When a new invention is created (if it is worth anything), everyone wants to take credit. Figuring out whose “baby” it is, is a difficult question.

What is an inventor? Who is the inventor? One would think these questions have straightforward answers. They do not. Inventorship is one of the most difficult and gray areas of patent law.

It is easy to say what (or who) an inventor is not. An inventor is not the research technician who carries out the instructions of the lead investigator developing a new drug. An inventor is not the computer programmer who writes the code for software developed by someone else. An inventor is not the machinist who fabricates a device under the direction of the engineer. An inventor is not the CEO of the company, the most important shareholder, the leading investor, or the supportive colleague. An inventor is not a corporation or other business entity.

The inventor is the person (a natural person) who “invents” the invention. Inventing consists of three phases: conception of the invention; steps taken toward reducing the invention to practice; and reduction to practice of the invention. The person, or persons, who perform the first phase, conception, are the inventors. The person(s) who perform the second and third phases can be the inventor(s) or those acting at the direction of the inventor(s).

Conception is the formation of the definite and permanent idea of the complete and operative invention. This means that the structure and function of the invention have been fully thought out. If the inventor can describe how to make and use the invention, such that a person with ordinary skill in the art could make and use it, then there is conception. The inventor may have others help actually make the invention, but this does not make them inventors.

Any person who makes a contribution to the conception of the invention is an inventor. Multiple inventors are called joint inventors. The determination of whether a person is a joint inventor is very fact-specific. Joint inventors must be working together in some sense, although they need not work together physically or at the same time. Joint inventors cannot be working completely independently; if so, they are not joint inventors, but sole inventors of the same invention. The contributions of the joint inventors need not be of the same size or significance. The contribution of a small, minor aspect of the invention is enough to make a person a joint inventor as long as that aspect is contained in at least one claim of the patent.

If there is more than one inventor of an invention, each inventor owns an equal, undivided interest in the invention and in any patent on the invention. This is true regardless of the amount of the inventor’s contribution. Each inventor can make, use, offer to sell, or sell the invention in the United States, or import the invention into the United States, without the consent of the other joint inventors. In order to transfer all the rights to an invention, all of the joint inventors must sign an assignment.

All of the inventors must jointly file a patent application. Each inventor must sign the oath or declaration. All of the true inventors must be named as inventors, and the application cannot name a person who is not an inventor. For example, an inventor cannot be excluded because he or she is no longer employed by the company filing the patent application. Nor can a person who is not an inventor be named as an inventor simply as an acknowledgment or reward for working on the project. Errors in inventorship can be corrected by amending the patent application, or the issued patent, as long as the error was unintentional.

Inventorship problems occur frequently in companies where several employees work together on a project that results in an invention. The existence of joint inventors raises two problems. First, because each joint inventor owns, and has full rights to exploit, the invention, all of the inventors need to sign an assignment to the company if the company is to obtain clear title to the invention. It is easiest to do this before the employees are hired or, if not, before they leave the company. It is often not done until after the employee has left the company, however, and the company decides to file a patent application. Second, a patent that issues with incorrect inventorship (either omitting an inventor or including a non-inventor) is at risk of being invalidated, unless a correction is made. In other words, years after the invention was invented, when the company is in litigation to enforce its patent, the issue of inventorship can be raised as a basis for invalidating the patent. Thus, inventorship issues should be resolved as early as possible, hopefully before the patent application is filed.

The Federal Circuit Court of Appeals has affirmed a jury verdict of $140 million in a patent infringement case.  The damages were based on a reasonable royalty.  The case is Sprint Communications Co., L.P. v. Time Warner Cable, Inc., 2018 U.S. App. LEXIS 33594 (Fed. Cir.  2018).

Sprint sued Time Warner in the District of Kansas for infringement for several of Sprints patents for a telephone communications network.  Sprint alleged that Time Warner’s voice over internet protocol (VoIP) service infringed Sprints telecommunications patents.  The case was tried to a jury.  At trial, the district court admitted Sprints evidence of another jury verdict Sprint had obtained in a different case over the same patents against Vonage Holdings Corporation.  The court found that the evidence was relevant to the jury’s determination of reasonable royalty damages using the hypothetical negotiation theory of determining the royalty.  The jury awarded Sprint reasonable royalty damages of $140 million, calculated as $1.37 for each of Time Warner’s subscribers to its VoIP service.

