Iceotope Group Limited v. LiquidCool Solutions, Inc.

Background

Iceotope Group Limited alleged that LiquidCool Solutions, Inc.’s two United States patents—Patent Nos. 10,390,458 and 10,609,839—listed the wrong inventors. Iceotope sought correction under 35 U.S.C. § 256, which allows a court to correct an issued patent when an inventor was wrongly included or omitted.

Iceotope alleged that five of its employees—David Amos, Neil Edmunds, Andrew Young, Jasper Kidger, and Nathan Longhurst—were the true inventors of the inventions claimed in LiquidCool’s patents. Iceotope sought either to replace LiquidCool’s listed inventors with those five employees or, alternatively, to add them as joint inventors.

Analysis

The court applied the standard for a motion to dismiss for failure to state a claim. At this stage, the court accepts well-pleaded factual allegations as true but does not accept bare legal conclusions or unsupported statements.

For complete replacement of the listed inventors, Iceotope had to plausibly allege both that its five employees conceived the claimed inventions and that LiquidCool’s listed inventors did not conceive them. The court held that Iceotope’s allegation that its employees conceived the inventions was conclusory. The complaint did not identify what contribution each employee made or explain how those contributions related to the inventions claimed in LiquidCool’s patents.

The court also held that Iceotope did not plausibly allege that LiquidCool’s listed inventors were wrongly included. Inventors named in an issued patent are presumed to be the correct inventors. Iceotope alleged that LiquidCool’s employees knew about Iceotope’s technology, but the court ruled that knowledge of another company’s technology did not reasonably show that LiquidCool’s employees contributed nothing to the patented inventions. The court also noted that most of the Iceotope materials identified in the complaint were published after LiquidCool filed its patent applications, and the complaint did not allege that LiquidCool obtained the materials before publication.

For the alternative claim that Iceotope’s employees should be added as joint inventors, the court explained that joint inventorship requires a contribution to conception and some collaboration or communication with the named inventors. Iceotope did not allege that it or its employees collaborated with LiquidCool or its employees. Iceotope conceded that point in its briefing and represented at the hearing that it was no longer asserting joint inventorship. The court therefore held that the alternative nonjoinder claims failed as a matter of law.

Disposition

Judge Wilhelmina M. Wright granted LiquidCool’s motion to dismiss. The court also granted the motion to dismiss Iceotope’s alternative claims for erroneous nonjoinder. The order dismissed Iceotope’s complaint without prejudice and directed that judgment be entered accordingly.