Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Plastipak Packaging, Inc. v. Premium Waters, Inc., 2021-2244 (Dec. 19, 2022), reversing a district court’s grant of summary judgment in a patent infringement case.
Plastipak sued Premium Waters for infringement of several patents directed to plastic containers and plastic container preforms with a neck portion (also called a neck finish). Each of the asserted patents claims priority to U.S. Application No. 11/749,501, which was filed on May 16, 2007, and each patent lists Richard C. Darr and Edward V. Morgan as the inventors. Premium Waters moved for summary judgment asserting that the patents were invalid for failure to include a joint inventor—Alessandro Falzoni—who Premium Waters asserted contributed certain limitations of the claims. The district court granted the motion and entered judgment in favor of Premium Waters. Plastipak appealed.
The Federal Circuit reversed. Analyzing the inventorship issue under pre-AIA 35 U.S.C. § 102(f), the Court explained that inventorship is a question of law based on underlying determinations of fact. The Court further explained that to qualify as a joint inventor a person must “(1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.” The Court concluded that the record reflected genuine disputes of material fact as to whether Falzoni sufficiently contributed to the claim limitations at issue. Moreover, with respect to one of the limitations, the Court held there was a genuine dispute of material fact as to whether it merely reflected the state of the art. In explaining its conclusions, the Court noted that “often the assessment of what contribution has been made by a purported inventor, and whether that contribution is significant, is bound up with material fact disputes which a reasonable factfinder could resolve in favor of either party.” In this case, the Court held those fact disputes rendered summary judgment improper and remanded the case for further proceedings.