On appeal, Time Warner argued that the district court should not have admitted evidence of Sprint’s verdict against Vonage because that royalty was based on the total amount of Vonage’s revenues, rather than the amount apportioned to the patented aspects of the product.

The Federal Circuit affirmed the jury’s verdict.  The court held that the district court had properly admitted the evidence of the Vonage verdict.  The court found that an apportionment between the patented and unpatented aspects of a product is not required if the Georgia-Pacific factors are used to determine the royalty.  The Georgia-Pacific case sets for a long list of factors, which the Federal Circuit has approved, that are relevant in determining a reasonable royalty.  Under Georgia-Pacific, the royalty rates for comparable licenses are relevant even if the royalty rate is based on total sales rather than sales of the patented component.

Here, the court found that the jury had considered two other comparable licenses Sprint had granted for the same technology.  Both of those licenses had utilized the same royalty rate as was used in the Vonage verdict.

The court explained the damage theory as follows:  “[T]he hypothetical negotiation seeks to determine ‘what it would have been worth to the defendant, as it saw things at the time, to obtain the authority to use the patented technology, considering the benefits it would expect to receive from using the technology and the alternatives it might have pursued.’”  Id. at *15, quoting Carnegie Mellon Univ. v. Marvell Tech. Grp., Ltd., 807 F.3d 1283, 1304 (Fed. Cir. 2005).

Based on the jury’s application of this theory, the court held, at *15, that “[I]n light of all the evidence bearing on the damages award, we conclude that the jury’s verdict was supported by sufficient evidence and did not contravene the principles of apportionment set forth by this court.”

On December 28, 2018, the Court in The California Institute of Technology v. Broadcom Limited et al., Case No. 2:16-cv-03714-GW-(AGRx), issued a Final Ruling on Plaintiff’s Motion for Partial Summary Judgment of Validity under 35 U.S.C. § 103 based on IPR Estoppel under 35 U.S.C. § 315(e)(2).  In the case, Plaintiff The California Institute of Technology alleges patent infringement against Defendants Broadcom Limited, Broadcom Corporation, Avago Technologies Limited, and Apple Inc. based on infringement from fifteen claims from three of its patents: (1) U.S. Patent No. 7,116,710 (“the ’710 Patent”); (2) U.S. Patent No. 7,421,032 (“the ’032 Patent”); and (3) U.S. Patent No. 7,916,781 (“the ’781 Patent”) (collectively, the “Asserted Patents”).

Plaintiff moved for partial summary judgment of no invalidity as to Claims 13 and 22 of the ’781 Patent and Claims 11 and 18 of the ’032 Patent, arguing that IPR estoppel precluded Defendants from raising each invalidity ground that was identified in Defendants’ invalidity contentions as to each of those claims in prior filed IPRs.  Section 315(e)(2) of the Patent Act states: “The petitioner in an inter partes review [IPR] of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not assert . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.”  Here, the Court had to consider whether the statutory IPR estoppel provision reaches to invalidity grounds that a petitioner was aware of at the time it filed its IPR petition, but chose not to bring in the IPR proceeding.

The Defendants argued that if a prior art reference is included in an IPR petition and IPR is not instituted as to that prior art reference, the reference could not have been reasonably raised during IPR.  However, the Court reasoned that the “during IPR” language also should not be read in a vacuum.  The full phrase of § 315(e)(2) is whether the ground is one “that the petitioner raised or reasonably could have raised during that inter partes review.”  There is no reasonable basis by which a petitioner could raise a ground that has been explicitly rejected by the PTAB in making an IPR institution determination.  But in the context of non-petitioned grounds, the issue goes back to the choices made by the petitioner itself.  In other words, prior art references that a petitioner reasonably could have raised, but chose not to raise, in an IPR petition are also prior art references that reasonably could have been raised during actual IPR had the PTAB been given the opportunity (based on the petitioner’s raising them) to consider those references.

The choices of the petitioner – and the petitioner alone – in its initial decision regarding what grounds to bring before the PTAB dictate what grounds are raised (or reasonably could have been raised) “during IPR” and thus could result in estoppel if IPR results in a final written decision.  Thus, the Court found that statutory IPR estoppel applies to invalidity grounds that a petitioner “reasonably could have raised” in its IPR petition, which includes prior art that a “‘skilled searcher conducting a diligent search reasonably could have been expected to discover.’”

