Case: 22-2170 Document: 92 Page: 1 Filed: 03/15/2024
`
`
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`TUBE-MAC INDUSTRIES, INC., GARY MACKAY,
`DAN HEWSON,
`Plaintiffs-Appellees
`
`v.
`
`STEVE CAMPBELL,
`Defendant-Appellant
`
`TRANZGAZ, INC.,
`Defendant
`______________________
`
`2022-2170
`______________________
`
`Appeal from the United States District Court for the
`Eastern District of Virginia in No. 2:20-cv-00197-RCY-
`LRL, Judge Roderick C. Young.
`______________________
`
`Decided: March 15, 2024
`______________________
`
`LYNN J. ALSTADT, Buchanan Ingersoll & Rooney PC,
`Pittsburgh, PA, for plaintiffs-appellees. Also represented
`by RALPH GEORGE FISCHER.
`
` STEVE CAMPBELL, St. John's, NL, Canada, pro se.
`______________________
`
`

`

`Case: 22-2170 Document: 92 Page: 2 Filed: 03/15/2024
`
`2
`
`TUBE-MAC INDUSTRIES, INC. v. CAMPBELL
`
`
`Before LOURIE, HUGHES, and STARK, Circuit Judges.
`PER CURIAM.
`
`Steve Campbell appeals from a decision and accompa-
`nying order of the United States District Court for the
`Eastern District of Virginia mandating the correction of in-
`ventorship of U.S. Patent 9,376,049 (the “’049 patent”), as
`well as several corresponding foreign patents, to add Gary
`Mackay and Dan Hewson as named inventors. Tube-Mac
`Indus., Inc. v. Campbell, 616 F. Supp. 3d 498 (E.D. Va.
`2022) (“Decision”). For the following reasons, we affirm.
`BACKGROUND
`Campbell was the original, sole inventor named on the
`’049 patent, which claims a container for transporting gas-
`eous fluids. Decision at 506–07. Independent claim 1 is
`presented below:
`1. A lightweight intermodal container or road
`trailer based system for transporting refrigerated
`gaseous fluids, comprising:
`an enclosed and insulated transportation housing;
`a plurality of low-temperature resistant pressure
`vessels at least three feet in diameter secured
`within said transportation housing for containing
`said gaseous fluids, each of said pressure vessels
`including a body portion and opposing domed end
`portions attached to said body portion, each of said
`domed end portions having a wall thickness that is
`greater than a wall thickness of said body portion
`and an opening; and
`at least one port boss affixed to each of said domed
`end portions, said at least one port boss including
`an inner component and an outer component, said
`inner component including an inner pipe and an in-
`ner plate transversely extending from said inner
`
`

`

`Case: 22-2170 Document: 92 Page: 3 Filed: 03/15/2024
`
`TUBE-MAC INDUSTRIES, INC. v. CAMPBELL
`
`3
`
`pipe, and said outer component including an outer
`pipe and an outer plate transversely extending
`from said outer pipe, wherein said inner pipe is in-
`serted through said opening in each of said domed
`end portions and through said outer pipe such that
`said inner component and said outer component
`are compressed together to cause said inner plate
`to engage an inner surface of a respective one of
`said domed end portions and said outer plate to en-
`gage an outer surface of said respective one of said
`domed end portions to affix said at least one port
`boss to each of said domed end portions.
`’049 patent, col. 12 l. 43–col. 13 l. 3 (emphases added).
`Campbell originally contracted with Composites Atlan-
`tic Ltd. (“Composites Atlantic”) to assist in fabrication of
`the claimed transportation vessels. Decision at 503. How-
`ever, the resulting prototypes suffered from numerous
`problems, including slippage of the port boss on the vessel’s
`liner. Id. The port boss is essentially a nozzle comprising
`a male inner component compressed against a female outer
`component, which together sandwich the liner of the vessel
`that contains the gas to be transported. See ’049 patent,
`col. 5 ll. 5–49; see also id. at FIG. 8 (female plate 40 com-
`pressed with male plate 36, sandwiching liner 44).
`Campbell then approached Gary Mackay to help fix the
`port boss/liner slippage problem. See Decision at 504; see
`also A.A.1 252. Dan Hewson, the Vice President of Projects
`at Mackay’s company Tube-Mac Industries Ltd., subse-
`quently provided preliminary design drawings to Camp-
`bell. Decision at 504. Over the next several months,
`Campbell, Mackay, and Hewson continued to exchange
`draft designs and components engineered to improve the
`port boss design. Id. at 504–06.
`
`
`1 A.A. refers to the appendix filed by Appellees.
`
`

