Unraveling Hose Inventorship – From Idea to Contribution

Written by: Jamie E. Youngblood & Alex Martin del Campo

BLUE GENTIAN, LLC v. TRISTAR PRODUCTS, INC

Before Prost, Chen, and Stark. Appeal from the United States District Court for the District of New Jersey.

Summary: Alleged joint inventor contributed significantly to conception where patent owner relied on contributed features to distinguish the invention from prior art.

Gary Ragner designed and patented several expandable hose prototypes. Seeking investors to bring his hose to market, Ragner met with Michael Berardi. Ragner showed Berardi a prototype and related documents. After the meeting, Berardi built his own expandable hose prototype. Berardi then patented his design and assigned his patents to Blue Gentian. Ragner assigned his patents to Tristar Products.

Blue Gentian sued Tristar for infringement of Berardi’s patents. Tristar counterclaimed to add Ragner as a joint inventor. The district court found that Ragner conveyed three key claim elements to Berardi during the investor meeting and therefore should have been named an inventor. Blue Gentian appealed.

The Federal Circuit affirmed. First, the Federal Circuit found that the three elements contributed by Ragner were present in at least one claim of each asserted patent. Additionally, Blue Gentian had used the three elements to distinguish the invention from the prior art. The Court reasoned that features that the patent owner itself acknowledges distinguish the invention from the prior art are necessarily tied to the claims. Likewise, contributing such materially distinguishing features is not insignificant in quality when measured against the full invention.

The Court also held that specific corroboration of Ragner’s communications with Berardi was not required. The flexible, rule-of-reason test considers all pertinent evidence to determine whether the inventor’s story is credible. Lastly, the Court held that Ragner’s contributions need not have been provided with the intent to invent the hose that was ultimately claimed. Ragner’s sharing of confidential technical details and design alternatives was sufficient to demonstrate collaboration.

Editor: Paul Stewart