Stark v. Advanced Magnetics, Inc.

• Citation: 119 F.3d 1551,43 USPQ2d 1321
• Decision Date: 11 July 1997
• Docket Number: No. 96-1233,96-1233
• Parties: David D. STARK, M.D., Plaintiff-Appellant, v. ADVANCED MAGNETICS, INC., Jerome Goldstein, Ernest V. Groman, and Lee Josephson, Defendants-Appellees. Federal Circuit
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1551

119 F.3d 1551

43 U.S.P.Q.2d 1321

David D. STARK, M.D., Plaintiff-Appellant, v. ADVANCED MAGNETICS, INC., Jerome Goldstein, Ernest V.

Groman, and Lee Josephson, Defendants-Appellees.

No. 96-1233.

United States Court of Appeals,

Federal Circuit.

July 11, 1997.

Henry C. Dinger, Goodwin, Procter & Hoar LLP, Boston, MA, argued, for plaintiff-appellant. With him on the brief was Kenneth J. Parsigian.

Ian Crawford, Todd & Weld, Boston, MA, argued, for defendants-appellees. With him on the brief were David S. Godkin and Richard S. Sanders, Testa, Hurwitz & Thibeault, LLP, Boston, MA.

Before PLAGER, RADER, and SCHALL, Circuit Judges.

Opinion for the court filed by Circuit Judge RADER; opinion concurring in the result, but dissenting in the outcome, filed by Circuit Judge PLAGER.

RADER, Circuit Judge.

Dr. David D. Stark brings this interlocutory appeal from a judgment of the United States District Court for the District of Massachusetts to determine under what circumstances correction of inventorship is permissible. The district court held that correction of inventorship is allowable only when "the true inventor was left off the application as a result of a mistake and not as a result of deception, on the part of either the named inventor or the actual inventor." Stark v. Advanced Magnetics, Inc., 894 F.Supp. 555, 560, 36 U.S.P.Q.2d 1764, 1768 (D.Mass.1995). Because correction of inventorship under 35 U.S.C. § 256 (1994) only requires an inquiry into the intent of the nonjoined inventor, this court reverses the judgment of the district court.

I.

Dr. David Stark, a physician specializing in radiology, collaborated with Advanced Magnetics, Inc. (AMI) in developing magnetic resonance imaging (MRI) technologies. This work resulted in six patents issued between September 1988 and April 1992. The patents include U.S. Patent No. 4,770,183 (the '183 patent) and five others. This court set forth a more detailed recitation of the factual background of these patents in Stark v. Advanced Magnetics, Inc., 29 F.3d 1570, 1572-73, 31 U.S.P.Q.2d 1290, 1291-92 (Fed.Cir.1994). Stark was not named as an inventor on any of the patents.

In September 1992, Stark filed suit against AMI and several of its officers, Jerome Goldstein, Ernest V. Groman, and Lee Josephson (collectively, AMI), alleging that he is the sole inventor of the subject matter covered by the '183 patent and the joint inventor of the subject matter disclosed in the other five patents. Stark's complaint requested correction of inventorship under 35 U.S.C. § 256. Stark also requested damages and injunctive relief under Massachusetts tort and contract law.

AMI sought summary judgment on two theories. First, AMI argued that Stark's failure to seek correction diligently estopped him from this challenge. Second, AMI argued that Stark's allegation of deception by AMI in his state law claims precludes correction of inventorship under section 256. The district court granted AMI's motion for summary judgment based on its first argument, without reaching the second question. An appeal to this court followed. In July 1994, the Federal Circuit vacated the district court's holding and remanded "for determination of the merits of the asserted inventorship claims." Stark, 29 F.3d at 1577.

On remand, the district court interpreted section 256 "as requiring that both the applicant (here, [AMI] ) and the actual inventor (here, Stark) must have made an honest mistake and must be innocent of fraud." Stark, 894 F.Supp. at 559. Under this interpretation of the statute, the district court ruled that Stark's federal law claim for correction of inventorship conflicted with his state law claims for conversion, theft of trade secrets, fraud and deceptive conduct. Because Stark's state law claims alleged fraud on the part of the patent applicants, the district court dismissed Stark's action for correction of the inventors on the patent. In order to maintain both causes of action, Stark then sought and received permission to file this interlocutory appeal to determine who must act without deceptive intent in order to correct inventorship under section 256.

II.

