In a recently-decided case, two plaintiffs filed a correction of inventorship action seeking to add themselves as inventors of several patents assigned to defendant Zimmer, Inc. Chief Judge Sleet held a bench trial and concluded that the plaintiffs were not inventors of the patents-in-suit. See Scott v. Zimmer, Inc., C.A. No. 10-772-GMS (D. Del. Aug. 27, 2012).
Judge Sleet went through the patents-in-suit, claim by claim, and found that the plaintiffs had not contributed novel elements to any of the claims at issue. “To be an inventor, one must contribute to the conception of the invention. . . . Thus, plaintiffs must show that they each individually made a ‘contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and [did] more than merely explain to the real inventors well-known concepts and/or the current state of the art.’” Id. at 5-6 (citations omitted). In each instance, however, the plaintiffs’ testimony that they had been involved in the conception of novel elements was completely uncorroborated, and “plaintiffs’ testimony regarding their own inventorship claim ‘is regarded with skepticism’ and ‘cannot, standing alone, rise to the level of clear and convincing proof.’” Id. at 6 (citations omitted). Furthermore, the documentary evidence and testimony of other inventors largely contradicted any suggestion that the plaintiffs had helped conceive of the inventive elements. Therefore, the court concluded that “the plaintiffs [had] not met their burden of establishing, by a clear and convincing evidence, a specific contribution made by them to the conception of a novel element of a patent claim, and that they [had] not corroborated their testimony.” Id. at 16.