Ethicon, Inc. v. U.S. Surgical Corp.

Decision Date03 February 1998
Docket NumberNo. 97-1269,97-1269
Citation135 F.3d 1456,45 USPQ2d 1545
Parties, 48 Fed. R. Evid. Serv. 1226 ETHICON, INC. and InBae Yoon, M.D., Plaintiffs-Appellants, v. UNITED STATES SURGICAL CORPORATION and Young Jae Choi, Defendants-Appellees.
CourtU.S. Court of Appeals — Federal Circuit

David F. Dobbins, Patterson, Belknap, Webb & Tyler, LLP, New York City, argued for plaintiffs-appellants. On brief were Thomas W. Pippert, Jeffrey I.D. Lewis, and Erik Haas. Of counsel was Eugene M. Gelernter.

Harvey Kurzweil, Dewey Ballantine, New York City, argued for defendants-appellees. On brief were Clark E. Walter, Joseph Angland, Bradford J. Badke, and Lawrence Brocchini. Of counsel was Jacob D. Zeldes, Zeldes, Needle & Cooper, Bridgeport, CT. Also of counsel were Thomas R. Bremer and Basam E. Nabulsi, United States Surgical Corporation, Norwalk, CT.

Before NEWMAN, Circuit Judge, SKELTON, Senior Circuit Judge, and RADER, Circuit Judge.

RADER, Circuit Judge.

In this patent infringement action, Dr. InBae Yoon (Yoon) and his exclusive licensee, Ethicon, Inc. (Ethicon), appeal from the judgment of the United States District Court for the District of Connecticut. In 1989, Yoon and Ethicon sued United States Surgical Corporation (U.S. Surgical) for infringement of U.S. Patent No. 4,535,773 (the '773 patent). In 1993, the parties stipulated to the intervention of Mr. Young Jae Choi (Choi) as defendant-intervenor. Choi claimed to be an omitted co-inventor of the '773 patent and to have granted U.S. Surgical a retroactive license under that patent. On U.S. Surgical's motion to correct inventorship of the '773 patent under 35 U.S.C. § 256, the district court ruled that Choi was an omitted co-inventor of two claims, see 937 F.Supp. 1015 (D.Conn.1996), and subsequently granted U.S. Surgical's motion to dismiss the infringement complaint, see 954 F.Supp. 51 (D.Conn.1997). Because the district court's determination of co-inventorship was correct, and because Choi is a joint owner of the '773 patent who has not consented to suit against U.S. Surgical, this court affirms.

I. BACKGROUND

The '773 patent relates to trocars, an essential tool for endoscopic surgery. A trocar is a surgical instrument which makes small incisions in the wall of a body cavity, often the abdomen, to admit endoscopic instruments. Trocars include a shaft within an outer sleeve. One end of the shaft has a sharp blade. At the outset of surgery, the surgeon uses the blade to puncture the wall and extend the trocar into the cavity. The surgeon then removes the shaft, leaving the hollow outer sleeve, through which the surgeon may insert tiny cameras and surgical instruments for the operation.

Conventional trocars, however, pose a risk of damage to internal organs or structures. As the trocar blade punctures the cavity wall, the sudden loss of resistance can cause the blade to lunge forward and injure an internal organ. The '773 patent claims a trocar that alleviates this danger. In one embodiment, the invention equips the trocar with a blunt, spring-loaded rod. As the trocar pierces the cavity wall, the rod automatically springs forward to precede the blade and shield against injury. A second embodiment has a retractable trocar blade that springs back into a protective sheath when it passes through the cavity wall. The patent also teaches the use of an electronic sensor in the end of the blade to signal the surgeon at the moment of puncture.

Yoon is a medical doctor and inventor of numerous patented devices for endoscopic surgery. In the late 1970s, Yoon began to conceive of a safety device to prevent accidental injury during trocar incisions. Yoon also conceived of a device to alert the surgeon when the incision was complete. In 1980, Yoon met Choi, an electronics technician, who had some college training in physics, chemistry, and electrical engineering, but no college degree. Choi had worked in the research and development of electronic devices. After Choi had demonstrated to Yoon some of the devices he had developed, Yoon asked Choi to work with him on several projects, including one for safety trocars. Choi was not paid for his work.

In 1982, after collaborating for approximately eighteen months, their relationship ended. Choi believed that Yoon found his work unsatisfactory and unlikely to produce any marketable product. For these reasons, Choi withdrew from cooperation with Yoon.

In the same year, however, Yoon filed an application for a patent disclosing various embodiments of a safety trocar. Without informing Choi, Yoon named himself as the sole inventor. In 1985, the Patent and Trademark Office issued the '773 patent to Yoon, with fifty-five claims. Yoon thereafter granted an exclusive license under this patent to Ethicon. Yoon did not inform Choi of the patent application or issuance.

