Beriont v. Gte Laboratories , 601 F. App'x 937 ( 2015 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
WALTER J. BERIONT,
Plaintiff-Appellant
v.
GTE LABORATORIES, INC., GTE SERVICE
CORPORATION, GTE COMMUNICATIONS
CORPORATION, ALFRED H. BELLOWS,
Defendants-Appellees
______________________
2014-1424
______________________
Appeal from the United States District Court for the
District of Massachusetts in No. 1:00-cv-11145-RGS,
Judge Richard G. Stearns.
______________________
Decided: February 4, 2015
______________________
WALTER J. BERIONT, Maynard, MA, pro se.
MICHAEL E. JOFFRE, Kellogg, Huber, Hansen, Todd,
Evans & Figel, PLLC, Washington, DC, for defendants-
appellees. Also represented by IGOR HELMAN, MELANIE L.
BOSTWICK.
______________________
Before LOURIE, O’MALLEY, and REYNA, Circuit Judges.
2 BERIONT v. GTE LABORATORIES
PER CURIAM.
Walter J. Beriont (“Beriont”) appeals from the deci-
sion of the United States District Court for the District of
Massachusetts granting summary judgment that GTE
Laboratories, Inc., GTE Service Corporation, and GTE
Communications Corporation (collectively, “GTE”) have at
all times been a joint owner of U.S. Patent 5,920,802 (the
“’802 patent”). See Beriont v. GTE Labs., Inc.,
No. 00-11145-RGS, 2014 WL 585651 (D. Mass. Feb. 14,
2014). Because Beriont failed to prove misjoinder of the
’802 patent by clear and convincing evidence, we affirm.
BACKGROUND
Beriont began working at GTE as an engineer in
1983. In 1996, Beriont conceived an invention relating to
improved low frequency power distribution within a cable
television network. Beriont disclosed this invention to
Alfred Bellows (“Bellows”), a co-worker at GTE, who
“constructed, evaluated, and tested” the invention. J.A.
71. Beriont and Bellows together disclosed the invention
to GTE in August 1996.
That same year, Beriont filed an unrelated defama-
tion action in Massachusetts state court against a co-
worker and GTE. GTE later terminated Beriont’s em-
ployment, and Beriont added a wrongful termination
claim to that action.
In June 1998, Beriont and Bellows jointly filed a pa-
tent application through GTE’s patent counsel. Beriont
and Bellows both signed a Declaration and Power of
Attorney for Patent Application that was submitted to the
U.S. Patent and Trademark Office by GTE. J.A. 131.
Beriont declared that he was the “Second Joint Inventor”
of the invention described in the application and that he
appointed GTE attorneys to prosecute the application on
his behalf. Id. Beriont refused to execute a formal as-
signment agreement. That application issued as the ’802
BERIONT v. GTE LABORATORIES 3
patent, and is assigned on its face to GTE and lists Be-
riont and Bellows as co-inventors. See ’802 patent, [73],
[75]. In November of 1998, while the ’802 application was
pending, GTE filed a declaratory judgment action in
Massachusetts state court seeking a declaration that GTE
was the lawful owner of the patent, as well as specific
performance ordering Beriont to assign any remaining
interest in the patent to GTE.
Then in 2000, while the state court litigation was
pending, Beriont filed the instant federal action in the
District Court for the District of Massachusetts, seeking:
(1) a declaratory judgment that he was the sole inventor
of the ’802 patent; (2) the removal of Bellows as a co-
inventor and GTE as assignee; (3) a judgment that GTE
breached a fiduciary duty owed to Beriont; and (4) a
judgment of patent infringement against GTE. Beriont v.
GTE Labs., Inc., No. 1:00-cv-11145-RGS, 2012 WL
2449907, at *1 (D. Mass. June 27, 2012). The district
court stayed the case pending the resolution of the state
court suits. Id. at *2.
The two Massachusetts state court actions were con-
solidated, and Beriont and GTE reached a settlement
agreement on June 13, 2005. The settlement required
that: (1) GTE would pay Beriont $50,000; (2) GTE and
Beriont would “agree that they shall be joint owners of
the patent” in dispute; (3) the parties would “give each
other mutual releases”; and (4) GTE would provide Be-
riont with a signed statement that his loss of employment
did not call into question his “integrity, competence, or
industry.” J.A. 135–37. Based on the settlement, the
trial court entered a dismissal nisi in both actions, but
when the parties failed to submit a formal settlement
agreement, the state court judge dismissed both actions
for failure to comply with the nisi order. J.A. 165.
In 2011, after resolution of the state court suits, the
district court lifted the stay, and GTE moved for summary
4 BERIONT v. GTE LABORATORIES
judgment on Beriont’s claims. Beriont, 2012 WL 2449907,
at *2. The court concluded that the ’802 patent was
jointly owned by GTE (and its successor in interest,
Verizon Laboratories) and Beriont; that the parties would
comply with the agreed-upon terms of the settlement; and
that the joint ownership of the ’802 patent absolved both
parties of liability for any infringement after the date of
the settlement. Id. at *3. The court also concluded that
prior to the settlement date of June 13, 2005, GTE had at
least “shop-rights” to use the ’802 patent and was there-
fore not liable for any infringement thereof. Id.
