Nartron Corp. v. Schukra U.S.A. Inc.

• Decision Date: 05 March 2009
• Docket Number: No. 2008-1363.,2008-1363.
• Citation: 558 F.3d 1352
• Parties: NARTRON CORPORATION, Plaintiff-Appellant, v. SCHUKRA U.S.A., INCORPORATED, Defendant, and Borg Indak, Inc., Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

558 F.3d 1352

NARTRON CORPORATION, Plaintiff-Appellant, v. SCHUKRA U.S.A., INCORPORATED, Defendant, and Borg Indak, Inc., Defendant-Appellee.

No. 2008-1363.

United States Court of Appeals, Federal Circuit.

March 5, 2009.

Frank A. Angileri, Brooks Kushman, P.C., Southfield, Michigan, argued for plaintiff-appellant. With him on the brief were Robert C.J. Tuttle, Thomas A. Lewry, and Marc Lorelli.

Jeffrey A. Sadowski, Howard & Howard Attorneys, P.C., Bloomfield Hills, Michigan, argued for defendant-appellee. With him on the brief were Melanie T. Frazier. Of counsel was Michael J. Sheehan.

Before LOURIE, DYK, and PROST, Circuit Judges.

LOURIE, Circuit Judge.

Nartron Corporation ("Nartron") appeals from the judgment of the United States District Court for the Eastern District of Michigan granting summary judgment of dismissal of its patent infringement complaint because of Nartron's failure to join an alleged co-inventor on U.S. Patent 6,049,748 ("the '748 patent") as a plaintiff. See Nartron Corp. v. Borg Indak, Inc., No. 06-10683, 2008 WL 896060 (E.D.Mich. Mar. 31, 2008). Because Joseph Benson, the alleged co-inventor, provided only an insignificant contribution to the invention of claim 11 of the '748 patent by contributing an "extender," we reverse the grant of summary judgment to Borg Indak, Incorporated ("Borg Indak") and remand to the district court for further action consistent with this opinion.

BACKGROUND

Schukra U.S.A., Incorporated ("Schukra") supplies automobile manufacturers with lumbar support systems for automobile seats. In 1996, Schukra contracted with Nartron for Nartron to design a control system that would provide existing automobile seats with massage functionality. Nartron designed such a system and then applied for a patent relating to a vehicle seat control system that provides massage capability; that patent application matured into the '748 patent.

Borg Indak supplies electronic components to Schukra. In 2006, Nartron sued Borg Indak for contributory infringement of claims 1 and 7 of the '748 patent. Borg Indak moved for summary judgment of dismissal, alleging that Benson, a Schukra employee, was a co-inventor of claim 11 of the '748 patent and therefore needed to have been joined in the suit. Neither Schukra nor Benson had consented to or had joined the suit.

Claim 11, for which Benson is alleged to be a co-inventor, is a dependent claim. It depends from claim 6, which in turn depends from claim 5, which itself depends from claim 1. Claims 1, 5, 6, and 11 read as follows:

1. A seat control module for introducing massage to a seat control with an adjustable lumbar support, and control actuators, the control module comprising:

a modular housing including in-line connectors for coupling said module to a seat control harness connector;

an intercept interface for receiving inputs from said control actuators;

a driver for repeatedly adjusting said lumbar support position through a predetermined range of movement in response to one of said control actuators; and

a transparency simulator for maintaining full function of said seat control and removing indications of repeatedly adjusting said lumbar support position.

. . .

5. The invention as defined in claim 1 wherein said transparency simulator comprises time-based response to manipulation of said control actuators.

6. The invention as defined in claim 5 wherein said transparency simulator generates a first output in response to a manipulation of a said control actuator for a period of time less than a first predetermined period, and generating a second output in response to a manipulation of said control actuator for a period equal to or greater than said first predetermined time period.

. . .

11. The invention as defined in claim 6 wherein said lumbar support adjustor includes an extender.

'748 patent col. 19 l.13-col.20 l.31. Thus, the key additional limitation in claim 11, which Benson is alleged to have contributed, is an extender for a lumbar support adjustor.

The specification provides only the following description of the extender: "A second motor 28 controls a lumbar support extender 30 and it governs the degree to which the lumbar support extends outwardly from the seat back toward a spinal curvature of an occupant. Both mechanisms 26 and 30 affect the position of the lumbar support 32 of the seat mechanism 16." Id. at col.4 ll.28-33. The figures simply represent the extender 30 as a box in the circuit diagram of the control system. Id. at Figs. 1 & 2 (numeral 30).