`

`Case: 22-2170 Document: 92 Page: 4 Filed: 03/15/2024
`
`4
`
`TUBE-MAC INDUSTRIES, INC. v. CAMPBELL
`
`After issuance of the ’049 patent, Mackay and Hewson
`brought an action contending that they should have been
`listed as co-inventors, as their contributions to the design
`process were described and claimed in the patent. Decision
`at 502. The district court agreed and subsequently ordered
`the U.S. Patent and Trademark Office to issue a certificate
`of correction adding Mackay and Hewson as named inven-
`tors on the ’049 patent. A.A. 1−2. Campbell appealed.
`We have jurisdiction under 28 U.S.C. § 1295(a).
`DISCUSSION
`We review inventorship disputes de novo and the un-
`derlying findings of fact for clear error. Blue Gentian, LLC
`v. Tristar Prods., Inc., 70 F.4th 1351, 1358 (Fed. Cir. 2023).
`Under the clear error standard, factual findings “will not
`be overturned in the absence of a definite and firm convic-
`tion that a mistake has been made.” Impax Lab’ys, Inc. v.
`Aventis Pharms. Inc., 468 F.3d 1366, 1375 (Fed. Cir. 2006)
`(internal quotation marks and citation omitted).
`Under 35 U.S.C. § 256, a district court may order the
`correction of inventorship of a patent once it determines
`that a co-inventor has been erroneously omitted. Evaluat-
`ing an inventorship claim under § 256 begins with “a con-
`struction of each asserted claim to determine the subject
`matter encompassed thereby.” Trovan, Ltd. v. Sokymat
`SA, 299 F.3d 1292, 1302 (Fed. Cir. 2002). The alleged con-
`tributions of each asserted co-inventor are then compared
`with “the subject matter of the properly construed claim to
`then determine whether the correct inventors were
`named.” Id. “The named inventors are presumed correct,
`and the party seeking correction of inventorship must show
`by clear and convincing evidence that a joint inventor
`should have been listed.” Blue Gentian, 70 F.4th at 1357
`(citing Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352,
`1358 (Fed. Cir. 2004)).
`To be a joint inventor, one must:
`
`

`

`Case: 22-2170 Document: 92 Page: 5 Filed: 03/15/2024
`
`TUBE-MAC INDUSTRIES, INC. v. CAMPBELL
`
`5
`
`(1) contribute in some significant manner to the
`conception or reduction to practice of the invention,
`(2) make a contribution to the claimed invention
`that is not insignificant in quality, when that con-
`tribution is measured against the dimension of the
`full invention, and (3) do more than merely explain
`to the real inventors well-known concepts and/or
`the current state of the art.
`Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).
`Although the district court here wrote generally of Mackay
`and Hewson’s “[c]ontribution to [c]onception or [r]eduction
`to [p]ractice,” Decision at 510 (alterations to punctuation
`added), it focused its analysis on the alleged joint inventors’
`contributions to conception; we will do the same.
`The contribution of a joint inventor must be significant.
`See Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473
`(Fed. Cir. 1997) (“[A] joint inventor must contribute in
`some significant manner to the conception of the inven-
`tion.”). We review a district court’s finding as to the signif-
`icance of a purported joint inventor’s contribution for clear
`error. See Plastipak Packaging, Inc. v. Premium Waters,
`Inc., 55 F.4th 1332, 1343 (Fed. Cir. 2022) (“[O]ften the as-
`sessment of what contribution has been made by a pur-
`ported
`inventor, and whether that contribution
`is
`significant, is bound up with material fact disputes which
`a reasonable factfinder could resolve in favor of either
`party.”).
`Campbell first argues that the district court erred in
`determining the scope of the subject matter of the claims.
`But Campbell misunderstands the first step of the inven-
`torship analysis as well as the analysis conducted by the
`court. The court correctly began with “an independent
`claim construction analysis, which is the first step in deter-
`mining inventorship.” Trovan, 229 F.3d at 1304. As ex-
`plained by the court, neither party requested claim
`
`

