Robert Bosch LLC v. Trico Prods. Corp.

Summarized by:

  • Court: Intellectual Property Archives
  • Area(s) of Law: Patents, Joinder
  • Date Filed: 07-24-2013
  • Case #: 12 C 437
  • Judge(s)/Court Below: United States District Court for the Northern District of Illinois, Eastern Division
  • LexisNexis Citation: 2013 U.S. Dist. LEXIS 103311
  • Full Text Opinion

A party may be joined as a defendant in a challenge of inventorship action where it retains an interest in the subject patents.

Opinion (Grady): Bosch GmbH owns Robert Bosch LLC. Robert Bosch sued Trico Products Coporation ("Trico") alleging infringement of seven patents related to windshield wipers. Trico counterclaimed against both Robert Bosch and Bosch GmbH challenging the inventorship of two of those patents, claiming that it was the actual inventor. Bosch GmbH moved to dismiss, claiming it was not a proper party because it had assigned those patents to Robert Bosch. A party may be joined as a defendant in a challenge of inventorship suit where it has an economic interest in the patents in suit. However, while ownership is sufficient to permit joinder it is not a necessary condition. District courts have permitted the joinder of named inventors as defendants in such actions, even where the inventors have assigned the subject patent to a third party, because the named inventors continued to have a stake, albeit noneconomic, in the patents. Despite the reasoning in those cases, however, the District Court found that the instant case was distinguishable because, unlike named inventors, Bosch GbmH did not retain a noneconomic interest in the patents after they were assigned. Because it also lacked an economic interest in the patents, the court held that Bosch GbmH lacked an interest sufficient to permit joinder and the court DISMISSED Trico's counterclaims for failure to state a claim entitling it to relief.

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