Jeffrey R. Sewall and Ronald G. Walters v. Ronald G. Walters
21 F.3d 411 (1994)
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Rule of Law:
Inventorship is determined by conception, which is complete when a definite and permanent idea of an operative invention, including every feature sought to be patented, is known, such that one of ordinary skill in the art could construct the apparatus without undue experimentation. Merely reducing a conceived invention to practice using ordinary skill, without contributing inventive acts, does not establish joint inventorship.
Facts:
- Ronald G. Walters developed an improvement to his U.S. Patent No. 4,293,912, involving the addition of a 'linearization pointer memory means' (element b) to a CT scanner back projecting apparatus.
- In late 1982 or early 1983, Walters disclosed his idea for the improved back projecting apparatus to Mr. Salquist and Mr. Cannon of Star Technologies, Inc. (Star), a company for which Walters was a consultant.
- On July 25, 1983, Walters explained his proposed back projecting apparatus to Sewall, a chip designer and employee of Star, who took notes and marked up a copy of Walters' ’912 patent to indicate the improvement.
- In August 1983, Sewall wrote a summary for Walters confirming Walters’ idea of placing the linearization pointer memory means between two existing blocks of the apparatus.
- Walters then undertook the responsibility of designing a commercially functional back projecting apparatus, while Sewall’s part was to implement Walters’ design in chip form.
- Walters independently wrote detailed register level specifications for a complete computer simulation of the core elements of his apparatus, instructing Star to adhere strictly to his protocols without making functional revisions.
- Star completed the computer simulation around April 1984, following Walters’ instructions.
- Sewall subsequently completed the design of the hardware structure, having no latitude to make functional changes to the system Walters had specified.
Procedural Posture:
- On November 15, 1985, Star Technologies, Inc. filed a patent application (Sewall application) naming Sewall and Walters as joint inventors.
- On February 1, 1988, Walters filed an identical patent application (Walters application) asserting sole inventorship.
- An interference proceeding was initiated at the Board of Patent Appeals and Interferences (Board) of the United States Patent and Trademark Office (PTO) to determine inventorship.
- The Board initially designated Sewall, et. al. as the senior party based on their earlier filing date, but Walters was later granted the benefit of the Sewall application's filing date, resulting in both parties having the same effective filing date.
- On December 11, 1992, the Board awarded the subject matter of the sole count in issue to Ronald G. Walters, finding him to be the sole inventor.
- Sewall, et. al. appealed the Board's decision to the United States Court of Appeals for the Federal Circuit.
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Issue:
Does a person who implements an invention by designing hardware based on another's detailed specifications and without contributing any inventive acts become a joint inventor of that subject matter?
Opinions:
Majority - Rich
No, a person who merely designs hardware to implement another's detailed and complete invention, using only ordinary skill in the art and without contributing any inventive acts, is not considered a joint inventor. The court affirmed the Board's finding that Walters was the sole inventor, emphasizing that inventorship is determined by conception. Conception is complete when the inventor has a definite and permanent idea of an operative invention, including every feature to be patented, such that one of ordinary skill in the art could construct it without undue experimentation. The Board found that Walters had a complete conception by July 25, 1983, because the functions of element b (the linearization pointer memory means) were capable of being implemented by a programmer or hardware designer of ordinary skill at that time. Sewall's hardware design was explicitly dictated by Walters' specifications, and his contribution involved only the exercise of normal skill for a chip designer, not inventive acts. The successful computer simulation, designed by Walters, further supported that Walters had a definite and permanent idea of an operative invention. The court also clarified that inventorship and ownership are separate issues, making Sewall's ownership arguments irrelevant to the inventorship determination. Furthermore, the inventive aspect lay in the placement of element b, to which Sewall did not contribute and whose purpose he did not fully understand.
Analysis:
This case is significant for clarifying the distinction between invention (conception) and mere reduction to practice within patent law. It underscores that for one to be a joint inventor, their contribution must be to the conception of the invention, not merely to its implementation if that implementation requires only ordinary skill in the art. This precedent is crucial for collaborative research and development environments, helping to define the line between an inventive contribution and a skilled but non-inventive engineering task. It reinforces the principle that those who perform routine design work based on detailed specifications provided by the conceiver are not joint inventors.
