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Inventorship: If it Walks Like a Dog, Barks Like a Dog, and Looks Like a Dog, it Must Be a Dog

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At the beginning of May, the Federal Circuit weighed in on a wacky inventorship dispute in In re VerHoef.

When it comes to co-inventorship, it can be in one’s best interest to play nicely.

It seems, the main inventor, Jeff H. VerHoef, was spurred to creative action when his Irish Setter, Reilly, had back surgery and afterwards started experiencing “knuckling.” Knuckling commonly occurs in dogs with spinal trauma. While walking, the dog drags a paw and puts weight on the paw’s knuckles. (Visualize the way a gorilla walks, on its knuckles with its fingers turned under—this is knuckling.) However, the problem could have other origins; for example, sore paws, fibrocartilaginous embolism, or degenerative myelopathy. Knuckling can cause the dog distress, or paw damage, or worse.

VerHoef was referred to Dr. Alycia Lamb, an animal rehabilitation specialist. During one of the therapy sessions, Dr. Lamb fitted Reilly with a device that connected to Reilly’s injured leg above the paw and assisted the forward movement of the injured leg, but did not reduce the knuckling. VerHoef constructed a homemade version of the device and then improved on it by connecting the device through the dog’s toes. However, the design wasn’t entirely satisfactory, and VerHoef commented to Dr. Lamb, “There has to be a way to connect the cord to the toes.” VerHoef admitted that at the end of their appointment, “Dr. Lamb suggested a strap configured in a figure ‘8’ that fit around the toes and wrapped around the lower part of the leg, might be something to consider.” VerHoef adopted the figure 8 feature and made some further modifications, and the inventive anti-knuckling device was born.

VerHoef decided to file a patent application and, according to VerHoef’s testimony, he asked Dr. Lamb if she wanted to be a co-inventor, but she initially declined. Sometime between this initial offer and the date the patent application was filed, Dr. Lamb had a change of heart. Dr. Lamb decided that she wanted to be a co-inventor, and a co-developer, and needed her own legal advice. However, she signed off on the patent application, and it was filed by VerHoef’s patent attorney listing both VerHoef and Dr. Lamb as co-inventors.

At this point, the relationship between VerHoef and Dr. Lamb soured. VerHoef complains that Dr. Lamb inundated VerHoef with paperwork related to setting up a joint development company. Included in the draft paperwork were an assignment of the patent rights to the corporation, and a noncompetition agreement providing that both VerHoef and Dr. Lamb were “at-will employees” who “could be terminated at any time, with or without good cause or for any or no cause … with or without notice.” According to VerHoef, Dr. Lamb also wrote him and suggested a name for the device, but refused to pay anything towards the patent costs and prototyping, suggesting VerHoef should cover these costs inasmuch as Dr. Lamb “was responsible for the idea, the medical language for the idea, providing the clients to test the idea,” etc.

VerHoef had had enough, and a few days later notified Dr. Lamb via email that he “had decided to discontinue my efforts to enter into a business arrangement with her.” According to VerHoef’s declaration, “at [the] time [the patent was filed], and because of Dr. Lamb’s past and prospective feedback, suggestions and other in kind contributions, I considered her to be a co-inventor and communicated as much to [VerHoef’s patent attorney] Mr. Loop.” However, with the business relationship in shambles, and faced with the reality that the patent application had been filed in both their names, VerHoef again consulted with Loop and—here’s where things get crazy—VerHoef reconsidered Dr. Lamb’s inventive contribution and “came to the realization that because I had at all times maintained intellectual domination and control of the work of making the invention that I was the sole inventor, and Dr. Lamb was not, in fact, a co-inventor as I had once thought.”

VerHoef then expressly abandoned the original application and refiled substantially the same application, but this time listing himself as the sole inventor.

VerHoef was kind enough to advise Dr. Lamb of his intentions in advance, and on the same day as VerHoef, she filed the nearly identical application in her own name as sole inventor.

Unfortunately for VerHoef, the claim at issue included Dr. Lamb’s “figure eight configuration” as an essential feature. The Patent Office rejected VerHoef’s application under pre-AIA 35 U.S.C. § 102(f), which provided “a person shall be entitled to a patent unless he did not himself invent the subject matter sought to be patented.” The Patent Office took the position that the invention was the co-invention of both VerHoef and Dr. Lamb and, therefore, VerHoef could not proceed alone.

On appeal, the Federal Circuit agreed. “Prior to discussing his problem of constructing a working dog mobility device with Dr. Lamb, the concept of a figure ‘8’ strap including a toe loop section and a metatarsal loop section was unknown to [VerHoef]. In other words, [VerHoef] did not conceive this feature, Dr. Lamb did. As a consequence, [VerHoef’s] ‘conception’ of the claimed invention was incomplete until Dr. Lamb provided the missing piece to the puzzle.”

The Court also made short shrift of VerHoef’s “intellectual domination” theory. “Despite [VerHoef’s] contention that he at all times maintained complete intellectual domination and control over the inventive process including the work associated with making his dog mobility device, he in fact did not. [VerHoef] may have engaged Dr. Lamb for veterinary services but did not ‘hire’ her to work on his invention. As such, there does not appear to be any evidence [VerHoef] had control over Dr. Lamb’s ideas or her decision to contribute them.”

Now that VerHoef has been thrown for this loop—pun intended—he’ll have to placate Dr. Lamb and entice her to support the patent and join his commercial enterprise or else open himself up to the threat of being knocked-off. At a minimum, in order to sustain his application, he’ll have to add Dr. Lamb as his co-inventor, which, at this point, must be a particularly unsavory piece of humble pie.

If you have any questions about this post, please contact me at kgbriscoe@nmmlaw.com.

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