Intellectual Property > IP Newsflash > Ever-Changing Inventorship Dispute Heads to Bench Trial
17 Dec '18

In a case of twisting facts, a trial judge has denied a plaintiff’s motion to correct inventorship to add an inventor to a patent because that plaintiff previously asked the PTO to remove that same inventor from the patent just months before.

The salient facts are as follows: Egenera sued Cisco for patent infringement on a patent with eleven named inventors. Cisco challenged the asserted patent in an IPR before the PTAB. Egenera responded to the IPR petition by arguing that one of Cisco’s main prior-art references did not constitute prior art, because one of Egenera’s own articles, authored by one of the inventors, predated the reference and fully described the patented invention. The trouble, however, was that the article was written before one of the eleven inventors, Schulter, went to work for Egenera—so if the article fully disclosed the invention, Schulter could not be an inventor. Faced with this dilemma, Egenera petitioned the PTO to remove Schulter from the patent (claiming he was accidentally included as inventor). The PTO granted the petition to remove Schulter as an inventor, and the PTAB subsequently denied institution of Cisco’s IPR.

In an unusual twist, back at the district court, Cisco argued that Schulter was indeed an inventor of the patent, and his exclusion should invalidate it. In support, Cisco argued that portions of the asserted claims rely on technology that was invented by Schulter after he joined Egenera. Further, Cisco disputed that the article Egenera presented to the PTAB actually disclosed the patented invention. Cisco argued that the patent specification included, sometimes verbatim, articles Schulter wrote during his employment at Egenera.  

In response, Egenera took the position that it had acted in good faith all along—it accidentally named Schulter as an inventor, which it had since corrected, and if further discovery should prove that he was indeed an inventor, then the remedy should be correction, not invalidation.

The court, however, held that Egenera was estopped from making such an argument. Even though correction of inventorship is liberally permitted, the court found that under the doctrine of judicial estoppel, Egenera was prevented from asserting a correction of inventorship claim when it had made an inconsistent claim in a previous proceeding. Based on the record before it, the court found that there were genuine disputes of material facts related to inventorship, so the court denied the parties’ cross-motions for summary judgment and set a bench trial to hear the issue.

PRACTICE TIP:  Practioners should be mindful that the doctrine of judicial estoppel is not limited to statements made in particular tribunals. As this case shows, statements made in PTAB briefing and related PTO petitions were the basis for judicial estoppel to prevent seemingly contradictory arguments to the district court. Thus, in cases with parallel proceedings at the PTAB and the district court, legal strategies and positions must be weighed not only for their merit in a particular tribunal, but also for the potential foreclosure of contradictory arguments in the other tribunal.

Egenera, Inc. v. Cisco Systems, Inc., 16-11613-RGS, D. Mass., December 3, 2018