Hess v. Advanced Cardiovascular Systems, Inc.

United States Court of Appeals, Federal Circuit
106 F.3d 976 (1997)

ELI5:

Rule of Law:

An individual who merely provides suggestions, explains the state of the art, or supplies a product for use in an invention is not a co-inventor. To qualify as a co-inventor, one must contribute to the conception of the invention, which is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention.

Facts:

Drs. John B. Simpson and Edward W. Robert decided to build their own balloon angioplasty catheter after learning of Dr. Gruntzig's work and finding his catheters were in short supply.
They initially struggled to find a suitable material for the balloon, experimenting unsuccessfully with polyvinylchloride and Teflon tubing.
A colleague referred the doctors to Robert L. Hess, an engineer at Raychem Corporation, a company specializing in heat-shrinkable materials.
The doctors explained their project and difficulties to Hess, who had no prior experience with angioplasty catheters.
Hess suggested they use Raychem's heat-shrinkable irradiated modified polyolefin tubing and demonstrated a publicly known method for forming a balloon by heating, pressurizing, and cooling the material.
Hess also suggested using a shrink-fit technique to create an adhesive-free seal for attaching the balloon to the catheter and provided the doctors with multiple samples of the tubing.
The doctors then spent a significant amount of time, 'hours and days,' experimenting independently with the material Hess provided.
Through their own experimentation, without Hess's participation, the doctors developed the final balloon using a 'free-blowing' technique (not suggested by Hess) and perfected an acceptable adhesive-free seal after encountering problems with Hess's initial suggestion.

Procedural Posture:

Advanced Cardiovascular Systems, Inc. (ACS), the patent assignee, sued SciMed Life Systems, Inc. for patent infringement in the U.S. District Court for the District of Minnesota (a federal trial court).
SciMed challenged the patent's validity, alleging Robert L. Hess was an unjoined co-inventor.
Hess intervened, filing a cross-complaint against ACS to be declared a joint inventor.
Separately, Hess sued ACS in the U.S. District Court for the Northern District of California (a federal trial court) over co-inventorship of the patent's reexamination claims.
The Minnesota court transferred Hess's cross-complaint to the California court, which consolidated the two actions.
The California District Court granted summary judgment to ACS on Hess's claim regarding the original patent claims, finding it barred by laches.
Following a bench trial on the reexamination claims, the trial court ruled that Hess had failed to prove his co-inventorship claim.
Hess (appellant) appealed the trial court's judgment to the U.S. Court of Appeals for the Federal Circuit, with ACS as the appellee.

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Issue:

Does an individual's contribution rise to the level of co-inventorship when that individual suggests a suitable material, explains its known properties and applications, and provides samples to the named inventors, who then conduct the experimentation and development to create the final patented device?

Opinions:

Majority - Senior Judge Friedman

No. An individual's contribution does not rise to the level of co-inventorship by merely suggesting a material and explaining its known properties. To be a co-inventor, one must contribute to the 'conception' of the invention, and Hess's actions did not meet this standard. The court reasoned that inventors are presumed to be correct as named on a patent, and a claimant must prove co-inventorship by clear and convincing evidence. Hess did not contribute to the conception because he was unfamiliar with angioplasty and merely explained the state of the art and the properties of an existing Raychem product. Citing O'Reilly v. Morse and Shatterproof Glass Corp. v. Libbey-Owens Ford Co., the court affirmed the principle that an inventor may use the services, ideas, and aid of others in perfecting an invention without making them co-inventors. Hess's role was likened to that of a skilled salesman explaining how his employer's product could meet a customer's needs, while the actual inventive work of experimentation, problem-solving, and reduction to practice was performed solely by Drs. Simpson and Robert.

Analysis:

This case solidifies the high evidentiary bar for claims of co-inventorship asserted after a patent has issued, requiring proof by clear and convincing evidence. It clarifies the critical distinction between contributing to the inventive 'conception' and merely providing assistance, materials, or state-of-the-art information. The decision protects named inventors from claims by individuals who provided helpful but non-inventive input, thereby narrowing the scope of what constitutes a contribution worthy of co-inventorship status. Future cases will likely use this analysis to differentiate between true collaborators in conception and skilled suppliers or consultants.

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