Federal Circuit Says Veterinarian’s Suggestion Covered Essential Patent Claim Element


On Thursday, May 3rd, the Court of Appeals for the Federal Circuit issued a decision in In Re VerHoef, a case stemming from a decision by the Patent Trial and Appeal Board (PTAB) to invalidate a patent during an ex parte proceeding on 35 U.S.C. § 102(f) grounds, which governs the patentability of inventions which have been derived from a person who is not listed as an inventor on the patent application. The Federal Circuit panel affirmed the PTAB’s finding that Jeff VerHoef was not the sole inventor of a mobility device for dogs because the device incorporated a suggestion made by a veterinarian working with VerHoef’s dog.

The patent application at issue in this appeal is U.S. Patent Application No. 20130152873, titled Dog Mobility Device and claiming priority to a patent application filed in December 2011; this patent application is subject to pre-America Invents Act Section 102(f). That patent application lists VerHoef as the sole inventor. In an affidavit, VerHoef stated that he had developed the mobility harness covered by the ‘873 patent application, which assists with a dog’s movement of his hind legs, after his dog Reilly had difficulty walking after a surgical operation.

VerHoef worked with a veterinarian, Dr. Alycia Lamb, to provide rehabilitative therapy for Reilly around the same time that VerHoef was working on the mobility device. VerHoef had previously acted on Dr. Lamb’s suggestion to purchase a commercially available harness to support Reilly’s hind leg, but this device caused Reilly to place the leg’s weight on his knuckles instead of his toes. VerHoef recognized that a harness connected to Reilly’s toes would solve the problem and discussing this issue with Dr. Lamb, the vet suggested a strap configured with a figure 8 structure to engage the toes might solve that problem. Incorporating the figure 8 design into the mobility device, VerHoef filed a patent application listing himself and Dr. Lamb as co-inventors. That relationship soured and VerHoef filed the ‘873 patent application on the same day that Dr. Lamb filed a substantially similar patent application listing herself as the sole inventor.

The examiner of VerHoef’s patent application issued a Section 102(f) final rejection after VerHoef submitted his affidavit because the examiner found that VerHoef did not invent the claimed subject matter. On appeal to the PTAB, the Board affirmed the examiner’s decision, finding that the figure 8 loop was an essential element of the invention and finding that VerHoef didn’t maintain “intellectual domination” over the inventive process. During oral arguments on appeal to the Federal Circuit, counsel for VerHoef argued that, while Dr. Lamb did provide the suggestion on the figure 8 loop, VerHoef maintained the work of making the invention and the mere suggestion from Dr. Lamb did not automatically raise her to the level of joint inventor.

The Federal Circuit’s decision in the case, authored by Judge Lourie, cites to its 1994 decision in Sewall v. Walters where it found that a determination of inventorship requires “nothing more than determining who conceived the subject matter at issue.” VerHoef’s claim of sole inventorship based on maintaining the work of the invention has its basis in Morse v. Porter, a 1965 case decided by the Board of Patent Appeals and Interferences (BPAI) that is still cited in the Manual of Patent Examining Procedure (MPEP) as guiding law which allows an inventor to “adopt ideas and materials from many sources” so long as the inventor maintains the work of incorporating the suggestion into the invention.

The Federal Circuit, however, sided with the PTAB based on legal reasoning from another 1994 decision, Burroughs Wellcome Co. v. Barr Laboratories, Inc., which holds that “an idea is definite and permanent when the inventor has a specific, settled idea, a particular solution to the problem at hand.” Citing to Burroughs, the CAFC recognized Dr. Lamb’s suggestion as a particular solution to VerHoef’s problem at hand. The figure 8 solution was an essential part of the invention, the Federal Circuit found, as it is only one of two limitations recited in claim 1 of the ‘873 patent application.

In addressing VerHoef’s inventorship argument under Morse, the Federal Circuit found that case wasn’t binding and that it did not support a different conclusion in the case. In that case, the BPAI was deciding a priority contest between a group of inventors claiming a sanitary napkin with a particular stitching pattern. That case involved an extensive and conflicting factual record over the proper inventorship, whereas this case included an affidavit from VerHoef which clearly identified Dr. Lamb as the person who conceived of the essential figure 8 element.

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