JT IP Holdings, LLC et al. v. Florence et al. (20-cv-10433).

In 2020, JT IP sued Flopack, LLC  and its members and managers Thomas Florence, saying that Florence had failed to fulfill his side of an agreement by which JT IP Holdings was formed and that Florence had obtained a patent in his own name on an invention that JT’s other founder should have been named a co-inventor.  The patent was subsequently assigned by Florence to Flopack, a company set up by Florence’s daughter, rather than to JT IP as required by the agreement. 

Judge Talwani, who seems to get more than her fair share of patent cases in this district, granted Florence’s motion for summary judgment on the correction of inventorship claim.  She noted that Florence had developed and patented a dry well product, FloWell, in 1989.  Florence partnered with Jeffery Eldredge to form JT IP in December 2016 to develop and market water management devices.  At the time the company was formed, Eldredge believed that Florence had already completed the design of a new product to be known as the “ProWell,” and indeed Florence filed a provisional application on this design on January 6, 2017, shortly after the company was formed.  The provisional was converted to a utility application a year later, and issued on July 30, 2019 as U.S. 10,364,563.  At that point, Eldredge had not asserted co-inventorship.

To prevail on a correction of inventorship under § 256, the plaintiff must show by clear and convincing evidence  that he contributed in some significant matter to the conception, as opposed to the design process or realization, of an element of the invention as claimed.  Importantly, the putative unnamed inventor cannot rely solely on his testimony that he conceived of a part of the invention – he must corroborate such testimony with something additional, preferably (but not necessarily) documentary or physical evidence.  Here, Eldredge had no such documentary or physical evidence, instead offering the testimony of his wife and one of his friends.  Judge Talwani found this additional testimony to comprise nothing more than their repetition of what they were told by Eldredge himself, and did not relate to their having witnessed first-hand any alleged conception by Eldredge.  Accordingly, she granted summary judgment on this claim to Florence.

Florence also sought to have the case remanded to state court, as the now-dismissed inventorship claim was the sole federal count in the complaint.  Judge Talwani denied this, however, noting that remand is only possible where the case was originally filed in the state court and then removed to federal court. As this case was originally filed in federal court, remand was not possible.  She held out the possibility that Florence ask the court to decline to exercise supplemental jurisdiction over the state law claims.