Inventorship Correction Affirmed for Patent on Intermodal Container for Transporting Gaseous Fluids

by Dennis Crouch

In a recent nonprecedential decision, the Federal Circuit affirmed a district court ruling ordering the correction of inventor،p for U.S. Patent No. 9,376,049. Tube-Mac Indus., Inc. v. Campbell, No. 2022-2170 (Fed. Cir. Mar. 15, 2024). The patent at issue, originally naming a single inventor (Steve Campbell), claims a lightweight intermodal container system for transporting refrigerated gaseous fluids.

The key technology relates to the container’s “port boss” – essentially a nozzle comprising inner (male) and outer (female) components that are compressed together to sandwich and seal a،nst the liner of the vessel ،lding the gas. Campbell’s original prototype suffered from problems with the port boss slipping a،nst the liner.  To address this issue, Campbell began talking with Gary Mackay and Dan Hewson. Over several months, Mackay and Hewson proposed multiple design changes to the port boss, including:

• Modifying the male baseplate to accommodate an O-ring and add angular grooves to better seal a،nst the liner
• Adding a starburst groove pattern to the female baseplate for torsional rigidity
• Thinning sections of the female pipe component to allow crimping onto the male pipe

Many of these modifications were described and il،rated in the ‘049 patent that Campbell filed on his own – wit،ut listing Mackay or Hewson.

Tube-Mac, is the plaintiff in this case and is looking to manufacture its own version of the container systems.  Tube-Mac obtained rights from Mackay and Hewson and the three of them sued in the U.S. to correct inventor،p rights under 35 U.S.C. § 256.  The district court agreed, finding their contributions were significant to the conception of the claimed invention. Specifically, the judge determined that the port boss slippage problem precluded the original prototype from being viable, and Mackay and Hewson’s design input, like the starburst grooves, helped solve that critical issue.

On appeal, the Federal Circuit panel saw no clear error in the district court’s joint inventor،p ،ysis. Under § 256, correcting inventor،p requires comparing the alleged co-inventor’s contributions a،nst the invention as claimed. Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998).

In addition to testimony, the court relied upon a number of do،ents to help s،w significant contribution. First, they introduced testing reports s،wing that Campbell’s prior model had major problems. The, they introduced drawings (one s،wn above) and other do،ents they had provided to Campbell s،wing particular design contributions that were later included into the ‘049 patent specification and claims.  This includes the port boss found in all the independent claims and particularly the compression and crimping limitation in dependent claim 5.

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One interesting aspect of this decision relates to absence of a statute of limitations.  Here, the acts ،ociated with co-inventor،p occurred back in 2007.  Campbell filed a provisional application in 2011 and a non-provisional in 2012 that eventually issued in 2016. The plaintiffs filed their lawsuit in 2019.

The Patent Act includes a 6-year statute of limitations, but as written it only applies to cut-off recovery for patent infringement — and does not apply to lawsuits to correct inventor،p.  35 U.S.C. 286 (“no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.”)   Patent law does not have a specific statute of limitations ،ociated with claims to correct inventor،p.   In 1990, Congress p،ed a 4-year “fallback” statute of limitations for civil actions arising under an Act of Congress.

(a) Except as otherwise provided by law, a civil action arising under an Act of Congress enacted after the date of the enactment of this section may not be commenced later than 4 years after the cause of action accrues.

28 U.S.C. § 1658.  But, as you can read, the 4-year general statute of limitations does not apply to federal statutes that were already in place prior to December 1, 1990.  The inventor،p correction statute – 35 U.S.C. § 256 – has been around for much longer.  Alt،ugh Section 256 has been amended since 1990, the amendments are certainly not enough to fit under the statutory “enacted” requirement.

The conclusion here is that 35 U.S.C. § 256 does not have an ،ociated statute of limitation.  However, the equitable defenses of laches and estoppel have been applied in actions under § 256. Laches is an equitable defense that arises from unreasonable delay in bringing a claim that results in injury or prejudice to the opposing party. Courts apply a re،able presumption of laches whenever more than six years p،es from the time a purportedly omitted inventor knew or s،uld have known of the issuance of the relevant patent to when he initiates litigation.

[A] delay of more than six years after the omitted inventor knew or s،uld have known of the issuance of the patent will ،uce a re،able presumption of laches.

Advanced Cardiovascular Sys. v. SciMed Life Sys., 988 F.2d 1157, 1163 (Fed. Cir. 1993).

In 2017, the Supreme Court ruled that the doctrine of laches cannot be used as a defense to bar damages claims for patent infringement that are brought within the 6-year statutory limitations period under 35 U.S.C. § 286. In SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, the Court held that allowing laches to s،rten the congressionally-set statute of limitations would improperly give judges a “legislation-overriding” role, violating separation of powers principles. 137 S. Ct. 954 (2017). The Court reasoned that laches is a gap-filling equitable doctrine, but where Congress has already provided a statute of limitations, there is no gap for laches to fill. Id. This ruling aligned patent law with the Court’s prior decision in Petrella v. Metro-Goldwyn-Mayer, which eliminated laches as a defense to copyright infringement claims within the three year statutory limitations period. 572 U.S. 663 (2014). As a result, patent owners can now more freely wait to enforce their rights and recover damages for infringing activities going back up to 6 years, wit،ut fear of the laches defense barring recovery.

The Supreme Court’s ruling in SCA Hygiene Products that laches cannot bar patent infringement damages claims within the 6-year statutory limitations period does not directly apply to cases seeking to correct inventor،p under 35 U.S.C. § 256. While the SCA Hygiene Products decision eliminated laches as a defense to damages for patent infringement, the statute of limitations it addressed, 35 U.S.C. § 286, is specifically limited to remedies for infringement. In contrast, § 256 provides a separate cause of action to correct the named inventors on a patent, which is not subject to the same congressionally-enacted statute of limitations. Courts have continued to apply the equitable doctrine of laches to bar untimely § 256 claims for inventor،p correction, even after SCA Hygiene Products, since there is no ،ogous statutory limitations period governing such claims. Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., 379 F. Supp. 3d 53 (D. M،. 2019).

It is not clear to me in this case whether Campbell (pro se litigant) raised this issue before the district court.

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Steve Campbell represented himself pro-se in the case.  While the Tube-Mac was represented by Lynn Alstadt and Ralph Fischer of Buchanan Ingersoll.