Ethicon, Inc. v. United States Surgical Corporation
135 F.3d 1456 (1998)
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Rule of Law:
A co-inventor of even one claim of a patent is a presumptive co-owner of the entire patent. While one co-owner cannot retroactively grant a release for past infringement damages owed to another co-owner, they can effectively block an infringement suit by refusing to join as a plaintiff, as all co-owners must consent to bring an action.
Facts:
- In the late 1970s, Dr. In-Bae Yoon began conceiving of a safety trocar, a surgical instrument.
- In 1980, Yoon asked Young Jae Choi, an electronics technician, to collaborate with him on the safety trocar project.
- Yoon and Choi worked together for approximately eighteen months, during which Choi contributed ideas and created sketches for the device without being paid.
- In 1982, the collaboration between Yoon and Choi ended.
- Later in 1982, Yoon filed a patent application for the safety trocar, naming himself as the sole inventor without informing Choi.
- In 1985, U.S. Patent No. 4,535,773 was issued to Yoon, who then granted an exclusive license to Ethicon, Inc.
- Years later, United States Surgical Corporation (U.S. Surgical) learned of Choi's involvement in the invention.
- U.S. Surgical entered into an agreement with Choi, obtaining a 'retroactive license' for his inventions in exchange for payment and Choi's agreement to assist U.S. Surgical in litigation.
Procedural Posture:
- In 1989, Dr. In-Bae Yoon and Ethicon, Inc. sued United States Surgical Corporation for patent infringement in the United States District Court for the District of Connecticut.
- In 1993, the district court allowed Mr. Young Jae Choi to intervene in the suit as a defendant-intervenor.
- U.S. Surgical filed a motion in the district court to correct the inventorship of the patent to add Choi as a co-inventor.
- The district court granted the motion, finding Choi was a co-inventor of two claims.
- U.S. Surgical then moved to dismiss the infringement suit based on Choi's status as a co-owner who had licensed them.
- The district court granted the motion to dismiss.
- Yoon and Ethicon, as appellants, appealed the district court's judgment to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does a co-owner of a patent have the right to prevent another co-owner from suing an alleged infringer for past damages by refusing to join the lawsuit?
Opinions:
Majority - Rader, Circuit Judge.
Yes. A co-owner of a patent has the right to impede another co-owner’s ability to sue infringers by refusing to voluntarily join in such a suit. First, the district court correctly determined that Choi was a co-inventor of claims 33 and 47, as his testimony was sufficiently corroborated by sketches and circumstantial evidence under the 'rule of reason' analysis. Second, under 35 U.S.C. §§ 116 and 262, a co-inventor of even one claim is a presumptive co-owner of the entire patent, not just the claims to which they contributed. Third, while Choi's 'retroactive license' cannot release U.S. Surgical from liability for past damages accrued to Ethicon, the established rule from cases like Waterman v. Mackenzie is that all co-owners must join as plaintiffs in an infringement suit. Because Choi, as a co-owner, has refused to join the suit against U.S. Surgical, Ethicon's complaint is fatally defective and must be dismissed.
Dissenting - Pauline Newman, Circuit Judge
No. The majority misinterprets the effect of the 1984 amendment to 35 U.S.C. § 116. That amendment was intended to solve technical problems of naming inventors in team research, not to automatically grant full ownership of an entire patent to a person who made a minor contribution to only a few claims. The pre-1984 law, which linked joint ownership to a joint inventive effort on the entire invention, should inform the property rights analysis. Inventorship and ownership are distinct legal concepts; Choi should not be deemed a co-owner of the 53 claims he did not invent and thus should not have the power to license them or block a suit concerning them. Furthermore, even if Choi is a co-owner, Federal Rule of Civil Procedure 19 allows for his involuntary joinder as a party, which should prevent the dismissal of Yoon's suit for past infringement.
Analysis:
This decision solidifies the principle that a co-inventor of a single claim presumptively owns an undivided interest in the entire patent, granting them significant power. The most impactful precedent is that while a co-owner cannot retroactively forgive past infringement on another's behalf, they can achieve the same result by refusing to join an infringement suit. This creates a powerful defensive strategy for accused infringers, who can seek out omitted inventors and use a license or other agreement to secure their refusal to join, thereby torpedoing the entire litigation. The case underscores the critical importance of correctly identifying all inventors at the time of application and having clear contractual agreements regarding ownership and enforcement rights.
