The case of the omitted inventor

What happens when an inventor who made a very small contribution to an invention is left off a patent? Can a company charged with infringement obtain a license from the omitted inventor and so scot free? That was the question before the court in the recent case of Ethicon v. U.S. Surgical. The answer the court gave was yes. The case involved surgical instruments, known as trocars, used to perform minimally invasive abdominal surgery. Ethicon obtained an exclusive license to a patent of Dr. InBae Yoon to an improved trocar (a “safety trocar”) that was less likely to damage internal organs during the initial puncturing of the abdominal wall. Ethicon sold more than $300 million worth of instruments covered by the patent and paid Yoon more than $15 million in royalties. In 1989, Ethicon sued Surgical for infringement of two of the 55 claims of Yoon's patent. As is standard, Surgical took Yoon's deposition and asked about the origin of the invention. In that process, the name of Mr. Choi came up, but Yoon denied that he was an inventor of any of the claims of the patent. Surgical contacted Choi and was told a different story; namely, that Choi was an inventor of at least some parts of the patent. Based on this representation, Surgical took a license from Choi retroactive to the date of issuance of the patent. Surgical paid Choi $300000 for the license and promised to pay an additional $1 million if Surgical prevailed over Ethicon in the lawsuit