A Federal Circuit Reminder of the Continued Importance of Laboratory Notebooks and Other Corroborative Evidence of Inventorship
| April 22, 2016
Meng v. Chu
April 5, 2016
Before: Prost, Dyk and Wallach. Opinion by Prost
Summary
In 1987, a research group at the High Pressure Low Temperature (“HPLT”) lab at the University of Houston lead by Ching-Wu Chu, a professor and the lab’s lead investigator, developed inventions related to superconducting compounds having transition temperatures higher than the boiling point of liquid nitrogen. The University of Houston filed two applications listing Chu as the sole inventor. The inventions were assigned to the University of Houston and licensed to Dupont. The University of Houston and Ching-Wu evenly shared the license proceeds received from Dupont, and Chu gave $274,000 from his share to Pei-Herng Hor, a grad student at the lab, and Ruling Meng, an independent scientist at the lab. After issuance of patents for the inventions, in 2008 Hor filed a law suit in the District Court for the Southern District of Texas seeking to be added as a co-inventor and in 2010 Meng intervened seeking to also be added as a co-inventor. The District Court denied both Hor’s and Meng’s claims on the bases that they had failed to meet the “heavy burden” of proving co-inventorship by clear and convincing evidence despite Hor and Meng having received proceeds under the license, having been the first and second listed authors on a publication related to the inventions, and having been commended by Chu in a letter of recommendation for Hor for his discoveries related to the inventions. The Federal Circuit affirmed.
Federal Circuit Considers What A Specification Should Disclose To Survive Alice
| April 13, 2016
Vehicle Intelligence v. Mercedes-Benz (non-precedential)
December 28, 2015
Panel: Moore, Clevenger, and Reyna. Opinion: per curiam.
Summary
Although this decision is non-precedential, it provides a rare glimpse into the Federal Circuit’s consideration of the types of technical detail the specification must disclose in order to support the patent eligibility of a computer-implemented software invention. The decision asks at least twenty times how some claimed component works, how some claimed feature is implemented, how something is made faster, more accurate and reliable, and how existing computer hardware and software components are made different. This decision also reiterates the proposition that lack of total preemption is not enough to overcome patent ineligibility.
