Academic Article Used to Create Joint Inventorship Puzzle
Article naming administrator along with named inventors could derail patent

Joint inventorship has been described as “one of the muddiest concepts in the muddy metaphysics of patent law." See Mueller Brass Co. v. Reading Indus., 352 F. Stipp. 1357, 1372 (E.D. Pa. 1972). Yet, mistaken claims of joint inventorship can have significant effects as it could change who owns a patent and could invalidate a patent.

Google sought to exploit the opacity of joint inventorship to challenge patents assigned to IPA Technologies at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). The patents were filed in 1999 and, during prosecution of patents, the patent examiner pointed to an article describing the patented technology, which named an individual, Dr. Moran, in addition to the named inventors. The patent attorney responded by providing declarations from the named inventors stating Dr. Moran was “not a co-inventor of the subject matter described in the subject matter disclosed and claimed in the instant application[s].”

Twenty years after the patent’s filing, Google challenged the patents based on the same article, contending Dr. Moran did contribute to the article as joint inventor and, thus, the patents. The record does not show that Google had a relationship with Dr. Moran—he worked for the SRI, as did the named inventors, seemingly making ownership of the patents not in question. But if Google could show a defect in joint inventorship, it could invalidate the patents as being the work “of another” unless IPA corrected the inventorship (in which case Google could have an excuse for its infringement under the doctrine of intervening rights).

The evidence demonstrated Dr. Moran was the most senior computer scientist on the OAA team at SRI, that he worked on the OAA team for five years, and that he authored five papers relating to OAA. Dr. Moran also did “little programming for OAA after 1995” due to a nerve injury and claimed to have “conducted code reviews and design sessions” on top of his primary responsibility for “presentations, demonstration scenarios, funding proposals and research publications.” One of the inventors testified that the named inventors were responsible for the technical details in the reference, and that Dr. Moran’s role on OAA was “administrative.”

IPA responded that Dr. Moran’s statements about his specific contributions were not corroborated, and the PTAB agreed and upheld the patents.

The Federal Circuit vacated and remanded, finding Dr. Moran’s testimony as to his technical contributions sufficiently corroborated by his being named as a co-author on the reference and his role within the OAA project and other evidence. Rather than dismissing Dr. Moran’s testimony, the Federal Circuit held the PTAB should have weighed the credibility of Dr. Moran’s testimony against the testimony of the named inventors.

It seems easy to understand why Dr. Moran could have been named on an academic article and not as an inventor. What level of work allows an individual to be named on an article can be subjective and diverse, whereas a patent inventor must have contributed to the claimed invention. A senior administrator, who generally worked on a project and was responsible for “funding proposals and research publications” could ask to be included as an author of an article about the project. In 1999, SRI made the decision that level of Dr. Moran’s contribution fell in the author-but-not-inventor zone and later submitted declarations to that effect. SRI might have chosen, instead, to remove the issue of the article altogether by simply naming Dr. Moran as a joint inventor at that time. In other words, SRI did work to try to get the question of joint inventorship right. Given how difficult the question of joint inventorship can be, that decision appears questionable in hindsight. Now IPA must go back to the PTAB to show this 20-year old decision was, in fact, right or see its case against Google diminished.