Wednesday, November 13, 2013

Ethicon, Inc. v. United States Surgical Corp. case brief

Ethicon, Inc. v. United States Surgical Corp. case brief summary
135 F.3d 1456 (1998)

Plaintiff appealed from a judgment of the United States District Court for the District of Connecticut, granting defendant's motion to dismiss plaintiff's patent infringement action after finding that defendant-intervenor was a co-inventor of two of the patents in the suit.

Plaintiff filed suit against defendant for allegedly infringing plaintiff's patented tool used in endoscopic surgery. Meanwhile, defendant had obtained a retroactive license to use the inventions of defendant-intervenor, the co-inventor.

The court here found no reason to reverse the district court's finding that defendant-intervenor conceived part of the invention and showed entitlement to the status of co-inventor. The court found that defendant-intervenor's corroboration evidence satisfied the rule of reason. Defendant moved for dismissal of the infringement suit, arguing that defendant-intervenor, as a joint owner of the two patented processes, had granted defendant a valid license under the patents.


  • The court here affirmed the district court's dismissal because plaintiff's complaint lacked the participation of defendant-intervenor, a co-owner of the patents. 
  • Defendant-intervenor did not consent to an infringement suit against defendant and could no longer consent due to his grant of an exclusive license to defendant with its accompanying right to sue.

The court affirmed the dismissal of the patent infringement suit because the plaintiff's complaint lacked the participation of a co-owner of the patents. The defendant-intervenor who co-owned the patents did not consent to join as a plaintiff in the action because he had granted an exclusive license to the defendant.

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