## Facts

- Darren Bach, owner of Pacific Coast Marine Windshields Ltd. (Pacific), obtained U.S. Design Patent No. D555,070 (the ’070 design patent), naming Bach as the sole inventor.
- The ’070 design patent claimed an ornamental design for a marine windshield incorporating features including a tapered corner post, a hidden top rail, and four vent holes.
- Pacific previously supplied windshields to Malibu Boats, LLC (Malibu). Bach maintained design-development materials, including sketches dated between February and September 2005 and computer-aided design (CAD) drawings dated September 2005.
- Bach testified that he showed his windshield design concepts to Dan Gasper, Malibu’s research-and-development manager, and that Gasper reacted favorably, indicating Malibu would use the concepts as a basis for a new windshield and would decide whether vent holes would remain.
- Gasper testified differently, claiming he conceived the idea for the corner posts after seeing similar corner-post styling on a concept car windshield at a November 2004 auto show.
- To support his account, Gasper produced documents including: (1) a picture of the concept car, (2) an email to Bach attaching CAD drawings of a windshield design substantially similar to the design shown in the ’070 patent, and (3) a January 2006 email from Bach to Gasper stating that both of them would “probably have to appear as inventors.”
- By August 2007, Pacific’s relationship with Malibu had deteriorated, and Malibu began using a different windshield supplier.
- In 2010, Pacific sued Malibu for infringement of the ’070 design patent. Malibu responded with an invalidity defense asserting improper inventorship, contending Gasper should have been named a co-inventor.
- The parties filed cross-motions for summary judgment on, among other matters, whether the ’070 design patent was invalid due to omission of Gasper as a joint inventor under pre-AIA 35 U.S.C. §§ 102(f) and 116(a).

## Issues

1. Whether Malibu was entitled to summary judgment that the ’070 design patent was invalid for improper inventorship under pre-AIA 35 U.S.C. §§ 102(f) and 116(a) because Gasper allegedly should have been named a co-inventor.
2. Whether Pacific was entitled to summary judgment rejecting Malibu’s improper-inventorship defense (i.e., a ruling that Bach was the sole inventor as a matter of law).

## Decision

- The court denied Malibu’s motion for summary judgment seeking invalidity based on improper inventorship.
- The court denied Pacific’s cross-motion for summary judgment seeking to defeat the improper-inventorship defense as a matter of law.
- The court found genuine disputes of material fact regarding who contributed to the conception of the ornamental design claimed in the ’070 design patent, making summary judgment inappropriate.

## Legal Principles

- Inventorship turns on conception; determining inventorship is a question of law that depends on underlying factual findings.
- Joint inventorship under pre-AIA 35 U.S.C. § 116(a) requires that a putative co-inventor contributed to the conception of the claimed invention in a manner that is not insignificant in quality when measured against the invention as a whole.
- In design patents, conception concerns the formation in the inventor’s mind of the complete and final ornamental appearance of the claimed design.
- Improper inventorship may be asserted as an invalidity defense under pre-AIA 35 U.S.C. § 102(f) when the named inventor(s) do not reflect the true inventor(s).
- Summary judgment is not appropriate where the record contains conflicting testimony and documents from which a reasonable factfinder could reach different conclusions about conception and contribution.

## Conclusion

Because the record contained competing evidence about whether Bach alone conceived the claimed windshield design or whether Gasper made a qualifying contribution (including evidence such as the concept-car photo, CAD materials, and the January 2006 “probably have to appear as inventors” email), the court held that inventorship could not be resolved on summary judgment and left the improper-inventorship invalidity defense for resolution at trial.


Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 2014 WL 4185297 (2014)