No Notice No Fix Failure to Satisfy 256 B Renders Patent Invalid

Wriiten by: Brian C. Barnes and Nefi R. Oliva

Fortress Iron, LP, v. Digger Specialties, INC.

Before Lourie, Hughes, Circuit Judges, and Kleeh, Chief District Judge.  Appeal from the United States District Court for the Northern District of Indiana.

Summary: Omitted coinventor is a “party concerned” under 35 U.S.C. § 256(b), and inventorship cannot be corrected without providing that inventor notice and an opportunity to be heard.

Fortress sued Digger Specialties for infringement of patents directed to pre-assembled railing panels. During the litigation, Fortress acknowledged that two individuals had been omitted as coinventors on the patents. Fortress could not locate one of the coinventors and therefore sought to correct inventorship in district court under § 256(b). The district court denied Fortress’s request because the omitted co-inventor qualified as a “party concerned” entitled to notice and an opportunity to be heard under the statute. Because Fortress could not locate the coinventor, it could not satisfy this statutory requirement, and the district court held the patents invalid for incorrect inventorship.

The Federal Circuit affirmed.  The Federal Circuit held that an omitted inventor is a “party concerned” under § 256(b) and must be afforded notice and opportunity to be heard. The court rejected Fortress’s attempts to limit “party concerned” to coinventors with adverse economic interests or constitutional standing. Accordingly, because Fortress could not meet § 256(b)’s procedural requirements, it could not correct the inventorship error. The court further held that a patent is invalid if it incorrectly lists its inventors and cannot be lawfully corrected.

Editor: Sean Murray