<em> Tube-Mac Indus., Inc. v. Campbell </em>

No. 2022-2170, 2024 U.S. App. LEXIS 6212 (Fed. Cir. Mar. 15, 2024)

The Federal Circuit Court affirmed an Eastern District Court of Virginia’s decision to  mandate a correction of inventorship of U.S. Patent 9,376,049 (the “’049 patent”) which added Gary Mackay and Dan Hewson as named inventors. 

An inventor named Steve Campbell was named on U.S. patent number 9,376,049 (the “’049 patent”), a container for transporting gaseous fluids. Campbell’s journey towards patent success was not a solo endeavor. Initially, Campbell contracted with a company called Composites Atlantic Ltd. to assist with his invention, but the prototypes still had significant problems. Campbell then approached Gary Mackay to address the primary issue impeding his progress. Mackay then enlisted the help of Dan Hewson, the owner of Mackay’s company Tube-Mac Industries Ltd. Campbell, Mackay, and Hewson collaborated for several months. The trio worked together on the meticulous process of improving the design. They went back and forth analyzing draft designs and engineered components. Prior to Mackay and Hewson’s involvement, Campbell did not have the expertise required to solve the issue serving as the likely barrier to certification. After Mackay and Hewson created a solution and even made additional improvements, the prototype was successful.
After Campbell received the patent, Mackay and Hewson brought suit against Campbell in the United States District Court for the Eastern District of Virginia. Mackay and Hewson asserted that they deserved to be listed as co-inventors because their contributions to the design process were directly reflected in the patent’s documentation. The District Court concurred with Mackay and Hewson’s assertion and subsequently ordered the U.S. Patent and Trademark Office to rectify the oversight by issuing a certificate of correction to name the two as co-inventors on the patent. Campbell, however, appealed this decision and challenged the notion of shared inventorship.

The Federal Circuit Court affirmed the District Court’s decision. The Court discussed the intricacies of the law regarding the amendment and correction of patents by using the provisions stipulated by 35 U.S.C. § 256. This statute empowers district courts to rectify instances of inventorship oversight, provided certain criteria are met. Central to this assessment are three key elements. Firstly, the substantive contribution of the purported co-inventors to the conception or realization of the invention is considered. Secondly, the qualitative significance of their contributions in relation to the entirety of the invention is evaluated. Lastly, the extent to which their involvement went beyond mere explanation of existing concepts that the original inventor may have simply overlooked or misunderstood is examined.

Campbell focused his appeal on two main arguments. First, he claimed that the District Court erred in determining the scope of the subject matter of the claims. Second, Campbell argued that the District Court erred in determining the significance of Mackay and Hewson’s contribution to the ‘049 Patent.

The Court disagreed with both of Campbell’s arguments. The Court initially clarifies the possible source of Campbell’s confusion regarding his first disputed point. The Federal Circuit stated that the District Court may have drafted their analysis counterintuitively and could have caused some confusion. Nonetheless, the District Court’s drafting choice did not harm the inventorship analysis or undermine the resulting conclusion. For those reasons, the Federal Circuit is not convinced by Campbell’s first argument.

Secondly, the Court disagreed with Campbell’s assertion that Mackay and Hewson’s contributions were not significant enough for co-inventorship credit. The Court stated that Mackay and Hewson’s contributions were significant because their two proposed multiple changes to the design and their updates are represented in the figures, specifications, and claims of the ’049 Patent. Furthermore, the Court noted that Campbell is the one who initially approached Mackay for help. Lastly, the Court underscored the District Court’s point that before Mackay and Hewson made their contributions, Campbell did not have a clear path forward towards success in his design. For these reasons, the Court did not find either of Campbell’s arguments on appeal compelling. 

Separately, Campbell made a motion to compel Mackay and Hewson to produce various documentation and information. He believed that they, “exhibited unclean hands and deceptive intent since May 2007.” Campbell also raises issues pertaining to the “evolutionary history of the relevant claimed part of the invention’s design.” Ultimately, the Court did not find these remaining arguments persuasive either since it states that such points should have been included in the merits briefing. The Federal Circuit held “Campbell has not shown that additional or supplemental briefing is warranted beyond what the Court’s rules provide.” As a result, Campbell’s motion to compel was denied.

Thus, the Federal Circuit Court affirmed the District Court’s judgment and decided that Mackay and Hewson had provided significant contributions to the ‘049 Patent and should be listed as co-inventors.