Inventorship requires contributions above the conventional state of the art. A co-inventor “must contribute in some significant manner to the conception or reduction to practice of the invention [and] make contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.”
Background / Facts: The patent here is directed to controlling key components of a wind turbine that would allow it to remain connected to the power grid and to safely ride through a “low voltage event,” such as lightning strikes and animal contacts causing wires of the power grid to short, which can damage nearby wind turbines by causing the blades of a turbine to rotate out of control or by causing electric current to back up into the generator rotor. The potential infringer attempted to license the patent from a former GE employee, Wilkins, who claims he was omitted as an inventor and would still retain ownership rights.
Issue(s): Whether, in light of all the record evidence, Wilkins proved his inventorship claim by clear and convincing evidence.
Holding(s): No. While the court largely focused on Wilkins’ behavior as a witness and the lack of “any credible testimony that could be corroborated,” it noted that “[t]he undisputed record confirms that the [other] German inventors had already conceived of their controller-based LVRT solution before corresponding with Wilkins to discuss American grid requirements or meeting with Wilkins in Germany.” Moreover, “Wilkins himself conceded that the idea to use a[n] [Uninterruptible Power Supply] UPS to perform LVRT,” which was his alleged contribution, was “not novel in 2002.” Accordingly, “if all Wilkins allegedly contributed to the [] patent was the idea to use a UPS, then he would have contributed nothing beyond what was already known in the art. That is not sufficient to name Wilkins as a co-inventor.”