shortly after the collaboration ended,
Neovasc filed a provisional patent application that ultimately
issued as the ’964 patent, which describes and
claims a TMVI with many of the same features as CardiAQ’s
design. Neovasc plans to market its device under
the brand name “Tiara.”1 CardiAQ discovered that Neovasc
was developing its own device in December 2011,
when Neovasc’s patent application was published
. The
’964 patent issued in November 2013. CardiAQ brought
this suit against Neovasc in June 2014, seeking correction
of inventorship under 35 U.S.C. § 256 and damages and
injunctive relief for, among other things, misappropriation
of trade secrets and breach of the non-disclosure

The outcome at the CAFC:

The district court held that CardiAQ had also shown by
clear and convincing evidence that its employees were
entitled to be named as co-inventors on the ’964 patent.
Id. at *15–19. The court denied CardiAQ’s motion for
injunctive relief in part; specifically, it refused to require
Neovasc to suspend its TMVI project for eighteen months.
Id. at *7–10. On Neovasc’s appeal as to inventorship,
misappropriation, and damages, and CardiAQ’s crossappeal
as to the denied injunctive relief, we agree with
the district court’s well-reasoned decisions and affirm.

Of the law

To prevail under 35 U.S.C. § 256, the plaintiff
must show, by clear and convincing evidence, that the
unnamed but alleged co-inventor made a contribution to
the conception of at least one claim of the patent “that is
not insignificant in quality, when that contribution is
measured against the dimension of the full invention.”
Acromed Corp. v. Sofamor Danek Grp., Inc., 253 F.3d
1371, 1379 (Fed. Cir. 2001) (quoting Pannu v. Iolab Corp.,
155 F.3d 1344, 1351 (Fed. Cir. 1998)). It is not enough
under that standard if the alleged co-inventor “merely
explain[ed] to the real inventors well-known concepts
and/or the current state of the art.” Id. (quoting Pannu,
155 F.3d at 1351); see Ethicon, 135 F.3d at 1460. Here,
the parties have not differentiated Dr. Quadri from Mr.
Ratz in the co-inventorship dispute, and they have fo-
cused on claim 1, the only independent claim of Neovasc’s
The jury in this case, having been asked to make an
advisory factual determination, found that Dr. Quadri
and Mr. Ratz contributed to the conception of the ’964

The Ewen appears:

Caterpillar Inc. v. Sturman Indus., Inc., 387 F.3d 1358, 1377 (Fed. Cir.
2004) (“[A] person will not be a co-inventor if he or she
does no more than explain to the real inventors concepts
that are well known [in] the current state of the art.”
(second alteration in original) (emphasis added) (quoting
Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed.
Cir. 1997));


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