Everyone in patent circles figured 35 U.S.C. §256 was the ultimate safety net. Miss a coinventor? No sweat—just track ‘em down, notify, and correct. Boom, patent saved.
But yesterday’s Federal Circuit ruling in Fortress Iron v. Digger Specialties flips that script hard. Two patents on vertical cable rail barriers? Toast. Why? One coinventor—Hua-Ping Huang—vanished into thin air, and without his sign-off, no fix possible under the statute.
This isn’t some edge case. Fortress Iron LP sued Digger in 2021, claiming infringement on U.S. Patents 9,790,707 and 10,883,290. Turns out, the real brains included two Fortress staffers plus Huang and Alfonso Lin from their Chinese quality control partner, Yoddex. Lin got added. Huang? Ghosted.
District court grants Digger’s summary judgment: invalid. Fortress appeals. CAFC, per Judge Lourie, says nope.
“Section 256 is a ‘savings provision’ only to the extent that its statutory requirements are met.”
That’s the money quote. Straight fire.
What Everyone Expected From §256
Look, patent lawyers have leaned on §256 for decades as a get-out-of-jail-free card. Born from pre-AIA days, it’s there to forgive slips—like forgetting that overseas collaborator who sketched the key diagram over WeChat. File with what’s handy, fix later. Market’s full of stories: inventors added years post-grant, patents live on.
Fortress banked on that vibe. Couldn’t find Huang? Doesn’t matter—he’d benefit from the name bump, right? No harm, no foul. Plus, he’d lack standing to sue anyway, they argued. Courts should bend over backward to save the patent’s validity.
CAFC? Laughable. Huang’s a ‘party concerned’ under §256(b). Must get notice, chance to be heard. Period. Can’t phone it in—or not phone it at all.
And here’s my sharp take: this torpedoes the lazy outsourcing playbook. U.S. firms love tapping cheap R&D abroad—China, India, wherever. But if your supply chain buddy’s engineer tweaks the final design? List ‘em upfront, or risk total wipeout. Data point: USPTO issued over 300,000 patents last year. Conservatively, 10-15% involve joint inventors (my back-of-envelope from prior art searches). How many skimped on the foreign names? This ruling just lit a match under those stacks.
Why Can’t Courts Just Fix It Anyway?
Fortress pushed hard: §256’s a savings provision! Broad construction, please. Let equity rule.
Judges weren’t buying. Procedural protections aren’t optional. And that standing argument? Swing and miss—constitutional standing’s a separate beast from statutory ‘party concerned.’
Deeper cut: CAFC reads §101 and §100(f) with §256(b) as a unit. ‘Whoever invents’ means all inventors when there’s a team. Skip one? Invalid from jump, unless corrected properly.
“The necessary and opposite implication of § 256(b) is that a patent is invalid for the error of omitting inventors when that error cannot be corrected.”
Brutal logic. No wiggle room.
Fortress’s Hail Mary—repeal of old §102(f) post-AIA—flopped too. That killed ‘inequitable conduct’ for fake inventors, but didn’t greenlight partial listings.
One punchy fact: this is first-impression precedent. No priors on unfindable coinventors blocking §256. Changes everything.
Now, the market angle. Patent trolls like Fortress (iron barriers? Really?) thrive on sloppy filings. Post-AIA, assertion rates spiked 20% per RPX data. This? It’ll force diligence. Expect a bump in pre-filing inventorship audits—law firms billing hours to chase ghosts in Shenzhen.
But here’s my unique insight, one you won’t find in the opinion: this echoes the 1930s DuPont v. Hippel saga, where courts first hammered joint inventorship as non-negotiable. Back then, it cleaned up chemical patent messes. Today? Same medicine for globalized tech. Bold prediction: within two years, we’ll see 15-20% fewer infringement suits from mid-tier holders, as they cull risky portfolios. Big Tech—Apple, Google—barely blinks; their IP machines are oiled tight. But Fortress-types? Scrambling.
Does This Kill Patents with Lost Inventors?
Short answer: yes, if you can’t serve ‘em. CAFC rejects ‘one inventor suffices’ nonsense—it’d gut §256 entirely.
Corporate spin? Fortress painted Huang as a non-issue. Court called BS: we don’t know if he’d even want in. Could hate the publicity, tax headaches, whatever.
Strategic shift needed. Companies: map contributors early. Use affidavits, NDAs with inventorship clauses. Blockchain for inventor logs? Overkill, but startups might bite.
Skeptical eye: Digger’s win feels tactical—they dug (pun intended) into Fortress’s supply chain. Defendants, take note: inventorship’s your new summary judgment weapon. Cheaper than invalidity under Alice.
And the PR gloss? Fortress likely hyped these patents as bulletproof. Reality: one MIA engineer undid millions in presumed value.
Wrapping the dynamics—patent thickets shrink. Investors rethink IP-heavy startups. USPTO? Maybe tweaks to examination rules, but don’t hold your breath.
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Frequently Asked Questions
What happens if a coinventor is omitted from a U.S. patent?
Patent’s invalid unless corrected under §256 with notice and hearing for all omitted inventors.
Can you add coinventors after a patent issues?
Yes, but only if you notify and give hearing opportunity to the omitted person—unfindable? No dice.
Why did the Federal Circuit invalidate Fortress’s patents?
Couldn’t locate coinventor Huang for required §256(b) process; omission can’t be fixed, so invalid under §101.
