Ethicon, Inc. v. United States Surgical Corp.
Court of Appeals for the Federal Circuit
135 F.3d 1456 (1998)
During litigation over the '773 patent, Surgical (defendant) discovered that Choi had assisted named inventor Yoon in developing the claimed surgical instrument, obtained a retroactive license including an infringement-suit assignment from Choi, and successfully moved to add Choi as a co-inventor based on Choi's testimony and supporting drawings, over Yoon's testimony denying Choi's inventive contribution, which the court found unpersuasive; Surgical then used its license from Choi to move for dismissal of Ethicon's (plaintiff's) infringement suit.
Whether an unnamed inventor who contributed to only part of the claimed invention may be later named as an inventor and assign rights to all of the claims.