Declaration Admitting Inventor Lied Is Insufficient To Invalidate Patent On Defendant's Motion for Summary Judgment

Case: Checkpoint Systems, Inc. v. All-Tag Security S.A. et al., (Fed. Cir. June 20, 2005)

The One Sentence Summary: The Federal Circuit held that declarations by co-inventors admitting they lied to the PTO in a patent application about inventorship created a disputed issue of material fact which precluded summary judgment for the defendant, since they conflicted with the statements the declarants made under oath in connection with the patent application.

What They Were Fighting About: Checkpoint and All-Tag are competitors in the business of manufacturing and selling disposable, deactivatable resonance labels for the retail industry. A resonance label is a device that is attached to merchandise in department stores and other outlets in order to prevent theft of the merchandise. Checkpoint acquired the patent in dispute when it purchased a firm which had, in turn, acquired the patent application when it bought a third firm. Checkpoint sued All-Tag for infringing Checkpoint's patent which claimed a resonance label and a method of making it.

The United States application for the patent listed a single inventor, Paul R. Jorgenson. He also declared in the application that he qualified as an independent inventor for purposes of paying reduced fees. Jorgenson assigned his interest in the patent application to a company named Durgo. Two men associated with Durgo, Franz Pichl and Lukas Geiges also filed declarations with the PTO in connection with prosecution of the patent application in which they identified Jorgensen as the inventor.

Checkpoint sued All-Tag for patent infringement after Checkpoint acquired the patent through its purchase of the company that had bought Durgo.

All-Tag moved for summary judgment on the ground that the patent was invalid since it incorrectly listed Jorgenson as the sole inventor. In support of its motion, All-Tag proffered declarations from Jorgenson, Pichl, and Geiges which stated that the resonance label that was the subject of the patent was based on the concepts developed by all three men. Geiges's declaration also stated that the men intentionally omitted Mr. Pichl's name on the patent application filed in the United States because of Pichl's and Geiges's competitive relationship with Checkpoint at the time, and that they were concerned that Checkpoint might try and claim ownership in the technology based on Pichl's company's supply agreement with Checkpoint.

The district court granted the defendants' motion for summary judgment, reasoning that the three men's declarations were undisputed evidence that they were co-inventors. The Federal Circuit reversed.

Federal Circuit Holdings:

• The declarations were not undisputed evidence. They raised a disputed issue of material fact whether Jorgenson was the sole inventor which precluded summary judgment since they conflicted with the three men's earlier statements made under oath in connection with the patent application. "The unresolved question is whether Jorgenson, Pichl, and Geiges lied to the PTO in 1988 or whether they are lying to the courts now."

• The Federal Circuit declined to apply the "corroboration rule" in the first instance, and left it for the district court to apply the rule to the facts of the case. A defendant who claims a patent is invalid through failure to join an inventor on the application must prove the nonjoinder of an actual inventor by clear and convincing evidence. The "corroboration rule" states that uncorroborated testimonial evidence of an inventor absent other evidence is insufficient to invalidate a patent, and additional evidence such as physical, documentary, circumstantial evidence, or reliable testimony from individuals other than the alleged inventor or an interested party is needed.