Nartron Corporation v. Borg Indak, Inc.

United States Court of Appeals, Federal Circuit
558 F.3d 1352 (2009)

ELI5:

Rule of Law:

A person who contributes a well-known, prior art element to a claimed invention does not qualify as a joint inventor if the contribution is insignificant in quality when measured against the full dimension of the invention.

Facts:

Schukra U.S.A., Incorporated ('Schukra') supplied lumbar support systems for automobile seats and contracted with Nartron Corporation ('Nartron') to design a control system that would add massage functionality.
Nartron designed the control system, which was intended to operate with existing automobile seat mechanisms.
Joseph Benson, a Schukra employee, suggested that the control system operate on a lumbar support adjustor that included an 'extender'.
The concept of a lumbar support adjustor with an extender was already known and existed in the prior art of automobile seats.
Nartron applied for and obtained U.S. Patent 6,049,748 ('the '748 patent') for its control system, listing only Nartron employees as inventors.
Claim 11 of the '748 patent, a dependent claim, specifically recited the inclusion of an 'extender' for the lumbar support adjustor.
Borg Indak, Incorporated ('Borg Indak') was a supplier of electronic components to Schukra.

Procedural Posture:

Nartron sued Borg Indak for contributory patent infringement in the U.S. District Court for the Eastern District of Michigan.
Borg Indak moved for summary judgment of dismissal, arguing that Joseph Benson was an unjoined co-inventor of the '748 patent.
The district court granted summary judgment for Borg Indak, holding that Benson was a co-inventor and dismissing the suit for failure to join a necessary plaintiff.
Nartron (appellant) appealed the district court's dismissal to the U.S. Court of Appeals for the Federal Circuit.

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Issue:

Does contributing a single element that is already in the prior art to one dependent claim of a patent make the contributor a joint inventor who must be joined as a plaintiff in an infringement suit?

Opinions:

Majority - Lourie, Circuit Judge

No. A person is not a joint inventor if their contribution is insignificant when measured against the full scope of the invention, and providing a well-known principle or element from the prior art does not rise to the level of an inventive contribution. The court reasoned that Benson's suggestion to include an extender was not a significant contribution to the conception of the invention as a whole. The extender was an admitted prior art element and part of the existing seat hardware upon which Nartron's novel control module was designed to operate. The court emphasized that the '748 patent's true invention was the control module and its software, not the pre-existing mechanical components of the seat. Citing precedent like Pannu v. Iolab Corp. and Ethicon Inc. v. U.S. Surgical Corp., the court held that one who merely explains the state of the art or suggests a result without providing the means of accomplishing it is not a joint inventor. Because Benson's contribution was merely the suggestion to incorporate a known component, it was the 'basic exercise of the normal skill expected of one skilled in the art' and therefore did not confer co-inventorship status.

Analysis:

This decision clarifies the threshold for establishing co-inventorship under U.S. patent law, reinforcing that not all contributions are legally significant. It establishes that suggesting the inclusion of a known, prior art component into a larger inventive system is insufficient to make one a co-inventor. This holding is significant for collaborative development projects, as it protects the primary inventors from claims by parties who provide minor, non-inventive, or already-known information. The court's focus on measuring the contribution's quality 'against the dimension of the full invention' provides a crucial framework for future inventorship disputes.

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