September 22, 2023

by Dennis Crouch

Krzysztof Sywula’s story has some thematic parts of the Netflix Glass Onion present.  As he tells it, Sywula was on the Santorini Island Grill with Alexis DaCosta &  Vincent Coletti speaking about creating an improved app for trip sharing.  Throughout one of many conferences, Sywula apparently sketched-out a diagram on a serviette that he gave to DaCosta and that finally served as a foundation for the patent filings on this case.  The events continued to work collectively for a number of extra years with Sywula finally changing into the CTO.  Then got here the patenting.  Sywula was excluded from being listed as an inventor on the patents, together with US11087250 and US11087252; and that was upsetting.

Sywula sued for correction of invention, and the District Courtroom initially dismissed the case on standing, however – after an amended grievance – has now agreed that Sywula has met the necessities to outlive a pleading-stage demurrer.

Standing to Sue: Federal Courts can solely hear “precise circumstances or controversies.” U.S. Const., Artwork. III.  The Supreme Courtroom has massaged these phrases in to a 3 half standing requirement of (1) harm the truth is that’s precise, concrete and particularized; (2) a causal hyperlink between the challenged actions and the acknowledged harm; and (3) identification of a possible mechanism for redressing the harm that’s throughout the courtroom’s energy.   These are sometimes damaged right down to (1) injury-in-fact; (2) causation; and (3) redressability.

The First Downside — Project of Rights: Sywula signed a Consulting Settlement and an Invention Settlement, each of which promise to assign rights to DaCosta and Coletti or their newly shaped firm Teleport, together with any innovations, commerce secrets and techniques, discoveries, designs, software program, and many others., arising from his work on the endeavor.   In patent regulation, inventorship is tied on to possession. An inventor is a presumptive proprietor of any ensuing patent rights.  Nonetheless, these inchoate rights are assignable in a method that decouples inventorship and possession.  There outcome right here is that Sywula will not be struggling an possession harm (or some other fee harm flowing from his failure to be named as an inventor). Sywula v. DaCosta, 21-CV-01450, 2022 WL 2959577 (S.D. Cal. July 26, 2022).

The Second Downside — Concrete Reputational Harm: After receiving this primary rejection from the district courtroom, Sywula reformed his grievance to assert a reputational harm as a consequence of his failure to be listed as an inventor.   Right here, courts have been considerably clear that reputational-interest concept can’t be merely tied to a nebulous cloud.  The District Courtroom quotes my 2021 article explaining that courts refuse to seek out Article III standing based mostly merely upon lack of “the dignity of and accompanying self-satisfaction of official inventorship recognition.” Dennis Crouch, Reattribution, The Poison Capsule & Inventorship, 5 BUS. ENTREPRENEURSHIP & TAX L. REV. 138 (Fall 2021).

However, the district courtroom concluded that Sywula had completed sufficient to maneuver from nebulous to concrete.  Specifically, Swyula’s pleading present a ample exhibiting that his profession as a software program engineer would have been boosted based mostly if he had been correctly listed as an inventor.  This financial/pecuniary tie-in is what the Federal Circuit seemed for in its key resolution of Shukh v. Seagate Know-how LLC, 803 F.3d 659 (Fed. Cir. 2015).  The district courtroom explains:

Sywula adequately pleads he sought employment within the subject of his claimed invention. That’s, Sywula, a software program developer who purportedly architected, developed, and wrote the software program for Teleport’s ride-sharing software, alleges he aspired to climb the hierarchical ladder for software program builders and procure a Principal Engineer function. Sywula additionally adequately pleads Teleport’s omission “have an effect on[ed] his employment” by severely diminishing, if not foreclosing completely, his alternative for a promotion to Principal Engineer at Intel. Importantly, he alleges the prospects of his promotion from Software program Engineer to Principal Engineer at Intel weren’t merely illusory or wishful pondering. He claims to have met practically all of Intel’s experience-and skills-based standards to be eligible for a promotion. Nonetheless, he’s lacking one purportedly essential qualification: he can’t declare to be an inventor of any patented know-how. Based on Sywula, “[p]ublished patents are normally required for software program engineers to realize higher-ranked roles.” And Intel [his current employer], specifically, considers revealed patents as related to a minimum of three qualities and expertise it seems to be for in potential Principal Engineers.

Merely put, the Second Amended Criticism comprises sufficient factual materials for this Courtroom to deduce Defendants’ withholding of inventorship credit score within the Teleport patents plausibly diminished and even foreclosed his prospects of career-advancement at Intel and, extra usually, in no matter software-developer place he holds or will maintain. Therefore, Defendants’ omission plausibly strips Sywula of the pecuniary advantages attendant to promotion. Accordingly, Sywula has adequately alleged an financial element to one in every of his reputational accidents.

Sywula v. Teleport Mobility, Inc., 21-CV-1450, 2023 WL 362504, at *16 (S.D. Cal. Jan. 23, 2023).  In its evaluation right here, the courtroom went considerably gentle on the causation factor — noting that it’s sufficient that the reputational harm influenced his profession trajectory with out being the only real trigger.  The courtroom additionally accepted a second justification for jurisdiction — Sywula’s failure to acquire a job as a software program engineer at Apple may very well be partially attributed to the truth that he was not listed as an inventor.

Learn the Resolution:

Be aware: I don’t assume that the serviette is of document but within the litigation.

Query: Is an inventorship dispute one thing materials to patentability such that ought to be disclosed to the USPTO below 37 C.F.R. 1.56?