`

`Case: 22-2170 Document: 92 Page: 6 Filed: 03/15/2024
`
`6
`
`TUBE-MAC INDUSTRIES, INC. v. CAMPBELL
`
`construction, Decision at 510; thus the court moved on to
`identify the contributions of the alleged co-inventors.
`Campbell further asserts that the district court erred
`by misidentifying the subject matter of the claims as “the
`port boss.” Appellant’s Br. at 4. We disagree, though we
`understand the source of the confusion. After the court
`concluded that claim construction was not necessary for
`the inventorship dispute, it proceeded, in the same “Step
`One” section of the decision, to identify the subject matter
`“at issue” in the dispute. See Decision at 510. In particu-
`lar, the court concluded that, in view of allegations made
`by Mackay and Hewson, the port boss claimed in independ-
`ent claim 1 and the “compression and crimping” thereof in
`dependent claim 5 provided the subject matter “at issue.”
`Id. at 510. Such a conclusion is better suited to be included
`in the second step of the inventorship analysis. However,
`the drafting choice to include it in a section addressing the
`first step of the inventorship analysis was not harmful, nor
`was the actual conclusion reached clear error. Indeed, the
`alleged contributions of Mackay and Hewson were made
`solely to the port boss and thus the subject matter upon
`which the inventorship dispute hinges primarily concerns
`only the port boss.
`Turning to the second step of the inventorship analysis,
`Campbell argues that the district court clearly erred in de-
`termining the significance of Mackay’s and Hewson’s con-
`tributions to the claimed invention. We disagree.
`The district court provided a thorough history of Mac-
`kay’s and Hewson’s contributions to the claimed port boss.
`In particular, the court summarized how Campbell ap-
`proached Mackay to help with the port boss/liner slippage
`problem encountered with the earlier Composites Atlantic
`design. Decision at 504; see also A.A. 252. Mackay and
`Hewson subsequently proposed multiple changes to the
`structures of both the male and female components of the
`port boss. For example, in the original design provided by
`
`

`

`Case: 22-2170 Document: 92 Page: 7 Filed: 03/15/2024
`
`TUBE-MAC INDUSTRIES, INC. v. CAMPBELL
`
`7
`
`Composites Atlantic, the baseplates and pipe portions of
`the port boss were smooth and were pressed together via a
`threaded connection. Decision at 504–05; see also A.A.
`952−53 (photographs of the Composites Atlantic port boss).
`Mackay and Hewson updated the male baseplate to allow
`for the inclusion of an O-ring, as well as a modified t-
`groove, and further added angular grooves to the baseplate
`to create a better seal between the port boss components
`and the liner. Decision at 504−05; see also A.A. 247. They
`further added a starburst pattern of grooves to the female
`baseplate to create torsional rigidity and to resist twisting.
`Decision at 505. Still further, they modified the female
`pipe component to include thinner sections of metal, allow-
`ing for those sections to be crimped onto the male pipe. Id.
`at 504−05; see also A.A. 641.
`The district court subsequently correctly identified how
`Mackay’s and Hewson’s updates to the port boss are de-
`picted in the figures, specification, and claims of the ’049
`patent. Decision at 512–13; see also, e.g., ’049 patent, col.
`6 ll. 17−32, FIG. 8 (describing O-rings); id. col. 6 ll. 33−43,
`FIGS. 7 & 8 (describing ringed grooves in the male
`baseplate); id. col. 6 l. 65−col. 7 l. 3, FIG. 6A (describing
`starburst grooves in the female baseplate); id. col 6 ll. 5−9,
`FIGS. 6−8 (describing crimp-fitting the female pipe to the
`male pipe). The court also took note of dependent claim 5,
`which recites that the “port bosses are affixed to the apex
`of a dome segment of said liner parts by compression and
`crimping.” Id. col. 13 1l. 20–22 (emphasis added).
`The district court then evaluated whether or not Mac-
`kay and Hewson contributed significantly to the conception
`of at least one claim and found that they did by providing
`those updates to the port boss that, although mostly un-
`claimed, nevertheless contributed to the conception of the
`invention. Decision at 510−14. Campbell disputes that
`conclusion.
`
`

