Factual Disputes Preclude Grant of Summary Judgment of Improper Inventorship

| Arash PiaNathan D. Reeves

Plastipak Packaging, Inc. v. Premium Waters, Inc.

Before Newman, Stoll, and Stark. Appeal from the United States District Court for the Western District of Wisconsin.

Summary: An overwhelming amount of evidence in favor of summary judgment is not sufficient if the nonmoving party presents evidence on which a reasonable factfinder could rely.

Plastipak sued Premium Waters for infringement of various Plastipak patents. Premium Waters moved for summary judgment of invalidity, asserting that the patents were invalid for failure to name Falzoni as a joint inventor. The District Court evaluated two groups of patents, each of which contained at least one of two limitations Premium Waters argued Falzoni contributed to. The District Court cited an overwhelming amount of evidence pointing to Falzoni’s contributions, including a 3D model Falzoni sent to the named inventors before they filed the patents. The 3D model arguably disclosed both limitations. The District Court concluded that any reasonable fact finder would find that Falzoni was an inventor and granted Premium Waters’ motion.

On appeal, the Federal Circuit reversed. Reviewing de novo, the Federal Circuit concluded that a reasonable factfinder, taking the evidence in the light most favorable to Plastipak as the nonmoving party, could find Falzoni was not an inventor. For one limitation, there was some evidence of record that the named inventors could have conceived of their inventions independent of Falzoni’s 3D model. And with respect to the other limitation, the Federal Circuit found a genuine dispute of material fact as to whether Falzoni contributed anything other than what was already known in the prior art.

Thus, a reasonable fact finder could find that Falzoni did not meaningfully contribute to the patents and was not an inventor. The Federal Circuit reversed the District Court's grant of summary judgment in favor of Premium Waters and remanded.

Editor: Paul Stewart