The sole issue in this case is the meaning of section 256. Statutory interpretation is a pure question of law, subject to complete and independent review by this court. See In re Carlson, 983 F.2d 1032, 1035, 25 U.S.P.Q.2d 1207, 1209 (Fed.Cir.1992). This court generally regards the meaning of a statute's language "as conclusive." Consumer Prod. Safety Comm'n v. GTE Sylvania, Inc., 447 U.S. 102, 108, 100 S.Ct. 2051, 2056, 64 L.Ed.2d 766 (1980); United States v. James, 478 U.S. 597, 606, 106 S.Ct. 3116, 3121, 92 L.Ed.2d 483 (1986) ("When ... the terms of a statute [are] unambiguous, judicial inquiry is complete, except in rare and exceptional circumstances.") (citations and internal quotations omitted); Johns-Manville v. United States, 855 F.2d 1556, 1559 (Fed.Cir.1988).

Title 35 requires that an applicant for a patent disclose the names of all inventors. 35 U.S.C. §§ 111, 115-16 (1994). The patent statute also authorizes correction of the inventors' names in applications, 35 U.S.C. § 116, and in patents, 35 U.S.C. § 256. Section 256 permits correction by application to the Commissioner or in federal court:

§ 256. Correction of named inventor.

Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Commissioner may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue[ ] a certificate correcting such error.

The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Commissioner shall issue a certificate accordingly.

This section addresses separately two varieties of error in inventorship--misjoinder and nonjoinder. The first clause of section 256 addresses misjoinder where error lists a person who is not an inventor. The second clause addresses nonjoinder where error fails to list a person who is an inventor. In the latter case, the error cannot involve any deceptive intention by the nonjoined inventor. This case invokes both clauses. As to the '183 patent, Stark alleges both the misjoinder of the AMI inventors, as well as his own nonjoinder. As to the remaining five patents, Stark alleges nonjoinder.

A.

As an initial matter, this court must determine whether the standards defined in the first paragraph of section 256 apply to both courts and the Commissioner. The concurrence regards the parallel paths to correction as fraternal twins, related and similar, yet operating independently from each other. This approach was apparently born of the assumption that the section's separate reference to administrative and judicial correction somehow freed courts of the constraints included in the remainder of section 256. The statutory language, however, does not survive such surgical separation of the administrative Chang and judicial Eng. The first sentence of the second paragraph clarifies that all instances of correction proceed under the standards "provided in this section." Then the next sentence permits courts "before which such matter is called in question" to also order correction. The "such matter" upon which the court may act is "correction as provided in this section." Thus, section 256 expressly applies the standards of the entire section, including the first paragraph, to both administrative and judicial proceedings. In other words, the nonjoinder and misjoinder clauses supply the heart of the correction standard from which both sentences of the second paragraph draw lifeblood. To hold otherwise would both contradict the language of the statute and leave the district court unfettered discretion to decide when and under what terms to allow correction.

Our sister circuit's opinion, cited in the concurrence, is not to the contrary. In Iowa State University Research Foundation, Inc. v. Sperry Rand Corp., 444 F.2d 406, 170 U.S.P.Q. 374 (4th Cir.1971), the Fourth Circuit addressed the question of whether consent of all parties is necessary to state a claim for correction in the district court. That court concluded properly that such consent is not necessary. Id., 444 F.2d at 410. In fact, inventorship contests by definition will lack consent of all inventors. The court then recognized, therefore, that the only procedural prerequisites to maintain a correction action in district court are notice and an opportunity for all parties to be heard. Id.; see MCV, Inc. v. King-Seeley Thermos Co., 870 F.2d 1568, 1570, 10 U.S.P.Q.2d 1287, 1289 (Fed.Cir.1989) ("[Section 256] prescribes only one prerequisite to judicial action: all parties must be given notice and an opportunity to be heard. If that is done, there is subject-matter jurisdiction in the district court over a dispute raising solely a joint inventorship issue among contending co-inventors."). However, the Fourth Circuit did not address the substantive standards to be applied by district courts in correcting inventorship. Indeed, a number of federal courts have applied substantive standards in correcting inventorship under section 256. See, e.g., Bemis v. Chevron Research Co., 599 F.2d 910, 203 U.S.P.Q. 123 (9th Cir.1979); University of Colo. Found. Inc. v. American Cyanamid, 880 F.Supp. 1387, 35 U.S.P.Q.2d 1737 (D.Colo.1995). As noted above, the language of the statute itself directs courts to correct under standards "provided in this section."

B.

AMI urges that this court has held previously that section 256 provides a remedy only in the case of a "bona fide mistake in...