Federal Circuit Won’t Weigh If Inventorship Is Tied To Validity

In an article published by Law360, Taylor English attorneys John Gross, Coby Nixon, and Kelly Mullally were mentioned for obtaining a favorable ruling from the U.S. Court of Appeals for the Federal Circuit in a patent inventorship case filed by our client, Heat Technologies, Inc. (“HTI”). HTI is a technology company specializing in industrial drying systems that use ultrasound to dry various materials. HTI sued Papierfabrik August Koehler SE (“August Koehler”), a German paper manufacturer, and several of its employees, after August Koehler obtained a U.S. patent that, according to HTI, claims an invention that HTI first conceived and disclosed to August Koehler when August Koehler was evaluating HTI’s drying systems for use in its paper plant. Through the lawsuit, HTI seeks to have the inventorship on the patent corrected to name HTI’s president as the sole inventor, and seeks damages for August Koehler’s misappropriation of the invention.

Mr. Gross, Mr. Nixon, and Ms. Mullally successfully defeated August Koehler’s motion to dismiss the correction of inventorship claim at the district court. August Koehler then filed a petition at the Federal Circuit, asking the appellate court to revisit the motion in an interlocutory appeal. In an order issued on July 18, 2019, the Federal Circuit denied August Koehler’s petition, finding that the district court’s order did not meet the criteria for immediate appeal and concluding that there was no error in the district court’s conclusion. The Law360 article quotes Mr. Nixon as saying that HTI “is pleased that the Federal Circuit not only denied defendants’ petition for interlocutory appeal, but also indicated that the district court’s interpretation of the [inventorship] statute was correct.”