Holding: Although Section 256 corrections of inventorship are generally retroactive, a party can forfeit the ability to rely on such corrections by failing to pursue them with reasonable diligence during ongoing proceedings.
Implicit owns US Patent No. 7,391,791 and US Patent No. 8,942,252, which are related to methods and systems for synchronizing content rendering. Both patents originally listed Edward Balassanian and Scott Bradley as co-inventors. Mr. Balassanian and Mr. Bradley were employees of BeComm Corporation, the predecessor of Implicit.
Sonos petitioned for inter partes review of the ‘791 Patent and the ‘252 Patent, alleging that these patents were either anticipated or obvious in view of US Patent No. 7,269,338 to Janevski. Implicit contended that Mr. Balassanian and Mr. Bradley conceived of the inventions in the ‘791 Patent and the ‘252 Patent and worked with engineer Guy Carpenter to reduce the inventions to practice prior to the December 11, 2001 priority date of the Janevski reference.
In September 2019, the PTAB found the ‘791 Patent and the ‘252 Patent to be unpatentable in view of Janevski and that there was insufficient evidence to show that Mr. Carpenter’s reduction to practice inured to the benefit of the named inventors, Mr. Balassanian and Mr. Bradley. After the decision in Arthrex,[1] this case was remanded to allow Implicit to request rehearing and review by the Director. In February 2022, Implicit’s request for Director review was denied.
While Implicit’s request for Director review was pending, Implicit requested correction of inventorship of the ‘791 Patent and the ‘252 Patent to add Mr. Carpenter as an inventor. A certificate of correction was granted to correct inventorship for both patents in August 2022. This case was remanded back to the PTAB to determine whether the correction of inventorship would have any effect on the final written decision. The PTAB concluded that although Section 256 corrections of inventorship are typically retroactive, judicial estoppel and waiver applied in this case. Therefore, Implicit could not rely on the certificates of correction as a basis to revisit the final written decisions.
Forfeiture is the failure to make the timely assertion of a right. A party can forfeit an argument that it failed to present to the PTAB. At the Federal Circuit, Implicit argued that forfeiture does not apply to Section 256 corrections of inventorship since Section 256 does not limit the time in which inventorship may be corrected. However, the Federal Circuit disagreed, holding that the forfeiture can apply to Section 256 corrections.
Although there is no stated time limit to correct inventorship at the PTO, there is still a requirement of diligence in seeking correction of inventorship that is reliant on the facts of the case. In this case, correction of inventorship could directly affect the outcome of the PTAB proceeding. Implicit had the opportunity to correct inventorship early in the proceedings but failed to do so. Implicit argued that its correction was timely because the proceedings were still ongoing. However, Implicit waited until after the final written decision had been issued to seek certificates of correction.
The Federal Circuit has allowed correction of inventorship mid-litigation in situations where the scope of the claims may have changed due to claim construction[2]; however, the scope of the claims did not change in this case. Implicit had all of the information related to inventorship at the start of the proceedings. The fact that Implicit believed that the initial inventorship of the ‘791 Patent and the ‘252 Patent was correct does not excuse its lack of diligence in correcting inventorship.
[1] United States v. Arthrex, Inc., 594 U.S. 1 (2021)
[2] Egenera, Inc. v. Cisco Sys., Inc., 972 F.3d 1367 (Fed. Cir. 2020)
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