## Facts

- Dr. Jaswant S. Pannu owned U.S. Reissue Patent No. 32,525 covering an improved intraocular lens (IOL) designed to reduce snagging of eye tissue during cataract surgery by using a circular loop at the end of supporting members.
- The patent disclosure described an optic with attached supporting members and listed various materials for each component.
- In 1980, Pannu met with Dr. William Link (a company president in the IOL industry) to discuss licensing; Pannu conceded they discussed the invention and that Link contributed the idea of a one-piece IOL construction.
- Iolab Corporation manufactured multiple IOL designs; after trial, a jury found two devices infringed and two did not.
- Iolab asserted the patent was invalid for incorrect inventorship because Link was an unnamed co-inventor.
- The district court granted Pannu JMOL on Iolab’s inventorship invalidity defense, entered infringement judgment (damages and injunctive relief) based on the jury’s verdict, and denied post-trial motions challenging claim construction and the verdict.

## Issues

1. Whether the district court erred by granting JMOL rejecting Iolab’s invalidity defense based on improper inventorship (failure to name an alleged co-inventor).
2. Whether the district court’s claim construction was erroneous and, if not, whether the jury’s infringement and non-infringement findings should be disturbed.

## Decision

- The Federal Circuit reversed the JMOL on improper inventorship.
- The court vacated the infringement judgment and remanded for further proceedings on inventorship and potential correction.
- The court affirmed the district court’s claim construction.
- The court left undisturbed the jury’s infringement and non-infringement findings and the denial of post-trial motions on those issues, subject to resolution of the inventorship question on remand.

## Legal Principles

- Issued patents carry a presumption that the named inventors are correct; improper inventorship must be proven by clear and convincing evidence.
- Joint inventorship requires a contribution to conception of the claimed invention; the contribution must be more than explaining the state of the art or mere reduction to practice and must be non-trivial in quality when measured against the full invention.
- Evidence that an unnamed individual contributed an idea central to the claimed invention can create a fact question on co-inventorship that should be resolved under the proper standard rather than removed via JMOL.
- Incorrect inventorship may render a patent invalid, but 35 U.S.C. § 256 provides a mechanism to add or delete inventors; when correction is available under § 256, a court should order correction rather than invalidate the patent.

## Conclusion

The Federal Circuit held that evidence of a potential co-inventor’s contribution created a triable inventorship dispute, making JMOL improper; it therefore vacated the infringement judgment and remanded for resolution of inventorship and possible correction under § 256, while affirming the claim construction and otherwise leaving the jury’s infringement findings intact.


Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998)