Fortress Iron, LP sued Digger Specialties, Inc. for infringement of two patents covering vertical cable railing panels. The patents originally named only Fortress's owner and an employee as inventors. However, during the litigation, it was established that two employees of Fortress's Chinese manufacturing partner, Hua-Ping Huang and Alfonso Lin, also contributed to the conception of the invention and were omitted inventors. Fortress was able to locate Lin and add him as a coinventor using the standard correction procedure under 35 U.S.C. § 256(a). However, Fortress could not locate Huang, who had left his employer without providing contact information. Fortress moved to correct the patents under § 256(b) to add Huang, while Digger Specialties moved for summary judgment of invalidity based on the incorrect inventorship. The district court denied the correction motion and granted invalidity, holding that the patents were unenforceable because the error could not be corrected without Huang's participation.
The Federal Circuit addressed two primary issues: whether the district court correctly denied the motion to correct inventorship under § 256(b), and whether the patents were invalid due to the omission. First, the court analyzed the definition of a 'party concerned' under § 256(b). Relying on precedent, the court held that an omitted coinventor is a 'party concerned' entitled to notice and a hearing. The court rejected Fortress's argument that 'party concerned' should be limited to those with an economic interest that might be adversely affected. The court reasoned that inventorship carries legal and ownership consequences, and the statute does not support narrowing the definition to only those who might lose property. Furthermore, the court clarified that constitutional standing and statutory 'party concerned' status are distinct; an inventor may be a party concerned even if they lack standing to sue independently. Because Fortress could not contact Huang, it could not satisfy the mandatory notice and hearing requirements of § 256(b). Second, the court addressed the invalidity of the patents. The court explained that § 256(b) is a 'savings provision' that saves a patent from invalidity only if the error 'can be corrected as provided in this section.' Since the correction process was impossible without Huang, the savings provision did not apply. The court rejected Fortress's arguments that only one inventor needed to be listed or that the repeal of 35 U.S.C. § 102(f) changed the law. The court affirmed that for joint inventions, all inventors must be named, and failure to do so renders the patent invalid when correction is not possible.
The decision confirms that patent owners cannot unilaterally correct inventorship errors if a missing coinventor cannot be located and notified. This creates a strict liability risk for patentees who fail to identify all contributors at the time of filing. If a coinventor is missing and cannot be found, the patent is invalid, leaving the patentee without protection against infringement. The ruling clarifies that the 'savings provision' of § 256(b) is not a safety net for procedural failures; it strictly requires compliance with notice and hearing obligations for all parties concerned.
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