Pannu v. Iolab Corp.
47 U.S.P.Q. 2d (BNA) 1657, 1998 U.S. App. LEXIS 18224, 155 F.3d 1344 (1998)
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Rule of Law:
If a patent incorrectly omits a joint inventor, it is invalid under 35 U.S.C. § 102(f), but the patentee must be given an opportunity to correct the inventorship under 35 U.S.C. § 256, provided the error occurred without deceptive intent.
Facts:
- Dr. Jaswant S. Pannu developed an improved intraocular lens with snag-resistant circular loops at the end of its supporting members to prevent tearing of eye tissue.
- In April 1980, Pannu filed a patent application for this lens, which disclosed a multi-piece construction.
- In October 1980, Pannu met with Dr. William Link, president of a lens manufacturer, to discuss licensing his invention.
- During their meeting, Dr. Link suggested that Pannu's lens could be manufactured from a single piece of clear plastic.
- Following the meeting, Link's company manufactured several prototype single-piece lenses based on the combined ideas of Pannu and Link.
- Pannu then successfully implanted these one-piece prototypes in his patients.
- On May 8, 1981, Pannu filed a continuation-in-part patent application claiming a single-piece lens, listing himself as the sole inventor.
- This application eventually issued as the patent in suit, without naming Dr. Link as an inventor.
Procedural Posture:
- Dr. Pannu sued Iolab Corporation in the U.S. District Court for the Southern District of Florida, alleging infringement of U.S. Reissue Patent 32,525.
- Iolab asserted as an affirmative defense that the patent was invalid for improper inventorship because it failed to name Dr. William Link as a co-inventor.
- Prior to submitting the case to the jury, Pannu moved for judgment as a matter of law (JMOL) on Iolab's inventorship defense.
- The district court granted Pannu's motion, ruling that Iolab failed to present evidence that Pannu acted in bad faith or with deceptive intent in not naming Link.
- The jury then returned a verdict finding that two of Iolab's four accused devices infringed the patent and awarded damages to Pannu.
- After the district court denied post-trial motions and entered final judgment for Pannu, Iolab appealed the grant of JMOL on the inventorship issue to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does a district court err by granting judgment as a matter of law against an invalidity defense based on nonjoinder of an inventor, thereby preventing the defendant from proving incorrect inventorship and shifting the burden to the patentee to correct the error?
Opinions:
Majority - Lourie, Circuit Judge.
Yes. A patent is invalid under 35 U.S.C. § 102(f) if it fails to name a true inventor, but this invalidity can be cured under the savings provision of 35 U.S.C. § 256. The district court erred by conflating the procedural steps for an inventorship challenge. The correct procedure requires the party challenging the patent to first prove nonjoinder by clear and convincing evidence. Only after such a showing is made does the patentee get an opportunity to save the patent by demonstrating the error occurred without deceptive intent. Here, Iolab presented sufficient evidence for a reasonable jury to find that Dr. Link, by contributing the idea of the one-piece construction, was a joint inventor. By granting JMOL, the district court improperly required Iolab to prove deceptive intent at the outset and deprived it of the chance to have a jury decide the factual question of co-inventorship. Therefore, the JMOL must be reversed and the case remanded for a determination of inventorship.
Analysis:
This decision clarifies the procedural framework for litigating patent invalidity claims based on improper inventorship. It establishes a clear two-step, burden-shifting framework that separates the challenger's burden of proving nonjoinder from the patentee's subsequent opportunity to correct the error. This holding reinforces that § 256 is a remedial statute intended to save patents from being invalidated due to honest mistakes. The case also affirms that a contribution does not need to be monumental to qualify for joint inventorship; contributing a single, significant concept—like the one-piece construction—can be sufficient.
