Fortress Iron LP sued Digger Specialties Inc. for infringement of patents covering pre-assembled vertical cable railing panels. During litigation, both sides acknowledged that Hua-Ping Huang, a Chinese employee who suggested critical design changes to address cable tensioning issues, was an omitted coinventor. While Fortress successfully added another Chinese employee as a coinventor, it could not locate Huang to obtain his consent for the correction process.
Judge Alan Lourie wrote that inventors occupy "the central role in the patent process" and that Huang qualified as a "party concerned" under 35 U.S.C. § 256(b), which requires notice and hearing before courts can correct inventorship. "Inventorship carries legal, financial, and ownership consequences that an inventor has a right to contest," Lourie explained. The court rejected Fortress's argument that only inventors with adverse economic interests count as "parties concerned."
The district court had denied Fortress's motion for partial summary judgment to add Huang as a coinventor and granted summary judgment of invalidity to Digger. Fortress appealed both rulings to the Federal Circuit, arguing the patents should remain valid since at least one true inventor was listed.
The ruling creates new precedent requiring patentees to locate all coinventors before correcting inventorship, potentially invalidating patents where missing inventors cannot be found. The decision reinforces that Section 256's "savings provision" only applies when all statutory requirements are met, including notice to omitted coinventors.