Lexis Nexis - Case Brief

Not a Lexis Advance subscriber? Try it out for free.

Law School Case Brief

Ethicon, Inc. v. United States Surgical Corp. - 135 F.3d 1456 (Fed. Cir. 1998)


One who simply provides the inventor with well-known principles or explains the state of the art without ever having a firm and definite idea of the claimed combination as a whole does not qualify as a joint inventor. Moreover, depending on the scope of a patent's claims, one of ordinary skill in the art who simply reduced the inventor's idea to practice is not necessarily a joint inventor, even if the specification discloses that embodiment to satisfy the best mode requirement. Furthermore, a co-inventor need not make a contribution to every claim of a patent. A contribution to one claim is enough. Thus, the critical question for joint conception is who conceived, as that term is used in the patent law, the subject matter of the claims at issue.


Yoon was a medical doctor and inventor of numerous patented devices for endoscopic surgery. In the late 1970s, Yoon began to conceive of a safety device to prevent accidental injury during trocar incisions. Yoon also conceived of a device to alert the surgeon when the incision was complete. In 1980, Yoon met Choi, an electronics technician, who had some college training in physics, chemistry, and electrical engineering, but no college degree. Choi had worked in the research and development of electronic devices. After Choi had demonstrated to Yoon some of the devices he had developed, Yoon asked Choi to work with him on several projects, including one for safety trocars. Choi was not paid for his work. In 1982, after collaborating for approximately 18 months, their relationship ended. Choi believed that Yoon found his work unsatisfactory and unlikely to produce any marketable product. For these reasons, Choi withdrew from cooperation with Yoon. In the same year, however, Yoon filed an application for a patent disclosing various embodiments of a safety trocar. Without informing Choi, Yoon named himself as the sole inventor. In 1985, the Patent and Trademark Office issued the '773 patent to Yoon, with 55 claims. Yoon thereafter granted an exclusive license under this patent to Ethicon. Yoon did not inform Choi of the patent application or issuance. In 1989, Ethicon filed suit against U.S. Surgical for infringement of claims 34 and 50 of the '773 patent. In 1992, while the suit was still pending, U.S. Surgical became aware of Choi and contacted him regarding his involvement in Yoon's safety trocar project. When Choi confirmed his role in the safety trocar project, U.S. Surgical obtained from Choi a "retroactive license" to practice "Choi's trocar related inventions." Under the license, Choi agreed to assist U.S. Surgical in any suit regarding the '773 patent. For its part, U.S. Surgical agreed to pay Choi contingent on its ultimate ability to continue to practice and market the invention. With the license in hand, U.S. Surgical moved to correct inventorship of the '773 patent under 35 U.S.C. § 256, claiming that Choi was a co-inventor. Following an extensive hearing, the district court granted U.S. Surgical's motion, finding that Choi had contributed to the patent. U.S. Surgical next moved for dismissal of the infringement suit, arguing that Choi, as a joint owner of the patent, had granted it a valid license under the patent. By its terms, the license purported to grant rights to use the patent extending retroactively back to its issuance. The district court granted U.S. Surgical's motion and dismissed the suit. Ethicon thereafter challenged the district court’s finding of co-inventorship and its dismissal of the complaint, contending that Choi presented insufficient evidence to show co-invention claims clearly and convincingly.


Did Choi present sufficient evidence to show co-invention of the ‘773 patent, thereby, justifying the dismissal of Ethicon's patent infringement suit?




On appeal, the United States Court of Appeals for the Federal Circuit affirmed the dismissal, finding that Ethicon's complaint lacked the participation of a co-owner of the patent. The Court held that Choi conceived part of the invention and showed entitlement to the status of co-inventor. The Court found that Choi’s corroboration evidence satisfied the rule of reason. Taking off from this point, the Court held that the district court properly dismissed the infringement claim because Choi, a co-inventor, did not consent to the infringement suit against U.S. Surgical and could no longer consent due to his grant of exclusive license to U.S. Surgical with its accompanying "right to sue."

Access the full text case Not a Lexis Advance subscriber? Try it out for free.
Be Sure You're Prepared for Class