VI. CONCLUSION
75
Accordingly, the judgment of the United States District Court for the District of Connecticut is affirmed.
COSTS
76
Each party shall bear its own costs.
77
AFFIRMED.
78
PAULINE NEWMAN, Circuit Judge, dissenting.
79
I respectfully dissent, for whether or not Mr. Choi made an inventive contribution to two of the fifty-five claims of the '773 patent, he is not a joint owner of the other fifty-three claims of the patent. Neither the law of joint invention nor the law of property so requires, and indeed these laws mandate otherwise.
80
The district court found that Mr. Choi made a contribution to two claims of the '773 patent. Although precedent would as readily place Mr. Choi's work in the category whereby "an inventor 'may use the services, ideas and aid of others in the process of perfecting his invention without losing his right to a patent,' " Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624, 225 USPQ 634, 641 (Fed.Cir.1985) (quoting Hobbs v. United States Atomic Energy Comm'n, 451 F.2d 849, 864, 171 USPQ 713, 724 (5th Cir.1971)), the district court's finding as to the two claims is not clearly in error. That conclusion is not my primary concern. My primary concern is with the failure of the court to recognize, in deciding ownership rights, the effect on these rights of the 1984 amendment of 35 U.S.C. § 116, which markedly changed the law of naming inventors on patents, and authorized the "joint invention" here adjudicated.
81
Before the statutory change made in 1984 Mr. Choi could not have been named a "joint inventor" of the '773 patent, for he had not jointly conceived and contributed to the entire invention. It is not disputed that his contribution is limited to elements of two of the fifty-five patent claims. Such a person was not a "joint inventor" under pre-1984 law. That law required that joint invention be the "simultaneous production of the genius and labor of both parties." Stearns v. Barrett, 22 F. Cas. 1175, 1181 (C.C.D.Mass.1816) (Story, J.). Joint ownership, in turn, was based on this principle of joint invention.
82
Those assistants who worked on an invention at the behest of the originator of the idea did not achieve the legal status of "joint inventor." Having no legal status as an inventor, such assistants acquired no property right in the invention by virtue of their contributions. See Collar Co. v. Van Dusen, 90 U.S. (23 Wall.) 530, 563-64, 23 L.Ed. 128 (1874) (ancillary discoveries of assistant belong to person who conceived original principle unless they "constitute the whole substance of the improvement"); Agawam Co. v. Jordan, 74 U.S. (7 Wall.) 583, 602-4, 19 L.Ed. 177 (1868) (same). In Agawam the Court explained that one less than a true joint inventor was forbidden from "appropriat[ing] to himself the entire result of the ingenuity and toil of the originator, or put[ing] it in the power of any subsequent infringer to defeat the patent." 74 U.S. at 604.
83
The 1984 amendment of 35 U.S.C. § 116 permitted the naming as an inventor of all persons who assisted in the development of an idea, or parts thereof, that originated with others. Such naming, however, does not automatically endow the assistant with full and common ownership of the entire invention, including the contributions of all others including the originator. That is not a reasonable consequence of the change in the law of naming inventors that occurred in 1984.
A. The Law of Joint Invention
84
The purpose of the amendment of § 116 was to remedy the increasing technical problems arising in team research, for which existing law, deemed to require simultaneous conception as well as shared contribution by each named inventor to every claim, was producing pitfalls for patentees, to no public purpose. As stated in its legislative history, the amendment to 35 U.S.C. § 116 "recognizes the realities of modern team research." 130 Cong. Rec. 28,069-71 (1984) (statement of Rep. Kastenmeier).
85
Before 1984 precedent did not permit naming as an inventor a person who did not share in the conception of the invention and who did not contribute to all of the claims of the patent. See In re Sarett, 51 C.C.P.A. 1180, 327 F.2d 1005, 1010 n. 7, 140 USPQ 474, 479 n. 7 (CCPA 1964) ("It should be clear that the patent could not legally contain a claim to Sarett's sole invention under existing law because it would not have been the invention of the joint patentees." (emphases in original)); In re Hamilton, 17 C.C.P.A. 833, 37 F.2d 758, 759, op. den. reh'g, 17 C.C.P.A. 914, 38 F.2d 889, 890 (CCPA 1930) (joint patent could not issue on portion of invention made by single inventor). If different persons made an inventive contribution to various parts of an invention or to different claims of a patent, the legalistic problems that arose were not readily soluble, even by the complex, expensive, and often confusing expedient of filing separate patent applications on separate claims.