Next, and aside from their arguments regarding the scope of § 315(e)(2) estoppel, Defendants argue that they are now bringing certain prior art under pre-AIA § 102(a), i.e., not as “patents or printed publications,” but as information that was “known or used by others” before the patented invention.  As Defendants note, in IPR proceedings, the PTAB will only consider patents or printed publications as grounds for invalidity due to anticipation or obviousness.  Because, Defendants argue, they are relying on the “known or used” prong of pre-AIA § 102(a) for all but one of their prior art grounds (i.e., not on prior art patents or printed publications), the prior art could not have been raised during IPR proceedings and IPR estoppel does not apply.

Under pre-AIA, the juxtaposition between § 102(a) and § 102(b) effectively created a one-year grace period for a patent applicant to file a patent application even after the inventor disclosed information about an invention to the public as long as it was not done via a printed publication.  For example, the “known or used” prong of § 102(a) can come into play in the instance where a scientist gives a public presentation and shows slides, but does not distribute his/her slides or immediately publish a copy of them. The presentation itself (as, for instance, recollected through the scientist’s testimony) could still be considered prior art even if the presentation slides were not made “publicly available” at the same time as the presentation.

The Defendants also emphasized an analogy to a circumstance where a petitioner submits a product manual as printed publication prior art before the PTAB, but is not estopped from submitting a prior art product itself in district court litigation.  However, the Court reasoned that whether brought as a “printed publication” or under the “known or used” prong, the core element that forms the basis of Defendants’ prior art includes the same documents.  Although Defendants assert that there will be a “meaningful difference” in the invalidity presentation under the “known or used” prong, Defendants have not presented sufficient evidence to back that assertion.

Thus, after considering the unique facts of this case, including the specific prior art grounds Defendants seek to characterize, the Court was not persuaded by Defendants’ argument that it is shielded from statutory IPR estoppel by its references to the “known or used” prong of § 102(a). Accordingly, the Court found that statutory IPR estoppel applies to most of the obviousness combinations Defendants has raised, and granted Plaintiff’s motion.

This case is a strong reminder to carefully consider whether or not to file an IPR in defense of a patent infringement action, and if so, what the consequences can be if the IPR fails.  In addition, it is a strong reminder to carefully consider which arguments and prior to raise in any IPR.

The Trademark Trial and Appeals Board recently issued an interesting decision regarding standing to oppose the registration of trademark applications. United Trademark Holdings, Inc. filed for registration of the mark RAPUNZEL for use in conjunction with dolls and toy figures. However, after the USPTO’s examining attorney published the mark for opposition, a law professor filed a notice of opposition, alleging that Applicant’s mark failed to function as a trademark on the grounds that it is synonymous with the name of a well-known childhood fairytale character, which has long been in the public domain.

In response to the notice of opposition, the applicant filed a motion to dismiss claiming the opposer lacks standing because she is not a competitor and has not used the mark in connection with the manufacturer or sale of dolls. The TTAB disagreed, stating that “Consumers, like competitors, may have a real interest in keeping merely descriptive or generic words in the public domain.” Apparently, the TTAB was receptive to the opposer’s argument that “she has purchased and continues to purchase said goods and that registration of the applied-for mark by applicant would constrain the marketplace of such goods sold under the name ‘Rapunzel,’ raise prices of ‘Rapunzel’ dolls offered by other manufacturers.” Accepting this argument, the TTAB held the opposer’s allegations sufficient to establish that she has a direct and personal interest in the outcome of the proceeding, in accordance with the “liberal threshold” established in Ritchie v. Simpson, a precedential opinion issued by the U.S. Court of Appeals for the Federal Circuit.

The TTAB reiterated the Federal Circuit’s holding that, “In no case has this court ever held that one must have a specific commercial interest, not shared by the general public, in order to have standing as an opposer.” Instead, “the crux of the matter is not how many others share one’s belief that one will be damaged by the registration, but whether that belief is reasonable and reflects a real interest in the issue.” “Consumers, like competitors, may have a real interest in keeping merely descriptive or generic words in the public domain, (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.”

In light of the above, members of the consuming public may have a real interest in preventing exclusive appropriation of merely descriptive or generic terms by trademark owners. As such, consumers are entitled to challenge the registration of trademarks through opposition proceedings before the TTAB.