The inventors listed on the '748 patent, all Nartron employees, presumptively invented the control system. However, they admit that they did not invent the lumbar support adjustor including an extender recited in claim 11, as Nartron's inventive contribution consisted of a control module that operated on existing automobile seats, some of which already included extenders for lumbar support adjustors. Benson claims to have provided Nartron with the idea for the extender for a lumbar support adjustor, although he admits that the idea of an extender for a lumbar support adjustor in an automobile seat was in the prior art. Oral Argument at 11:38-12:30, available at http://oral arguments.cafc.uscourts.gov/mp3/2008-1363.mp3 ("If you isolate the specific arm that extends out, that was in the prior art with respect to other lumbar supports.").

In March 2008, the district court granted Borg Indak's motion for summary judgment of dismissal. The court held that Benson was a co-inventor of the '748 patent because, according to the court, he had conceived of the extender element of claim 11, and, as a co-inventor, he was required to have been joined as a plaintiff in any infringement suit. The court reasoned that, contrary to Nartron's arguments, the '748 patent was not based exclusively on the control module and its software, and that the contribution of the mechanical extender to the claimed invention was not insignificant in quality because Benson had conceived of the massager unit and had developed a prototype. The court also found that there was no genuine issue of material fact regarding who had invented the extender because the named inventors had conceded that they did not invent the extender, and Benson had provided evidence that he had been working on a lumbar support frame or basket (which operated as an extender) that provided a massage effect. The court also relied on Nartron's failure to provide any evidence to contradict Benson's evidence that he had conceived and reduced to practice an extender for a lumbar support adjustor. The court thus dismissed the case for failure to join a necessary plaintiff in the lawsuit. Benson's employer Schukra maintained a contractual relationship with the defendant Borg Indak. Thus, grant of the motion to dismiss effectively prevented Nartron from enjoining or obtaining damages from Borg Indak for patent infringement.

Nartron timely appealed the district court's dismissal. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

We review summary judgment determinations de novo. Netscape Commc'ns Corp. v. Konrad, 295 F.3d 1315, 1319 (Fed. Cir.2002). "Summary judgment is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law." Id. (quotation marks omitted).

Nartron argues that the district court erred in granting summary judgment of coinventorship. According to Nartron, the extender for a lumbar support adjustor, recited in claim 11, was in the prior art and therefore could not have supported a claim of coinventorship. Nartron also argues that the preamble of claim 1 includes "an adjustable lumbar support," making it clear that the lumbar support adjustor was part of the background of the invention and already existed. Instead, according to Nartron, the inventive aspect of the claimed invention is the controller, and Benson did not conceive of the controller. Nartron argues that the specification states that the improvement is in the controller not the hardware, of the automobile seat, and that the controller can be adapted to work with any automobile seat. Nartron also asserts that the drawings do not show any structure for the extender. Moreover, according to Nartron, irrespective of whether the extender for the lumbar support adjustor was in the prior art, Benson's alleged contribution is insignificant to the invention of the '748 patent. According to Nartron, one who merely poses a problem or suggests a possible result, rather than a means of accomplishing it, is not a joint inventor. In addition, Nartron asserts that the court erred by focusing solely on whether Benson conceived of an element of claim 11, without looking at the entire invention of claim 11, because inventorship focuses on the invention as a whole. Nartron also argues that the fact that the extender only appears in a dependent claim shows that the controller is patentable without the extender, further demonstrating the insignificance of Benson's contribution.

Borg Indak responds that, even though the lumbar support adjustor and extender were in the prior art, the named inventors admitted that they did not invent them but had been provided those aspects of the claimed invention by the customer, Schukra. Borg Indak adds that combinations of existing elements are patentable, so Nartron cannot eliminate the lumbar support aspect of claim 11 from the invention simply because it existed in the prior art. Borg Indak also argues that Benson and other Schukra employees contributed to aspects of other claims, in addition to claim 11, as Schukra provided Nartron with instructions to build a control module for an automobile seat that would provide particular functionality. Borg Indak also responds that Benson's contribution was not insignificant, as even the subject matter of dependent claims must be invented by named inventors. Thus, according to Borg Indak,...