- Bearbox 23-1922.pdf [NEEDS_REVIEW]
Standard for correcting inventorship and need for corroboration of an alleged inventor’s testimony.: To correct inventorship under 35 U.S.C. § 256, the challenger must overcome the presumption of correct inventorship by clear and convincing evidence, and an alleged inventor’s testimony must be corroborated under a rule-of-reason assessment of the totality of evidence.
Whether an element-by-element (limitation-by-limitation) analysis is permissible in assessing an alleged contribution to conception/communication for § 256 inventorship.: A district court does not err by analyzing claim limitations when assessing whether the alleged inventor contributed significantly to the conception or reduction to practice of at least one claim and whether the alleged contribution was communicated before the named inventors’ independent conception, so long as the claims are considered as a whole in the court’s analysis.
- Coda Development 23-1880.pdf
Substantive standard for adding a named inventor to an issued patent.: Correction of inventorship requires proof of conception, and conception must include every feature or limitation of the claimed invention; evidence tied to a trade secret does not establish inventorship where it does not match the scope of the patent claims.
- Global Health 23-2009.pdf
Preservation of a request to correct inventorship in an AIA derivation proceeding.: A contested request to correct inventorship must be properly presented through the PTAB’s required motion procedure and supported with the required content and fee; an undeveloped, conclusory request embedded in a petition and not pursued is forfeited, so no remand is warranted.