86
The progress of technology exacerbated the inventorship problems. Patents were invalidated simply because all of the named inventors did not contribute to all the claims; and patents were also invalidated when there were contributors to some of the claims who were not named. See Jamesbury Corp. v. United States, 207 Ct.Cl. 516, 518 F.2d 1384, 1395, 187 USPQ 720 (1975) (inclusion of more or less than the true inventors renders patent void and invalid); Amax Fly Ash Corp. v. United States, 206 Ct.Cl. 756, 514 F.2d 1041, 1050, 182 USPQ 210, 217 (1975) ("Where more or less than the true inventors are named, the patent is void."); Hobbs, 451 F.2d at 864-65, 171 USPQ at 724 (patent on joint invention issued to one inventor is invalid); Iowa State Univ. Research Found., Inc. v. Sperry Rand Corp., 444 F.2d 406, 408, 170 USPQ 374, 376 (4th Cir.1971) ("the law has been strictly construed to grant patents only to the true inventors"); Pointer v. Six Wheel Corp., 177 F.2d 153, 157-58, 83 USPQ 43, 46-48 (9th Cir.1949) (patent issued to only one of the inventors is void); Shreckhise v. Ritchie, 160 F.2d 593, 595, 73 USPQ 138, 140-41 (4th Cir.1947) (same, citing cases); Thropp & Sons Co. v. De Laski & Thropp Circular Woven Tire Co., 226 F. 941, 947-48 (3d Cir.1915) (joint patent on invention of one is invalid as to all); Rival Mfg. Co. v. Dazey Prods. Co., 358 F.Supp. 91, 101, 177 USPQ 432, 439-40 (W.D.Mo.1973) (patent issued to one is invalid for failure to join others); Stewart v. Tenk, 32 F. 665, 666 (C.C.S.D.Ill.1887) (claim to sole invention is invalid in joint patent); Worden v. Fisher, 11 F. 505, 508-9 (C.C.E.D.Mich.1882) (when two persons invent distinct parts of machine they should take out separate patents). Indeed, at the time the '773 patent application was filed in 1982, most practitioners believed that a separate application was required if it was desired to present, for example, the two claims that contain Mr. Choi's contribution. See generally John F. Pearne, Must Each Inventor Named in a Patent Application Have Made an Inventive Contribution to Each of the Claims Thereof?, 58 J. Pat. Off. Soc'y 205 (1976) (discussing then-proposed amendments to § 116).
87
As team research increased with the growth of technology-based industry, so did the dilemma, for the rules of joint inventorship were not readily adaptable to the development of complex inventions. It became apparent that legislative remedy was needed. The amendment of 35 U.S.C. § 116 provided a simple solution to a complex problem:
88
§ 116 [second sentence] Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.
89
Pub.L. 98-622, § 104, 98 Stat. 3384, Nov. 8, 1984. The amendment identified the three major pitfalls that had arisen, and removed them.
90
This amendment did not also deal with the laws of patent ownership, and did not automatically convey ownership of the entire patent to everyone who could now be named as an inventor, whatever the contribution. The amendment simply permitted persons to be named on the patent document, whether as minor contributors to a subordinate embodiment, or full partners in the creation and development of the invention. The ownership relationships among the persons who, under § 116, could now be recognized as contributors to the invention, is irrelevant to the purpose of the amendment of § 116, and to its consequences. Section 116 has nothing to do with patent ownership.
B. The Law of Joint Ownership
91
The pre-1984 rule of joint ownership of joint inventions can be readily understood in its historical context, for a legally cognizable "joint invention" required mutuality of interaction and a real partnership in the creation and development of the invention. On this foundation, a "joint inventor" was also, justly and legally, an equal owner of the idea and of any patent thereon. Pointer, 177 F.2d at 157-58, 83 USPQ at 46-48 ("as the cases just cited show clearly, in order that an invention be truly called a joint invention, it must appear by clear and convincing proof that the two inventors collaborated in evolving the patented device"); see 1 Donald S. Chisum, Chisum on Patents § 202 & n.2 (rel. May 1987) ("Only where the same single, unitary idea of means is the product of two or more minds, working pari passu, and in communication with each other, is the conception truly joint and the result a joint invention," quoting 1 William C. Robinson, The Law of Patents for Useful Inventions § 396 (1890)).
92
The law of patent ownership has its roots in the common law of property--although a patent has its own peculiar character, for it deals with intangibles. See Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24, 40, 43 S.Ct. 254, 258, 67 L.Ed. 516 (1923) (a patent is a creature of statute); Gayler v. Wilder, 51 U.S. (10 How.) 477, 494, 13 L.Ed. 504 (1850). Certain incidents of patent ownership have been created or clarified by statute, see 35 U.S.C. § 262, yet the common law provided the basic rules, as manifested in the concepts of tenancy in common and undivided interests that courts have drawn upon in patent ownership disputes.
