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Federal Circuit Affirms District Court On Correction Of Inventorship
03/26/2024On March 15, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed a decision by the United States District Court for the Eastern District of Virginia, ordering the correction of inventorship of U.S. Patent No. 9,376,049 (the “’049 patent”) to add Gary Mackay and Dan Hewson as named inventors. Tube-Mac Indus., Inc. v. Campbell, No. 2022-2170 (Fed. Cir. Mar. 15, 2024). The CAFC reviewed the inventorship disputes de novo and the district court’s underlying factual findings for clear error.
The ’049 patent claims a lightweight container for transporting refrigerated gaseous fluids, comprising an insulated housing, pressure vessels, and port bosses affixed to the vessels’ domed end portions. The original sole inventor, Steve Campbell, had initially contracted with Composites Atlantic Ltd. to assist in fabrication, but the resulting prototypes suffered from port boss/liner slippage issues. Campbell then approached Mackay’s company, Tube-Mac Industries, to help solve the problem. Hewson, the Vice President of Projects at Tube-Mac, provided preliminary drawings to Campbell and the three men continued to exchange designs and updates to the port boss components over the next several months.
After the ’049 patent issued, Mackay and Hewson brought an action to be named as co-inventors. The district court agreed, finding that, prior to Mackay’s and Hewson’s involvement, Campbell lacked a complete invention that could be reduced to practice without extensive experimentation to solve the slippage issue. The district court determined that Mackay and Hewson contributed significantly to conception by proposing port boss modifications that solved the slippage problem, such as adding O-rings, grooved patterns, and crimping mechanisms to create better sealing between components.
Campbell appealed, arguing that the district court erred by identifying “the port boss” as the subject matter of the invention and erred in its determination of the significance of Mackay and Hewson’s contributions. The CAFC rejected Campbell’s arguments, noting that Mackay’s and Hewson’s alleged contributions were to the claimed “port boss” (and its “compression and crimping,” as claimed in a dependent claim), so the district court’s subject matter identification was proper.
The CAFC also agreed with the district court that Mackay and Hewson’s contributions were significant, describing multiple changes proposed by Mackay and Hewson within the specification, figures, and claims of the ’049 patent. Although their updates to the port boss were “mostly unclaimed,” they nevertheless contributed to the conception of the invention because Campbell had a major slippage problem that led to his contacting Mackay and Hewson. Prior to their involvement, Campbell did not possess an idea that could be reduced to practice with ordinary skill without extensive research or experimentation. The CAFC ultimately determined that the thoroughly documented record of contributions from Mackay and Hewson, a report from Composites Atlantic describing the slippage problems, and the disclosures in the ’049 patent, supported the conclusion that Mackay and Hewson’s port boss designs significantly contributed to conception of the claimed invention.
Accordingly, the CAFC affirmed the district court’s judgment that Mackay and Hewson should be listed as co-inventors on the ’049 patent. The decision underscores the importance of properly naming all individuals who make a significant contribution to the conception or reduction to practice of an invention as inventors during patent prosecution. This dispute also serves as a reminder to ensure that proper IP assignments are in place with anyone that might contribute to the design or development of patentable technology.
