Federal Circuit Revives Car Seat Patent Action Against Schukra and Borg Indak

Holding:

In this action about a patent relating to a control system for car seats, the U.S. Court of Appeals for the Federal Circuit has applied the rule that a person does not necessarily attain the status of co-inventor by merely providing the sole feature of a dependent claim. In so stating, the Federal Circuit revived a suit by plaintiff-appellant Nartron Corp. (“Nartron”) against Borg Indak, Inc. for contributory infringement of claims 1 and 7 of U.S. Patent No. 6,049,748 (“the ’748 patent”). On motion of Borg Indak, the U.S. District Court for the Eastern District of Michigan dismissed the case for failure to join in this lawsuit a necessary plaintiff, Joseph Benson, an employee of the product’s supplier. On appeal, the Federal Circuit reversed, stating that there is no genuine issue of material fact in this case and that Benson was not, as a result of suggesting an extender, a co-inventor of claim 11 of the ’748 patent as a matter of law. The Federal Circuit explained that this is not a case in which a person claims to be an inventor because he has suggested a non-obvious combination of prior art elements to the named inventors. There is not, and could not be, any claim that the addition of the extender here was anything but obvious. Benson’s contribution therefore does not make him a co-inventor of the subject matter of claim 11, the Federal Circuit concluded.

Detailed Summary:

Nartron appealed from the judgment of the district court granting summary judgment of dismissal of its patent infringement complaint because of Nartron’s failure to join an alleged co-inventor on the ’748 patent as a plaintiff.

Schukra U.S.A., Incorporated (“Schukra”) supplies automobile manufacturers with lumbar support systems for automobile seats. In 1996, Schukra contracted with Nartron for Nartron to design a control system that would provide existing automobile seats with massage functionality. Nartron designed such a system and then applied for a patent relating to a vehicle seat control system that provides massage capability; that patent application matured into the ’748 patent.

Borg Indak supplies electronic components to Schukra. In 2006, Nartron sued Borg Indak for contributory infringement of claims 1 and 7 of the ’748 patent. Borg Indak moved for summary judgment of dismissal, alleging that Benson, a Schukra employee, was a co-inventor of claim 11 of the ’748 patent and therefore needed to have been joined in the suit. Neither Schukra nor Benson had consented to or had joined the suit. Claim 11, for which Benson is alleged to be a co-inventor, is a dependent claim. It depends from claim 6, which in turn depends from claim 5, which itself depends from claim 1.

In March 2008, the district court granted Borg Indak’s motion for summary judgment of dismissal. The court held that Benson was a co-inventor of the ’748 patent because, according to the court, he had conceived of the extender element of claim 11, and, as a co-inventor, he was required to have been joined as a plaintiff in any infringement suit.

The district court thus dismissed the case for failure to join a necessary plaintiff in the lawsuit. Benson’s employer Schukra maintained a contractual relationship with the defendant Borg Indak. Thus, grant of the motion to dismiss effectively prevented Nartron from enjoining or obtaining damages from Borg Indak for patent infringement.

On appeal, the Federal Circuit held that that there is no genuine issue of material fact in this case and that Benson was not, as a result of suggesting an extender, a co-inventor of claim 11 of the ’748 patent as a matter of law. The Federal Circuit explained that any contribution Benson made to the invention described in claim 11 by contributing an extender was insignificant and therefore prevents Benson from attaining the status of a co-inventor. “One who simply provides the inventor with well-known principles or explains the state of the art without ever having a firm and definite idea of the claimed combination as a whole does not qualify as a joint inventor.” Opinion, p. 7, citing Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998).

The Federal Circuit noted that the extender was already in the prior art, and also part of existing automobile seats, and therefore including it as part of the claimed invention was merely the basic exercise of ordinary skill in the art. Id., p. 8, citing Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997).

Further supporting the conclusion that Benson’s contribution of the extender was insignificant when measured against the full dimension of the invention of claim 11, the specification and claims of the ’748 patent primarily focus not on the structure of the seat itself, but on the structure and function of the control module, which operates the seat. The specification mentions the extender only once in a twenty-column patent. The only time that the specification mentions the extender, it does no more than refer to it as the background upon which the invention is built, the Federal Circuit wrote. The patent contains no description of the physical characteristics of the extender, nor does it contain any drawing of the extender, the Federal Circuit added.

The Federal Circuit likewise wrote: “This is not a case in which a person claims to be an inventor because he has suggested a non-obvious combination of prior art elements to the named inventors. Such an individual may be a co-inventor. There is not, and could not be, any claim that the addition of the extender here was anything but obvious. Benson’s contribution therefore does not make him a co-inventor of the subject matter of claim 11.” Id., p. 11.

On the basis of the foregoing, the Federal Circuit reversed the district court’s judgment of dismissal, and remanded for further action consistent with its opinion.

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