Ethicon v. United States Surgical Corp.
135 F.3d 1456 (Fed. Cir. 1998)
Yoon was a doctor who was
working on technologies related to endoscopes. He worked with a guy named
Choi for a while, but eventually they stopped working together.
Yoon applied for and received
a patent on a some kind of doo-dad called a 'trocar'. He listed himself
as the sole inventor of the
invention, despite the fact that Choi had helped. Yoon licensed the
trocar to Ethicon.
Yoon didn't bother to tell
Choi about the patent.
There is a presumption that
the person whose name is on the patent is the true inventor.
Despite the fact that
Choi's handwriting was on the documents Yoon submitted to get the
Later, Ethicon sued USSC for infringement. USSC found Choi and sued to get Choi's name
listed on the patent as an co-inventor.
USSC signed a licensing deal
with Choi, and argued that if Choi was the co-inventor, then USSC couldn't be sued for infringement.
The Trial Court found for
USSC. Ethicon appealed.
The Trial Court found that
Choi was the co-inventor of
several of the claims in Yoon's patent.
See 35 U.S.C. §116, which provides guidance on joint
The Appellate Court affirmed.
The Appellate Court found
that joint inventors need not each
make the same amount of contributions to the patent. However, to be a joint
inventor you can't merely assist, you
have to be able to prove your contribution to the conception of the
claims (by clear and convincing evidence).
To be a co-inventor you have to do more than just help with basic
principles or explain what the state of the art is, or just reduce the
invention to practice. You have to actually come up with some ideas
The Court looked at the
evidence presented in the Trial Court and found that it showed by clear
and convincing evidence that Choi met the definition of a co-inventor.
The Court found that even
though Choi only contributed to some of the claims in the patent, as a co-inventor, he gets the right to license the entire
Choi only argued that he
was responsible for 2 of the 55 claims in the patent. Yet, because he
was a co-inventor, he gets the
rights to the entire patent, even the 53 claims he admits he had nothing
to do with.
Prior to 1984, inventorship was ground for patent invalidity, and if there
was a situation like this, Yoon's patent would have been declared invalid.
Interestingly, as a co-inventor Choi had the right to license the technology
and keep 100% of the money he earned from USSC. Even though Yoon was a co-owner he got nothing.
Conversely, under copyright
law joint authors can independently license their joint work, but they
have to share the profits among all the authors.