Doggone It: Inventor Affidavit Contradicts Sole Inventorship Claim

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Affirming a Patent Trial and Appeal Board (PTAB) decision that an examiner’s rejection of claims was proper under 35 USC § 102(f), the US Court of Appeals for the Federal Circuit found that the PTAB correctly concluded that the named inventor on the patent application at issue did not solely invent the claimed subject matter on which he claimed sole inventorship. In re: VerHoef, Case No. 17-1976 (Fed. Cir., May 3, 2018) (Lourie, J).

Jeff VerHoef brought his dog to a veterinarian, Dr. Alycia Lamb, for rehabilitative therapy. During the course of treatment, Lamb suggested using a commercially available harness on VerHoef’s dog. VerHoef mentioned to Lamb that the harness would work better if connected to the dog’s toes, at which point Lamb suggested configuring the strap into a figure eight loop to wrap around the toes. VerHoef subsequently filed a patent application with a single independent claim that claimed the figure eight loop. VerHoef and Lamb were listed as joint inventors.

The joint application was later abandoned, and VerHoef filed a substantially identical application listing himself as the sole inventor. On the same day, Lamb filed a substantially identical application listing herself as the sole inventor.

After reviewing an affidavit submitted by VerHoef, the US Patent and Trademark Office (PTO) examiner issued a final rejection under § 102(f), stating that VerHoef did not invent the claimed subject matter. VerHoef appealed to the PTAB. Based on a determination that Lamb contributed to the essential element of the figure eight loop in the claimed invention, the PTAB concluded that Lamb was a joint inventor and sustained the examiner’s rejection. VerHoef appealed to the Federal Circuit.

On appeal, VerHoef conceded that the figure eight loop was an essential feature of the claimed invention and was suggested to him by Lamb, but argued that he should be declared the sole inventor because he maintained “intellectual domination and control of the work.” The Federal Circuit disagreed, noting that VerHoef’s affidavit conclusively established that Lamb, not VerHoef, contributed the idea of the claimed figure eight loop, and thus VerHoef was not the sole inventor. The Court also rejected VerHoef’s “emancipation” theory that Lamb “freely volunteered” the figure eight loop idea, finding that no legal authority supported this theory. Because VerHoef admitted to appropriating Lamb’s freely given idea, the Court explained that it would be paradoxical to regard VerHoef as the sole inventor. Concluding that Lamb was a joint inventor of the claimed subject matter, the Court found that the PTAB properly affirmed the PTO examiner’s rejection of the claims under 35 USC § 102(f).

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