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Explore the latest in patent, trademark, and copyright cases on the Merchant & Gould LLP blog. Stay informed with expert insights on intellectual property law updates.

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Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://www.cafc.uscourts.gov/opinions-orders/24-2313.OPINION.4-2-2026_2670424.pdf"><em>Fortress Iron, LP v. Digger Specialties, Inc.</em>, No. 2024-2313 (April 2, 2026)</a>, affirming the district court’s grant of summary judgment that held two patents invalid for omission of a coinventor and denying the patentee’s motion to correct inventorship under 35 U.S.C. § 256(b).

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Fortress Iron sued Digger Specialties for infringement of U.S. Patents 9,790,707 and 10,883,290, which covered a vertical cable railing panel invention. During the lawsuit, it was discovered that two individuals, Hua-Ping Huang and Alfonso Lin, had contributed to the invention but were not named as inventors. Fortress successfully added Lin as a coinventor under § 256(a), but was unable to locate Huang because he had left his employer without providing contact information. Fortress then moved for partial summary judgment to add Huang under § 256(b), while DSI moved for summary judgment of invalidity due to incorrect inventorship. The district court denied Fortress’ motion and granted DSI’s, holding the patents invalid.

The Federal Circuit affirmed. On the § 256(b) issue, which the Court identified as a case of first impression, the Court applied <em>Chou v. University of Chicago</em>, 254 F.3d 1347 (Fed. Cir. 2001), to find that Huang, as an omitted coinventor, was a “party concerned” under § 256(b) and therefore entitled to notice and an opportunity to be heard before the Court could order any correction. The Court rejected Fortress’ arguments that “party concerned” should be limited to those with constitutional standing and economic interests that may be adversely affected, holding that such a reading would improperly rewrite the statute. Because Fortress could not provide Huang with the required notice, it could not utilize § 256(b) to correct the patents.

On invalidity, the Court held that a patent that incorrectly lists its inventors and cannot be corrected under § 256 is invalid. Relying on 35 U.S.C. § 100(f)’s definition of “inventor,” the Court rejected Fortress’ argument that only “one true inventor” must be named, reasoning that adopting such a position would render the § 256(b) savings provision meaningless. The Court further held that the repeal of former § 102(f) did not eliminate invalidity for incorrect inventorship because long-standing precedent and relevant legislative history revealed § 102(f) simply established that non-inventors are not entitled to a patent, not that actual inventors can be omitted on a patent.

Federal Circuit Affirms Summary Judgment of Patent Invalidity for Omitted Inventor

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