In re: Jeff H. Verhoef, Case No. 2017-1976 (Fed. Cir. May 3, 2018)
In IN RE: JEFF H. VERHOEF, Case No. 2017-1976 (Fed. Cir. May 3, 2018), the Federal Circuit provided analysis on whether the invention at issue was a sole invention or a joint invention.
In this case, VerHoef’s dog Reilly developed difficulty walking after undergoing surgery. Reilly would drag his hind paw and put weight on his paw’s knuckles, called knuckling. Consequently, VerHoef met with a veterinarian, Dr. Alycia Lamb, to begin rehabilitative therapy for Reilly, but initial results using an underwater treadmill were disappointing and appeared to exacerbate the knuckling problem. Dr. Lamb then suggested trying a commercially available harness that would provide support to the hind leg, but the harness similarly did not fix the knuckling problem. VerHoef constructed a homemade harness modeled on the commercial one, but this yielded similar results. VerHoef then recognized that the harness would work better if connected to the dog’s toes. VerHoef mentioned the same during a therapy session and Dr. Lamb suggested that a strap configured in a figure ‘8’ that fits around the toes and wrapped around the lower part of the leg, above the paw, might be something to consider. VerHoef then implemented Lamb’s figure eight idea, and, after further adjustments, had a working device that reduced the knuckling problem.
VerHoef contacted a patent attorney who then filed a patent application directed to the homemade dog harness listing both VerHoef and Lamb as joint inventors. Relations between VerHoef and Lamb soured thereafter. VerHoef’s patent attorney abandoned VerHoef’s and Lamb’s joint application and filed a substantially identical application, listing VerHoef as the sole inventor. That same day Lamb also filed a substantially identical application listing herself as sole inventor. Each application recites the same independent claim.
The examiner issued a final rejection under § 102(f). The rejection stated that VerHoef “did not invent the claimed subject matter.” VerHoef then appealed to the Board. The Board held that the paw loop configured in a figure eight was an essential element of the claimed invention, and conception was not complete until Dr. Lamb suggested the figure eight loop. Accordingly, the Board concluded that Dr. Lamb was a joint inventor of the claimed invention.
The issue on appeal was whether the invention at issue was a sole invention or a joint invention.
The Federal Circuit indicated that when an invention is made jointly, the joint inventors need not contribute equally to its conception. In addition, the Federal Circuit explained that a joint inventor must: (1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make 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 (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.
The Federal Circuit found that under this framework Dr. Lamb is a joint inventor because she contributed the idea of the figure eight loop, and the figure eight loop is an essential feature of the claimed invention. Therefore, the Federal Circuit affirmed the decision of the Board.