Betak v. Miftakhov

Background

George Betak sued Electric Motor Werks, Inc. (EMW), Enel X North America (Enel X), and Valery Miftakhov. The complaint sought correction of inventorship under 35 U.S.C. § 256 for two patents involving electric-vehicle charging and also asserted state-law claims. The state-law claims were voluntarily withdrawn without prejudice by stipulation before the court decided the motions.

Betak alleged that he proposed and helped develop a connected electric-vehicle-charging system called JuiceNet. He claimed contributions including connecting charging stations through Wi-Fi and cloud-based software, using electricity meters at charging stations, and using software to model and control charging based on user preferences and charging behavior. The two patents identified Miftakhov and other people as inventors but did not identify Betak.

Motions and Judicial Notice

EMW, Enel X, and Miftakhov moved to dismiss the inventorship claims under Federal Rule of Civil Procedure 12(b)(6), which tests whether a complaint alleges enough facts to state a legally plausible claim. The defendants also asked the court to consider two published patent applications cited in the patents as prior-art references.

The court denied the request to use those applications through incorporation by reference because the complaint did not refer to them or necessarily rely on them. The court granted judicial notice only that the applications existed, because they were published U.S. patent applications. It denied judicial notice in all other respects, including the defendants’ proposed interpretation of the applications’ content and its relationship to Betak’s alleged contributions, because Betak disputed those matters.

Court’s Analysis

The court explained that inventorship turns on conception—the mental part of making an invention. A person claiming joint inventorship must contribute meaningfully to the conception of the claimed invention and must have collaborated or communicated with the other inventors. The person need not contribute to every patent claim; contributing to one claim is enough.

For the ’941 patent, the court concluded that Betak’s allegations about conceiving a connected charging system and adding an electricity meter plausibly suggested that he contributed to the subject matter of claims 1 and 11. The court could not decide at the motion-to-dismiss stage whether Betak’s alleged “revenue-grade” meter was different from the “first electricity meter” described in claim 1.

For the ’277 patent, the court likewise concluded that Betak’s allegations plausibly connected his proposed connected charging system and user-preference approach to claims 1 and 12. The court stated that the defendants’ arguments that Betak’s contributions were not expressly claimed were better suited for summary judgment, rather than a motion to dismiss.

The defendants also argued that Betak’s contributions merely explained the existing state of the art and were therefore insignificant. Because that argument relied on the disputed content of the two patent applications, and the court declined to consider that content at this stage, the court rejected the argument as a basis for dismissal.

Disposition

The court denied the Corporate Defendants’ and Miftakhov’s motions to dismiss. It held that, accepting the complaint’s allegations as true and drawing reasonable inferences in Betak’s favor, he stated claims for correction of inventorship. The order disposed of Docket Nos. 22 and 30.