“People may be joint inventors even though they do not physically work on the invention together or at the same time, and even though each does not make the same type or amount of contribution.” Falana v. Kent State Univ., 669 F.3d 1349, 1357 (Fed. Cir. 2012).

“The interplay between conception and collaboration requires that each co-inventor engage with the other co-inventors to contribute to a joint conception,” Vanderbilt Univ. v. ICOS Corp., 601 F.3d 1297, 1303 (Fed. Cir. 2010), not that each co-inventor independently conceive of the entire invention ultimately claimed.

An alleged joint inventor must show that he contributed significantly to the conception—the definite and permanent idea of the invention—or reduction to practice of at least one claim. Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., 964 F.3d 1365, 1371 (Fed. Cir. 2020). And these contributions arose from “some element of joint behavior, such as collaboration or working under common direction” with the other inventor(s). Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., Inc., 973 F.2d 911, 917 (Fed. Cir. 1992).

While co-inventors cannot be “completely ignorant of what [the] other has done,” there must be some “element of joint behavior, such as collaboration or working under common direction, one inventor seeing a relevant report and building upon it or hearing another's suggestion at a meeting.” Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., Inc., 973 F.2d 911, 917 (Fed. Cir. 1992).

“The determination of whether a person is a joint inventor is fact specific, and no bright-line standard will suffice in every case.” Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997).

Joint Invention of Expandable Hose in Reverse

In Blue Gentian, LLC v. Tristar Products, Inc., No. 21-2316, – F.4th – (Fed. Cir. June 9, 2023), the Federal Circuit considered a situation where the alleged joint inventor had disclosed confidential information to the named inventor at a meeting for investors for a different expandable hose, but the named inventor later used that disclosure to design an alternative expandable hose invention.

Michael Berardi was the sole named inventor for the claimed inventor for an expandable hose. Mr. Berardi had no experience designing or building hoses. He allegedly came up with the idea for his expandable hose while at the gym where he “wonder[ed] what would happen if [he] put water through” a resistance band; but “it was just . . . a nebulous concept.”

Gary Ragner was seeking investors to bring his MicroHose product, an expandable hose, to market. Mr. Ragner had a science and engineering background and previously had designed many expandable hose prototypes.

Mr. Ragner met with Mr. Berardi in Mr. Berardi's home for that purpose. Mr. Ragner testified that during the meeting Mr. Berardi “asked whether [h]e could replace . . . the wire spring [in the MicroHose] with elastic” and Mr. Ragner responded by saying that you could and by explaining that his “first two prototypes had a surgical tubing in them for the retracting force.”

            Within hours after the meeting, Mr. Berardi went to Home Depot to buy supplies to build a hose prototype.

The district court later found that Mr. Ragner conveyed three key elements of the hose to Mr. Berardi at the meeting: “(1) inner and outer tubes attached only at the ends, (2) a fabric outer tube, and (3) an elastic inner tube that can provide force to retract the hose without a metal spring.” The Federal Circuit held that the documentary evidence showing “Mr. Ragner's familiarity with the three hose elements before the meeting lends credibility with the three hose elements before the meeting lends credibility to his account of conveying those ideas to Mr. Berardi at a meeting centered around discussing and presenting on an expandable hose.”

And the district court also found that the claims of the utility patent and the design patent reflected the three key elements contributed by Mr. Ragner.

Indeed, the Federal Circuit noted that “these are the very elements [the patentee] used to distinguish the invention of the asserted patents from the prior art.”

With respect to the design patent, “Mr. Berardi admitted that the resulting form of the fabric cover in the design patents turned on the elements used to construct his prototypes—a garden hose configuration that Mr. Berardi only developed based on the three hose elements Mr. Ragner disclosed to him.” The Federal Circuit also noted that there was no dispute that those three elements necessarily contributed to the patented designs' “crumpled” appearance.

As for collaboration or other joint behavior in a meeting seeking investment for a different hose, Berardi argued that the meeting with Ragner was intended to procure investment for a different hose, not design an alternative to it.

The Court, however, found that there was sufficient collaboration between Mr. Berardi and Mr. Ragner based on the information exchanged at the meeting including confidential information about the MicroHose. Also, Mr. Berardi built the patented invention after receiving Mr. Ragner's confidential disclosures to him.

Mr. Ragner showed Mr. Berardi confidential information about hoses he had designed, discussed technical details about how he planned to manufacture his hose, and discussed alternative ways to build an expandable hose. Mr. Berardi built off of those contributions and immediately began building prototypes of the expandable hose eventually claimed in the asserted patents.

Although Mr. Ragner's contributions were made for the purpose of seeking investors for his MicroHose product, and not with the intent to contribute to Mr. Berardi's alternative expandable hose; the Federal Circuit held that it was not necessary for Mr. Ragner's contributions to have been provided with the intent to invent the hose that was ultimately claimed by Mr. Berardi. Accordingly, Mr. Ragner was deemed to be a joint inventor.

Here, the subjective intent to invent was less important than the quality and substance of the disclosure that became a contribution to the claimed invention.

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