A single meeting made an outside hose designer a joint inventor on six patents

2023-06-09Fed. Cir.

Blue Gentian, LLC v. Tristar Products, Inc., 70 F.4th 1351 (Fed. Cir. June 9, 2023) (precedential) (Prost, J., joined by Chen and Stark, JJ.), affirming Blue Gentian, LLC v. Tristar Products, Inc., No. 1:13-cv-01758-NLH-AMD (D.N.J. Aug. 12, 2021) (Hillman, J.)

United States Patent Nos. 8,291,941, 8,291,942, 8,479,776 and 8,757,213 and design patents D722,681 and D724,186 claim an expandable garden hose and name Michael Berardi as sole inventor. Sued for infringement, Tristar Products, Inc. counterclaimed under Section 256 of Title 35 of the United States Code to add Gary Ragner, who had met Berardi once, on August 23, 2011, seeking investment for his own MicroHose. Ragner showed a manufacturing document and a prototype and, by his account, said elastic could replace the metal spring. Berardi built a prototype the next day and filed within three months. After an evidentiary hearing, Judge Hillman of the District of New Jersey found that Ragner conveyed "inner and outer tubes attached only at the ends," "a fabric outer tube," and "an elastic inner tube that can provide force to retract the hose without a metal spring," and ordered all six patents corrected. The Federal Circuit affirmed in an opinion by Judge Prost, joined by Judges Chen and Stark. No claim construction was required because no claim-scope dispute bearing on inventorship was identified; the three elements are "plainly reflected" in the claims, and two of them were used to overcome a rejection over Ragner's own earlier patent; the next-day prototype corroborated Ragner; and collaboration does not require a shared intent to invent the claimed hose, because "hearing another's suggestion at a meeting" is enough.

What it changesThe features a patentee uses to distinguish the prior art are, by the court's logic, the features that matter for inventorship, so whoever supplied them is an inventor whether or not they were in the room when the claims were written. Artificial intelligence teams take ideas from outside constantly: a vendor demonstrating a pipeline, a consultant proposing a training trick, a prospective partner showing confidential results under a nondisclosure agreement. Five weeks after HIP, Inc. v. Hormel Foods Corp. held that one minor alternative was not enough, this decision shows the other side: three elements conveyed in one conversation carried six patents. Before filing, record who contributed each element the claims will rely on, especially the elements expected to carry the novelty argument, and either get an assignment from every such person or decide not to claim that person's contribution. An omitted inventor who is added later becomes a co-owner, with everything co-ownership means for licensing and enforcement.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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