## Facts

- Dr. Arthur D. Steffee developed spinal fixation technology and obtained patents covering a spinal plate system (U.S. Patent No. 4,696,290) and an improved bone screw (U.S. Patent No. 4,854,311), later assigned to AcroMed Corporation.
- Steffee worked with hospital machinist Frank Janson to produce components and modify a slotted spinal plate to reduce fastener slippage, including a design using arcuate recesses along the slots.
- After the patents issued, AcroMed sought an acknowledgment and assignment from Janson; he refused and instead assigned his asserted rights to Sofamor Danek Group, Inc. and Danek Medical, Inc. (collectively, Danek).
- AcroMed sued Danek for infringement; Danek asserted, among other defenses, that the patents were invalid or unenforceable for failure to name Janson as a co-inventor.
- At trial, the jury found literal infringement of asserted claims and found the ’311 patent not invalid; the district court granted AcroMed JMOL on Danek’s improper inventorship defense and denied Danek’s JMOL motions on infringement and validity.
- Janson testified he had independently conceived the arcuate-recess concept earlier, but admitted he had not documented or communicated that conception at the time.

## Issues

1. Whether Danek presented legally sufficient evidence that Janson was a joint inventor under 35 U.S.C. § 116 such that the patents were invalid for improper inventorship.
2. Whether substantial evidence supported the jury’s findings of literal infringement and non-invalidity (including rejection of asserted prior-art invalidity theories).

## Decision

- The Federal Circuit affirmed the district court’s JMOL that the patents were not invalid for failure to name Janson as an inventor.
- The court held that, even viewing the evidence favorably to Danek, no reasonable jury could find joint inventorship on this record.
- The court affirmed the judgment based on the jury’s findings of literal infringement of the asserted claims.
- The court affirmed the jury’s non-invalidity determination as to the ’311 patent and rejected Danek’s remaining invalidity arguments.

## Legal Principles

- Joint inventorship requires a significant contribution to the conception of the claimed invention; performing skilled labor or implementing another’s directions, without contributing to conception, does not make a person a co-inventor.
- Conception is the touchstone of inventorship and requires a definite and permanent idea of the complete invention.
- An inventorship-based invalidity defense must be proved by clear and convincing evidence, and oral testimony about inventive contribution must be corroborated; uncorroborated assertions are insufficient.
- JMOL is proper where, under the governing burden of proof and evidentiary requirements, no reasonable jury could find for the nonmovant.

## Conclusion

The Federal Circuit upheld liability and validity determinations for AcroMed and rejected Danek’s improper-inventorship defense because Danek failed to present corroborated, clear evidence that Janson made a significant conceptual contribution to the claimed inventions rather than merely executing Steffee’s conception.


AcroMed Corp. v. Sofamor Danek Grp., Inc., 253 F.3d 1371 (Fed. Cir. 2001)