Beriont appealed to this court, and we affirmed the
district court’s determination that GTE was not liable for
infringement after June 13, 2005. Beriont v. GTE Labs.,
Inc., 535 F. App’x 919, 927 (Fed. Cir. 2013). We vacated
the judgment of noninfringement for the period preceding
June 13, 2005, and remanded the case to the district court
to address the “shop rights” doctrine and GTE’s pre-2005
activities that fell outside the scope of “shop rights.” Id.
We also vacated the court’s ruling with regard to Beriont’s
claim of inventorship because we concluded that the
district court failed to make explicit findings with respect
to the inventorship claim. Id.
On remand, the district court granted summary
judgment in favor of GTE, concluding that Beriont could
not prevail on his claim of sole inventorship because “[a]ll
evidence, even Beriont’s own testimony, establishes the
contrary.” Beriont, 2014 WL 585651, at *3. The court
thus held that there was no infringement by GTE prior to
June 13, 2015 because its employee Bellows was a right-
ful co-inventor of the patent and it was undisputed that
he had assigned his own interest to GTE before the ’802
patent issued. Id. at *4–5.
Beriont again appealed to this court. We have juris-
diction pursuant to 28 U.S.C. § 1295(a)(1).
BERIONT v. GTE LABORATORIES 5
DISCUSSION
We apply regional circuit law, here the law of the
First Circuit, when reviewing a district court’s grant of a
motion for summary judgment. Teva Pharm. Indus. Ltd.
v. AstraZeneca Pharm. LP, 661 F.3d 1378, 1381 (Fed. Cir.
2001). The First Circuit “afford[s] de novo review to the
district court’s grant of summary judgment.” Johnson v.
Gordon, 409 F.3d 12, 16 (1st Cir. 2005). Summary judg-
ment is appropriate when, drawing all justifiable infer-
ences in the nonmovant’s favor, “there is no genuine
dispute as to any material fact and the movant is entitled
to judgment as a matter of law.” Fed. R. Civ. P. 56(a);
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).
Inventorship is a question of law, which we review
without deference. Ethicon, Inc. v. U.S. Surgical Corp.,
135 F.3d 1456, 1460 (Fed. Cir. 1998). We review the
district court’s underlying findings of fact for clear error.
Id. Because the issuance of a patent creates a presump-
tion that the named inventors are the true and only
inventors, id., the burden of showing misjoinder or non-
joinder of inventors is a heavy one and must be proved by
clear and convincing evidence, Hess v. Advanced Cardio-
vascular Sys., Inc., 106 F.3d 976, 980 (Fed. Cir. 1997)
(citing Garrett Corp. v. United States, 422 F.2d 874, 880
(Ct. Cl. 1970)). The moving party “must also show that
the persons to be removed did not contribute to the inven-
tion of any of the allowed claims.” Univ. of Pittsburgh v.
Hedrick, 573 F.3d 1290, 1297 (Fed. Cir. 2009).
Beriont argues that the district court erred in grant-
ing summary judgment because witness credibility was
central to the court’s determination and summary judg-
ment is not the appropriate avenue for weighing credibil-
ity. Beriont also argues that Bellows could not have been
an inventor because he did not have the knowledge or
understanding to contribute to the conception of the
invention of the ’802 patent. GTE responds that the court
6 BERIONT v. GTE LABORATORIES
properly granted summary judgment because Beriont
offered no credible evidence that he is the sole inventor of
the ’802 patent. Specifically, GTE argues that the only
evidence offered by Beriont is the testimony of Beriont
himself, and this alone is insufficient as a matter of law.
According to GTE, all other evidence confirms Bellows’s
status as a legitimate joint inventor.
We agree with GTE that the district court properly
granted summary judgment because Beriont failed to
prove misjoinder by clear and convincing evidence. The
’802 patent lists both Bellows and Beriont as inventors,
and the inventors named on an issued patent are pre-
sumed to be correct. Ethicon, 135 F.3d at 1460. Beriont
was thus required to prove misjoinder by clear and con-
vincing evidence, and he failed to present evidence suffi-
cient to raise a material issue of fact.
The only evidence that Beriont has offered to support
his sole inventorship claim is his personal testimony that
he disclosed the invention to Bellows and that Bellows
constructed and tested the disclosed invention. However,
Beriont’s own testimony is insufficient, as we have gener-
ally required that an inventor’s testimony regarding
conception of an invention be corroborated. Univ. of
Pittsburgh, 573 F.3d at 1298. We have no way in this
case to corroborate Beriont’s account of the events that led
to the ’802 patent, and, as a result, it is not possible to
make “a sound determination of the credibility of the
inventor’s story.” Price v. Symsek, 988 F.2d 1187, 1195
(Fed. Cir. 1993). The court thus did not err in concluding
that Beriont failed to raise a material issue of fact. We
have considered Beriont’s remaining arguments and
conclude that they are without merit.
CONCLUSION
Because it is undisputed that Bellows properly as-
signed his rights in the ’802 patent to GTE in 1998, GTE
has been a co-owner of the patent since that time and
BERIONT v. GTE LABORATORIES 7
cannot be liable for infringement. See 35 U.S.C. § 262(“[E]ach of the joint owners of a patent may make, use,
offer to sell, or sell the patented invention within the
United States, or import the patented invention into the
United States, without the consent of and without ac-
counting to the other owners.”) The district court’s grant
of summary judgment to GTE is therefore affirmed.
AFFIRMED