93
The jurisprudence governing property interests is generally a matter of state law. Even when the property is the creation of federal statute, private rights are usually defined by state laws of property. This has long been recognized with respect to patent ownership and transfers. See Jim Arnold Corp. v. Hydrotech Sys., Inc., 109 F.3d 1567, 1572, 42 USPQ2d 1119, 1123 (Fed.Cir.1997) ("the question of who owns the patent right and on what terms typically is a question exclusively for state courts"); Roach v. Crouch, 524 N.W.2d 400, 33 USPQ2d 1361 (Iowa 1994) (patent ownership issue properly triable in state court). It is equally established that inventorship and patent ownership are separate issues. Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248-49, 26 USPQ2d 1572, 1582 (Fed.Cir.1993).
94
Most of the disputes concerning patent ownership that reached the Supreme Court dealt not with joint invention, but assignments and other transfers. The oft-cited case of Waterman v. Mackenzie, 138 U.S. 252, 11 S.Ct. 334, 34 L.Ed. 923 (1891) dealt with a dispute among the inventor's spouse and various assignees concerning ownership of the fountain pen patent, not inventorship. Occasionally an issue of ownership of patent property arose based on whether the claimant actually shared fully in the creation of the invention. In such cases, as cited supra, the decision on "joint invention" also decided the issue of ownership, for a person who had fully shared in the creation of the invention was deemed to be a joint owner of the entire patent property. On this premise each joint inventor was deemed to occupy the entirety of the patented subject matter, on a legal theory of tenancy in common. See 7 Richard R. Powell, Powell on Real Property p 602 (1997) ("undivided fractional shares held by tenants in common are usually equal and are presumed equal unless circumstances indicate otherwise"). As patent property became viewed more precisely as personal property, see 35 U.S.C. § 261, the concept of tenancy in common was adjusted to that of an undivided interest, although with no substantial change in legal rights.
95
After the major change that the 1984 amendment to § 116 made in "joint invention," by authorizing the naming of any contributor to any claim of a patent, the legal premise that each named person had made a full and equal contribution to the entire patented invention became obsolete. See SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 888-89, 8 USPQ2d 1468, 1477 (Fed.Cir.1988) (collecting cases). It is not an implementation of the common law of property, or its statutory embodiments, to treat all persons, however minor their contribution, as full owners of the entire property as a matter of law. The law had never given a contributor to a minor portion of an invention a full share in the originator's patent.
96
By amending § 116 in order to remove an antiquated pitfall whereby patents were being unjustly invalidated, the legislators surely did not intend to create another inequity. Apparently no one foresaw that judges might routinely transfer pre-1984 ownership concepts into the changed inventorship law. I have come upon no discussion of this anomaly in various scholarly articles on the amended § 116. See, e.g., David W. Carstens, Joint Inventorship under 35 U.S.C. § 116, 73 J. Pat. Off. Soc'y 616 (1991) (discussing amended § 116); W. Fritz Fasse, The Muddy Metaphysics of Joint Inventorship: Cleaning Up After the 1984 Amendments to 35 U.S.C. § 116, 5 Harv. J.L. & Tech. 153 (1992), at 201-2 (citing PTO rules implementing amended § 116 and referring to the possibility of lack of common ownership of the subject matter, in the sense of assignment obligations of separately-employed inventors to distinct employers, yet overlooking other divided ownership problems).
97
In the case at bar, the district court recognized that Dr. Yoon originated the fundamental concept and the major aspects of its implementation. The court, however, construed the law as requiring that since Mr. Choi was named as a "joint inventor" (in accordance with the retroactivity legislated for the amendment to § 116) he automatically owned an undivided interest in the entire patent, and had the unencumbered and unfettered right to alienate an interest in the entire patent. Thus Mr. Choi, who would not pass the pre-1984 test of joint inventor, was nonetheless awarded full property rights in the entire invention and patent, as if he had been a true joint inventor of all the claims.
98
The panel majority, confirming this error, holds that Mr. Choi's contribution to two claims means and requires that Yoon "must now effectively share with Choi ownership of all the claims, even those which he invented by himself." That is incorrect. As I have discussed, the law of shared ownership was founded on shared invention, a situation that admittedly does not here prevail. Whether or not Mr. Choi is now properly named under § 116 because of his contribution to two claims, he is not a joint owner1 and he does not have the right to grant a license under all fifty-five claims. No theory of the law of property supports such a distortion of ownership rights. Thus I must, respectfully, dissent from the decision of the panel majority.