Actors gain notoriety for different reasons.  For some, it’s due to a physical characteristic or an iconic character portrayal.  For Alfonso Ribeiro, it’s a dance.  The dance, which has become known worldwide as the “Carlton Dance,” is a corny dance number performed by Ribeiro’s character Carlton Banks on the 90’s sitcom “The Fresh Prince of Bel Air.”   That dance is now the center of a copyright infringement lawsuit Ribeiro filed against Epic Games and Take-Two Interactive.  Ribeiro claims that Epic Games incorporated the Carlton Dance in the hit fighting game  “Fortnite” and Take-Two did the same in the popular “NBA 2K16” basketball game.

To be fair, Ribeiro is not the only one claiming Take-Two and Epic Games infringed dance choreography; other plaintiffs include rapper Terrence Ferguson (known as 2 Milly) who claims that Epic Games infringed his “Milly Rock” routine, and Russell Horning, better known as Backpack Kid, who claims that Fortnite and NBA 2K16 characters were programmed to mimic moves from his routine, “The Floss.”

Dance routines are protectable under the Copyright Act.  Section 102(a)(4) of The Copyright Act provides copyright protection of  “pantomimes and choreographic works” created after January 1, 1978, and fixed in some tangible medium of expression.   Choreography is the composition and arrangement of a related series of dance movements and patterns organized into a coherent whole.  According to the Copyright Office’s Circular 52, a choreographic work or pantomime typically contain one or more of the following elements:

  • Rhythmic movements of one or more dancers’ bodies in a defined sequence and a defined spatial environment, such as a stage
  • A series of dance movements or patterns organized into an integrated, coherent, and expressive compositional whole
  • A story, theme, or abstract composition conveyed through movement
  • A presentation before an audience
  • A performance by skilled individuals
  • Musical or textual accompaniment

The Copyright Office does state that the presence or absence of a given element does not determine whether a particular work constitutes choreography or a pantomime.

However, individual movements or dance steps by themselves are not copyrightable.  Examples of non-protectable dance steps include the basic waltz step, the hustle step, the grapevine, or the second position in classical ballet. The U.S. Copyright Office cannot register short dance routines consisting of only a few movements or steps with minor linear or spatial variations, even if a routine is novel or distinctive. An example of a commonplace movement or gesture that does not qualify for registration as a choreographic work includes celebratory end zone dance move or athletic victory gesture.

Also not registrable are social dance steps and simple routines. Registrable choreographic works are typically intended to be executed by skilled performers before an audience. By contrast, uncopyrightable social dances are generally intended to be performed by members of the public for the enjoyment of the dancers themselves. Social dances, simple routines, and other uncopyrightable movements cannot be registered as separate and distinct works of authorship, even if they contain a substantial amount of creative expression.

This could be the first hurdle Ribeiro must overcome.  It seems fair to argue that the “Carlton Dance” is uncopyrightable due to its simple, uncomplicated nature.   The Carlton Dance consists of only a few or steps with minor linear or spatial variation.

Ribeiro credits the Carlton Dance to Eddie Murphy’s routine “White People Can’t Dance” from RAW.  In that routine, Eddie Murphy commented on the ubiquitous nature of the style of dance mimicked by Ribeiro.  While intended to be humorous (and it is), Murphy’s statement was an accurate generalization of the 90’s dance style.  As such, it would not be an unreasonable argument that the “Carlton Dance” is uncopyrightable basic dance step.

Even if the Carlton Dance were registrable, Ribeiro would have to establish that he owned the copyright and not NBC Productions, the studio that produced “The Fresh Prince of Bel Air.”  While this author has not seen Ribeiro’s performer contract, it is standard practice in the entertainment industry that all television performer contracts include a provision which vests the production company with all “right, title and interest, including copyright, in the results and proceeds” of a performer’s services.  As a result of this provision, Ribeiro’s performance as Carlton and all of the characteristics and attributes of the Carlton character would be owned by NBC Productions and not Ribeiro.  As its name implies, the Carlton Dance is an attribute of the character Carlton Banks and any copyright interest therein would likely be owned by NBC Productions.

The fact that the Carlton Dance is an attribute of the television character played by Ribeiro could be a factor in determining his right of publicity claim.  However, Ribeiro has essentially co-opted the “Carlton Dance” as his own by having performed it in numerous talk show and personal appearances.  The right of publicity can extend to various personal attributes such as name, nicknames, pseudonyms, voice, signature, likeness, photograph or other indicia of identity or persona.  An argument that the Carlton Dance has become synonymous with Ribeiro would support a claim that the Carlton Dance is part of his protectable persona.  If such argument is well received by the court, based on the holdings of White v. Samsung Electronics America, Inc., and Wendt v. Host International, the two video game companies could face substantial liability.