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Ethicon, Inc. v. United States Surgical Corp.

United States Court of Appeals for the Federal Circuit

February 3, 1998, Decided

97-1269

Opinion

 [***1546]  [*1458]   RADER, Circuit Judge.

In this patent infringement action, Dr. InBae Yoon (Yoon) and his exclusive licensee, Ethicon, Inc. (Ethicon), appeal from the judgment of the United States District Court for the District of Connecticut. In 1989, Yoon and Ethicon [**2]  sued United States Surgical Corporation (U.S. Surgical) for infringement of U.S. Patent No. 4,535,773 (the '773 patent). In 1993, the parties stipulated to the intervention of Mr. Young Jae Choi (Choi) as defendant-intervenor. Choi claimed to be an omitted co-inventor of the '773 patent and to have granted U.S. Surgical a retroactive license under that patent.  [*1459]  On U.S. Surgical's motion to correct inventorship of the '773 patent under 35 U.S.C. § 256, the district court ruled that Choi was an omitted co-inventor of two claims, see 937 F. Supp. 1015 (D. Conn. 1996), and subsequently granted U.S. Surgical's motion to dismiss the infringement complaint, see 954 F. Supp. 51 (D. Conn. 1997). Because the district court's determination of co-inventorship was correct, and because Choi is a joint owner of the '773 patent who has not consented to suit against U.S. Surgical, this court affirms.

I. BACKGROUND

The '773 patent relates to trocars, an essential tool for endoscopic surgery. A trocar is a  [***1547]  surgical instrument which makes small incisions in the wall of a body cavity, often the abdomen, to admit endoscopic instruments. Trocars include a shaft within an outer sleeve. One [**3]  end of the shaft has a sharp blade. At the outset of surgery, the surgeon uses the blade to puncture the wall and extend the trocar into the cavity. The surgeon then removes the shaft, leaving the hollow outer sleeve, through which the surgeon may insert tiny cameras and surgical instruments for the operation.

Conventional trocars, however, pose a risk of damage to internal organs or structures. As the trocar blade punctures the cavity wall, the sudden loss of resistance can cause the blade to lunge forward and injure an internal organ. The '773 patent claims a trocar that alleviates this danger. In one embodiment, the invention equips the trocar with a blunt, spring-loaded rod. As the trocar pierces the cavity wall, the rod automatically springs forward to precede the blade and shield against injury. A second embodiment has a retractable trocar blade that springs back into a protective sheath when it passes through the cavity wall. The patent also teaches the use of an electronic sensor in the end of the blade to signal the surgeon at the moment of puncture.

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135 F.3d 1456 *; 1998 U.S. App. LEXIS 1445 **; 45 U.S.P.Q.2D (BNA) 1545 ***; 48 Fed. R. Evid. Serv. (Callaghan) 1226

ETHICON, INC. and INBAE YOON, M.D., Plaintiffs-Appellants, v. UNITED STATES SURGICAL CORPORATION and YOUNG JAE CHOI, Defendants-Appellees.

Subsequent History: Certiorari Denied October 5, 1998, Reported at: 1998 U.S. LEXIS 6383.

Prior History:  [**1]  Appealed from: United States District Court for the District of Connecticut. Judge Chatigny.

Disposition: AFFIRMED.

CORE TERMS

patent, invention, inventor, trocar, Surgical, license, infringement, ownership, co-owner, district court, blade, inventorship, conceived, contributed, sketches, corroboration, puncturing, joint ownership, co-inventor, detaining, joint invention, subject matter, distal, shaft, aperture, rights, right to sue, embodiment, join, cavity

Patent Law, Originality, Joint & Sole Inventorship, Civil Procedure, Appeals, Standards of Review, Clearly Erroneous Review, Jurisdiction & Review, General Overview, Invention Date & Priority, Joinder of Inventors, Specifications, Enablement Requirement, Defenses, Inequitable Conduct, Burdens of Proof, Infringement Actions, Correction of Inventorship Errors, Evidence, Admissibility, Circumstantial & Direct Evidence, Burdens of Proof, Clear & Convincing Proof, Commercial Law (UCC), Negotiable Instruments (Article 3), Business & Corporate Compliance, Ownership, Conveyances, Equitable Assignments & Joint Ownership, Patents as Property, Contracts Law, Types of Contracts, Express Contracts, Licenses, Contract Formation, Contract Formation, Standards of Review, Exclusive Rights, Releases, Negotiable Instruments, Types of Parties, Assignees & Assignors, Types of Commercial Transactions, Transfer of Negotiable Instruments, Assignments, Remedies, Damages, International Trade Law, International Commerce & Trade, Exports & Imports, Equitable Relief, Equitable Accountings