2012]
CONCEPTION AND MISCONCEPTION IN JOINT INVENTORSHIP
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hearing.139 With the meaning of the claims established, the court then compares the accused product or process to the claims on a claim-by-claim basis; if the accused product or process literally or equivalently satisfies all the limitations of a claim, then infringement has occurred. 140 Under Trovan, the procedure to be followed in inventorship analysis also begins with an interpretation of the claims “to determine the subject matter encompassed thereby.” The next step is “to compare the alleged contributions of each asserted coinventor with the subject matter of the properly construed claim to then determine whether the correct inventors were named.” 141 As one patent lawyer has observed, inventorship is now determined “on a claim-by-claim basis”142 as well, despite the fact that an inventor on any one claim is considered an inventor of the entire invention (and, therefore, all of the claims). 143 Trovan analysis, which has become the accepted procedure for evaluating disputes about inventorship, creates an aberration in the Federal Circuit’s otherwise mostly sound jurisprudence on joint inventorship. In undertaking inventorship analysis, courts now tend to fixate on whether an alleged coinventor can point to specific claims language directly attributable to that alleged coinventor’s contributions.144 The result of fixating on claims is frequently an overly simplistic understanding of the inventive process. In Eli Lilly & Co. v. Aradigm Corp., the Federal Circuit justified its practice of ruling out some collaborators as joint inventors based on the “quality” of inventive contribution: The line between actual contributions to conception and the remaining, more prosaic contributions to the inventive process that do not render the contributor a coinventor is sometimes a difficult one to draw. Contributions to realizing an invention may not amount to a contribution to conception . . . if they are too far removed from
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Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). Trovan, 299 F.3d at 1302. 141 Id. 142 George M. Sirilla, How the Federal Circuit Clarified the “Muddy Concept” of Joint Inventorship, 91 J. PAT. & TRADEMARK OFF. SOC’Y 509, 509 (2009). 143 Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998). 144 See, e.g., Bd. of Educ. ex rel. Bd. of Trustees of Fla. State Univ. v. Am. Bioscience, Inc., 333 F.3d 1330, 1339 (Fed. Cir. 2003); Ethicon, 135 F.3d at 1463 (“[T]his court must determine what Choi’s contribution was and then construe the claim language to determine if Choi’s contribution found its way into the defined invention.”) (emphasis added). 140