Federal Circuit Says Corrected Inventorship Came Too Late to Revisit PTAB Decisions

"Implicit has not adequately explained why it could not have made any arguments related to Mr. Carpenter in the first instance or more diligently sought correction of inventorship. The principle of forfeiture can apply even where an intervening correction of inventorship was granted that would have directly affected the outcome of a Patent Trial and Appeal Board proceeding."

"Implicit argued that Balassanian and Bradley conceived of the inventions and worked with engineer Guy Carpenter for implementation prior to December 11, 2001, and that therefore Janevski could not be prior art because the work of Mr. Carpenter inured to the inventors' benefit and the subject matter of the claims was conceived and actually reduced to practice prior to Janevski's filing date."

The Federal Circuit issued a precedential decision in a case involving Implicit LLC's appeal of a PTAB final written decision regarding inter partes reviews brought by Sonos against two patents titled 'Method and System Synchronization of Content Rendering.' The patents originally listed only two inventors, but Implicit later obtained certificates of correction adding a third inventor, Guy Carpenter. Implicit argued that Carpenter's work on implementation prior to a prior art reference's filing date should render that reference non-prior art. The PTAB found insufficient evidence of conception and communication. The Federal Circuit held that forfeiture principles apply regardless of whether the corrected inventorship would have affected the outcome, requiring parties to make inventorship arguments and seek corrections diligently from the outset.

Read at IPWatchdog.com | Patents & Intellectual Property Law