Thursday, November 18, 2021

Wagner fails to corroborate inventorship claim in Ashline case

The outcome

Julie G. Wagner appeals the United States District Court for the Western District of North Carolina’s summary judgment denying Ms. Wagner’s claim to be added as a joint inventor of U.S. Patent No. 8,272,074 under 35 U.S.C. § 256, as well as her related state law claims of unjust enrichment, fraud, and constructive trust. Because we agree with the district court that Ms. Wagner presented insufficient evidence to corroborate her claim of joint inventorship as a matter of law, we affirm.

Of interest

An alleged co-inventor’s contribution to the conception of the claim must be proven by clear and convincing evidence. Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1461 (Fed. Cir. 1998). It is well established in our case law that a party claiming joint inventorship must proffer evidence corroborating her own testimony. This is because oral testimony of the alleged co-inventor on its own will generally not suffice as “clear and convincing” evidence of joint inventorship. Price v. Symsek, 988 F.2d 1187, 1194–95 (Fed. Cir. 1993). Rather, the purported inventor has the burden of providing “some evidence of independent corroboration” of their contribution to the conception of the invention as claimed. Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985). The corroboration requirement “prevent[s] fraud, by providing independent confirmation of the [alleged] inventor’s testimony” and “provides an additional safeguard against courts being deceived by [alleged] inventors who may be tempted to mischaracterize the events of the past through their testimony.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1171 (Fed. Cir. 2006); see also Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed. Cir. 1997). This requirement is applied as a “rule-of-reason” demand for independent evidence, and there is “no single formula that must be followed in proving corroboration.” Price, 988 F.2d at 1195 (quoting Berry v. Webb, 412 F.2d 261, 266 (C.C.P.A. 1969)). The issue of whether an inventorship claim is sufficiently corroborated is a “question of fact, with the district court’s determination subject to review for clear error.” Fleming v. Escort Inc., 774 F.3d 1371, 1377 (Fed. Cir. 2014). The district court granted summary judgment of no joint inventorship after concluding that the evidence Ms. Wagner relied on as corroboration was not, as a matter of law, sufficient to corroborate her testimony. Judgment Op., 2021 WL 411144, at *6–7. We have affirmed a district court’s summary judgment of no joint inventorship when no reasonable fact finder could find that the record contained sufficient evidence to corroborate the alleged joint inventor’s claim. See, e.g., Stern v. Trs. Of Columbia Univ., 434 F.3d 1375, 1378 (Fed. Cir. 2006) (granting summary judgment where evidence was “insufficient to corroborate [a] claim of co-inventorship”). For the reasons below, we conclude that even when viewing all reasonable inferences in Ms. Wagner’s favor, Ms. Wagner did not present sufficient evidence of corroboration to support her claim of coinventorship as a matter of law

In this regard, this case is similar to Symantec Corp. v. Computer Associates International, Inc., 522 F.3d 1279 (Fed. Cir. 2008), where we affirmed the district court’s summary judgment that an alleged co-inventor failed to establish a genuine issue of material fact that he was a coinventor. In Symantec, the district court found that the allegedly corroborating evidence, a day planner, at most showed that the alleged co-inventor and the inventor spoke about the then-current state of the prior art. Id. at 1296. The court emphasized that this evidence “[did] not establish that [the purported co-inventor] contributed to the idea.” Id. Likewise, the allegedly corroborating evidence here does not support that Ms. Wagner contributed to Mr. Ashline’s patent application strategy or device design.


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