In 1989, Ethicon filed suit against U.S. Surgical for infringement of claims 34 and 50 of the '773 patent. In 1992, while this suit was still pending, U.S. Surgical became aware of Choi, and contacted him regarding his involvement in Yoon's safety trocar project. When Choi confirmed his role in the safety trocar project, U.S. Surgical obtained from Choi a "retroactive license" to practice "Choi's trocar related inventions." Under the license, Choi agreed to assist U.S. Surgical in any suit regarding the '773 patent. For its part, U.S. Surgical agreed to pay Choi contingent on its ultimate ability to continue to practice and market the invention. With the license in hand, U.S. Surgical moved to correct inventorship of the '773 patent under 35 U.S.C. § 256, claiming that Choi was a co-inventor of claims 23, 33, 46, and 47. Following an extensive hearing, the district court granted U.S. Surgical's motion, finding that Choi had contributed to the subject matter of claims 33 and 47.

U.S. Surgical next moved for dismissal of the infringement suit, arguing that Choi, as a joint owner of the patent, had granted it a valid license under the patent. By its terms, the license purported to grant rights to use the patent extending retroactively back to its issuance. The district court granted U.S. Surgical's motion and dismissed the suit.

Ethicon appeals the district court's finding of co-inventorship and its dismissal of the complaint. Specifically, Ethicon contends that (1) Choi supplied insufficient corroboration for his testimony of co-invention; (2) Choi presented insufficient evidence to show co-invention of claims 33 and 47 clearly and convincingly; (3) Choi accepted illegal payment for his factual testimony which the court should therefore have excluded from the proceedings; (4) the terms of the license agreement limit it to only that part of the invention to which Choi contributed, not the entire patent; and (5) even if the agreement licenses the entire patent, it cannot release U.S. Surgical from liability for past infringement.

II. CO-INVENTORSHIP

Patent issuance creates a presumption that the named inventors are the true and only inventors. See Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 980, 41 USPQ2d 1782, 1785-86 (Fed.Cir.), cert. denied, --- U.S. ----, 117 S.Ct. 2459, 138 L.Ed.2d 216 (1997). Inventorship is a question of law, which this court reviews without deference. See Sewall v. Walters, 21 F.3d 411, 415, 30 USPQ2d 1356, 1358 (Fed.Cir.1994). However, this court reviews the underlying findings of fact which uphold a district court's inventorship determination for clear error. See Hess, 106 F.3d at 980.

A patented invention may be the work of two or more joint inventors. See 35 U.S.C. § 116 (1994). Because "[c]onception is the touchstone of inventorship," each joint inventor must generally contribute to the conception of the invention. Burroughs Wellcome Co. v. Barr Lab., Inc., 40 F.3d 1223, 1227-28, 32 USPQ2d 1915, 1919 (Fed.Cir.1994). "Conception is the 'formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.' " Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376, 231 USPQ 81, 87 (Fed.Cir.1986) (quoting 1 Robinson on Patents 532 (1890)). An idea is sufficiently "definite and permanent" when "only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation." Burroughs Wellcome, 40 F.3d at 1228.

The conceived invention must include every feature of the subject matter claimed in the patent. See Sewall, 21 F.3d at 415. Nevertheless, for the conception of a joint invention, each of the joint inventors need not "make the same type or amount of contribution" to the invention. 35 U.S.C. § 116. Rather, each needs to perform only a part of the task which produces the invention. On the other hand, one does not qualify as a joint inventor by merely assisting the actual inventor after conception of the claimed invention. See Sewall, 21 F.3d at 416-17; Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624, 225 USPQ 634, 641 (Fed.Cir.1985) ("An inventor 'may use the services, ideas and aid of others in the process of perfecting his invention without losing his right to a patent.' " (quoting Hobbs v. U.S. Atomic Energy Comm'n., 451 F.2d 849, 864, 171 USPQ 713, 724 (5th Cir.1971))). One who simply provides the inventor with well-known principles or explains the state of the art without ever having "a firm and definite idea" of the claimed combination as a whole does not qualify as a joint inventor. See Hess, 106 F.3d at 981 (citing O'Reilly v. Morse, 56 U.S. (15 How.) 62, 111, 14 L.Ed. 601 (1853)). Moreover, depending on the scope of a patent's claims, one of ordinary skill in the art who simply reduced the inventor's idea to practice is not necessarily a joint inventor, even if the specification discloses that embodiment to satisfy the best mode requirement. See Sewall, 21 F.3d at 416...

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