Ethicon, Inc. v. United States Surgical Corporation

Facts

The '773 patent relates to trocars. A trocar is a  surgical instrument which makes small incisions in the wall of a body cavity, often the abdomen, to admit endoscopic instruments. Yoon is a medical doctor and inventor of numerous patented devices for endoscopic surgery. In the late 1970s, Yoon began to conceive of a safety device to prevent accidental injury during trocar incisions. Yoon also conceived of a device to alert the surgeon when the incision was completed. In 1980, Yoon met Choi, an electronics technician. After Choi had demonstrated to Yoon some of the devices he had developed, Yoon asked Choi to work with him on several projects, including one for safety trocars. Choi was not paid for his work. After collaborating for eighteen months, their relationship ended. Choi believed that Yoon found his work unsatisfactory and unlikely to produce any marketable product. Yoon filed an application for a patent disclosing various embodiments of a safety trocar. Without informing Choi, Yoon named himself as the sole inventor. The Patent and Trademark Office issued the '773 patent to Yoon, with fifty-five claims. Yoon granted an exclusive license to P. Yoon did not inform Choi of the patent application or issuance. P filed suit against D for infringement. D became aware of Choi and contacted him regarding his involvement in Yoon's safety trocar project. D obtained from Choi a 'retroactive license' to practice 'Choi's trocar related inventions. “Choi agreed to assist D in any suit regarding the '773 patent. D moved to correct inventorship of the '773 patent under §256, claiming that Choi was a co-inventor. The district court granted D's motion, finding that Choi had contributed to the subject matter of claims 33 and 47. D moved for dismissal of the infringement suit. The district court granted the motion and dismissed the suit. P appealed.

Issues

Rule of Law

Holding and Decision

Legal Analysis

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