We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, November 19, 2012. Brief synopses are presented below.

Hor v. Chu, Case No. 2011-1540 (Fed. Cir. November 14, 2012) (attached).

The defendant, Paul Chu, is a professor at the University of Houston.  He is listed as the sole inventor of U.S. Patent Nos. 7,056,866 and 7,709,418, which relate to a super-conducting material that does not require liquid nitrogen coolant.  The patents have earned $680,000 for the university, half of which was given to Chu.  Chu distributed about $140,000 to his lab assistants, including Hor and Meng.  Nevertheless, Hor and Meng brought suit claiming that they should also be listed as co-inventors.

The district court dismissed the case as barred by laches saying that the plaintiffs should have known for a long time that they were not named as inventors on the patent application. The district court also held that the suit was barred by equitable estoppel.

On appeal, the Federal Circuit vacated the lower court’s decision on laches, holding that the period for laches for an inventorship action does not begin to run until the patent actually issues, even if “the omitted inventors knew or should have known prior to patent issuance that their names were omitted.”  The Federal Circuit also vacated the equitable estoppel holding because it had been raised sua sponte by the lower court and in light of defendant’s failure to assert the defense against either plaintiffs.

Joy Mining Machinery v. Cincinnati Mine Machinery, Case No. 2012-1153 (Fed. Cir. November 8, 2012) (nonprecedential) (attached).

35 U.S.C. §112, first paragraph, requires that the best mode of carrying out the invention be disclosed.

Patent No. 6,662,932 is owned by Joy Mining Machinery and is directed to an apparatus for use in mining.  The inventors had determined that the best mechanism for its claimed drive-pin retainer was a press fitting. The patent does not identify a press fitting in the specification and instead suggests welding.  However, a press fitting mechanism was already known to those of skill in the art as a way to construct a drive-pin retainer.

The district court invalidated the asserted claim for failing to disclose the best mode.  The Federal Circuit reversed, holding that the best mode requirement does not require actual disclosure of the best mode, but rather only adequate disclosure to enable one of skill in the art to practice the best mode without undue experimentation.  The defendant, Cincinnati Mine Machinery, had failed to show any clear and convincing evidence upon which a reasonable jury could rely to find that the omission of press fitting from the ‘932 patent “concealed” its use as a drive-pin retaining means from the public.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, November 19, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.