Fortress Iron, LP v. Digger Specialties, Inc.

Whether an agreed, omitted, co-inventor whose patent rights have been entirely assigned to the patent owner but who could not be found to receive notice is a “party concerned” entitled to notice and hearing under 35 U.S.C. § 256(b) preventing their contribution from being recognized even when all parties agree the omitted inventor is a true co-inventor who should be recognized, the omitted inventor’s rights are owned by the patent owner, and the omitted inventor can only be benefited, not harmed, by being recognized.

Whether a patent that correctly names at least some true inventors can be held invalid for the omission of one co-inventor after Congress repealed 35 U.S.C. § 102(f) in the America Invents Act, where the Federal Circuit’s invalidity holding relies on the very statutory framework that Congress eliminated and is contrary to the statutory trend of making correction of inventorship easier and invalidity for incorrect inventorship harder to achieve.

Whether the Federal Circuit’s interpretation of 35 U.S.C. § 256(b) and 35 U.S.C. § 101 and its holding that inventorship errors render patents permanently invalid when a co-inventor cannot be located undermines the harmonization of United States patent law with international patent standards that Congress intended to advance through the America Invents Act, by making inventorship errors more consequential to patent validity in the United States than under the patent laws of other major jurisdictions.