C. Issues of Joinder, Rule 19
99
The panel majority holds that although Mr. Choi's grant of a license under all fifty-five claims of the '773 patent does not have retroactive effect and thus does not relieve U.S. Surgical of liability for past infringement, Dr. Yoon is powerless to recover for past infringement because Mr. Choi as joint inventor refuses to join in the suit. Precedent and the Federal Rules do not support this ruling. Schering Corp. & Roussel-Uclaf S.A. v. Zeneca, Inc., 104 F.3d 341, 41 USPQ2d 1359 (Fed.Cir.1997), relied on by the panel majority, does not bar Dr. Yoon's suit for past infringement and does not bar the joinder of Mr. Choi as an involuntary party in accordance with Fed.R.Civ.P. 19. Nor do Waterman v. Mackenzie, 138 U.S. at 255, 11 S.Ct. at 335, Moore v. Marsh, 74 U.S. (7 Wall.) 515, 520, 19 L.Ed. 37 (1868), or the other cases cited by the majority. There is no barrier to the involuntary joinder of a joint inventor and/or co-owner under Rule 19, if such is needed to bring before the court all persons deemed necessary to the suit. See also Howes v. Medical Components, Inc., 698 F.Supp. 574, 576 (E.D.Pa.1988) ("Rule 19 'makes inappropriate any contention that patent co-owners are per se indispensable in infringement suits' "). Further, Mr. Choi is already before the court as a party, having voluntarily intervened, by general appearance.
100
Thus I must also dissent from this ruling of my colleagues.
1 U.S. Surgical's position here is that this is a means-plus-function element, and the only corresponding structures in the specification are the two alternative electrical networks pictured in figures 5 and 30 of the '773 patent. See 35 U.S.C. § 112, p 6 (1994). The parties do not dispute that Choi designed these networks. However, Ethicon argues that the corresponding structure is a switch--conceived of by Yoon. Given our resolution of the inventorship of claim 33 on other grounds, we need not address this issue.
The prosecution history plainly shows that this is a typesetting error. See Response to Office Action of November 21, 1983 (filed May 21, 1984), p. 25
The district court referred to this element as a "plunger," although the '773 patent's specification very clearly refers to it as a "detent." It is the solenoid that has a plunger. See '773 patent, col. 17, lines 20-26; col. 18, lines 1-5. The district court's nomenclature is consistent, however, with one of Choi's sketches, as discussed below
Ethicon does not appeal the district court's determination that Choi's claim of co-inventorship was not barred by laches or equitable estoppel
Ethicon does not claim that Choi had a contractual or other duty to assign his patent rights to Yoon
The 1984 amendments apply here. The Patent Law Amendments Act of 1984 states that with certain exceptions "the amendments made by this Act ... shall apply to all United States patents granted before, on, or after the date of enactment [Nov. 8, 1984]." Pub.L. No. 98-622, 98 Stat. 3383, § 106(a) (1984); see also SmithKline Diagnostics, 859 F.2d at 888-89
A twist provided by the facts of Schering was that Schering was seeking only prospective relief. Therefore, the Schering court's distinction evaporated under the specific facts of the case--that is, until Schering alleged for the first time on appeal that some of Zeneca's pre-license conduct constituted infringement. The Schering court remanded, in part, to allow Schering to pursue these potential pre-license infringement claims. See Schering, 104 F.3d at 347
Although "retroactive licenses" of patent rights have been enforced by the courts without specifically referring to them in this way, all of these cases have involved "retroactive licenses" granted by a sole owner. See, e.g., Studiengesellschaft Kohle, M.B.H. v. Hercules, Inc., 105 F.3d 629, 41 USPQ2d 1518 (Fed.Cir.1997)
Two established exceptions exist. First, when any patent owner has granted an exclusive license, he stands in a relationship of trust to his licensee and must permit the licensee to sue in his name. See Independent Wireless Telegraph Co. v. Radio Corp. of Am., 269 U.S. 459, 469, 46 S.Ct. 166, 169-70, 70 L.Ed. 357 (1926). Second, the obligation may arise by contract among co-owners. If, by agreement, a co-owner waives his right to refuse to join suit, his co-owners may subsequently force him to join in a suit against infringers. See Willingham v. Lawton, 555 F.2d 1340, 1344-45, 194 USPQ 249, 252 (6th Cir.1977)
There may indeed be a need for determination of the respective interests of Dr. Yoon and Mr. Choi. Dr. Yoon's attempt to divide the '773 patent by reissue, although rebuffed by the Patent Office because of the ongoing litigation, would have placed the claims to which Mr. Choi contributed into a separate patent, in accordance with the practice when this patent application was filed. Dividing the patent claims would comport with common law practices. See Real Property p 607 (discussing "inherent right to compel partition", citing state laws); see, e.g., Hamilton v. Hamilton, 597 A.2d 856, 859-60 (Del.Fam.Ct.1990) ("right of the co-tenant to partition is almost absolute")