`

`Case: 22-2170 Document: 92 Page: 8 Filed: 03/15/2024
`
`8
`
`TUBE-MAC INDUSTRIES, INC. v. CAMPBELL
`
`The district court found that before Mackay and Hew-
`son’s contribution, Campbell had a “major problem,” specif-
`ically the problem “of slippage” between the port boss and
`the vessel’s liner material. Decision at 512 n.3. That slip-
`page problem was explicitly mentioned in a report pre-
`pared by Composites Atlantic, which led Campbell to
`contact Mackay to help with port boss design. Id. at 503–
`04; see also A.A. 628−29, 633 (report describing “dome/boss
`slippage” and the “issue of liner / boss misalignment” being
`“of major concern” and “a likely road block to certification”).
`Accordingly, the court found that, prior to Mackay’s and
`Hewson’s involvement, Campbell did not have an idea that
`required only ordinary skill to reduce the invention to prac-
`tice, without extensive research or experimentation. Deci-
`sion at 512–13. The court reasoned that Mackay’s and
`Hewson’s subsequent contributions, including, e.g., the
`starburst groove patterns on the female baseplate, solved
`the slippage problem that precluded previous prototypes
`from being successful and that they thus contributed sig-
`nificantly to the conception of the invention. Id. According
`to the court, “[w]ithout solving the slippage issue, the in-
`vention would not be viable.” Id. at 513.
`The record before us, including the Composites Atlan-
`tic report describing the problems with slippage of the port
`boss, the documented suggestions and contributions made
`by Mackay and Hewson, and the disclosures made in the
`’049 patent, does not leave us with a definite and firm con-
`viction that a mistake has been made in concluding that
`Mackay and Hewson contributed significantly to the con-
`ception of the claimed invention. See Impax Lab’ys, 468
`F.3d at 1375. We therefore affirm the district court’s judg-
`ment that Mackay and Hewson should be listed as co-in-
`ventors on the ’049 patent.
`MOTION TO COMPEL
`Separately, Campbell moves at ECF No. 87 to compel
`Appellees
`to produce various documentation and
`
`

`

`Case: 22-2170 Document: 92 Page: 9 Filed: 03/15/2024
`
`TUBE-MAC INDUSTRIES, INC. v. CAMPBELL
`
`9
`
`information. As Campbell notes, we have already twice re-
`jected a substantially similar motion to compel. ECF No.
`87 at 1. Nevertheless, Campbell requests that we “recon-
`sider and issue an order compelling the Appellees to dis-
`close [a] rejected patent filing documentation such that
`said rejected application is included in [our] equitable as-
`sessment of this appeal.” Id. Appellees oppose the motion.
`ECF No. 88.
`Campbell’s motion appears predicated on arguments
`that the Appellees’ conduct “exhibited unclean hands and
`deceptive intent since May 2007.” See, e.g., ECF No. 87 at
`3. He further raises arguments relating to the “evolution-
`ary history of [the claimed port] Boss.” Id. at 4. Those ar-
`guments belong in the merits briefing, and Campbell has
`not shown that additional or supplemental briefing is war-
`ranted beyond what the court’s rules provide. As to Camp-
`bell’s request for the production of various patent
`documents, the court ordinarily decides matters based on
`the record before the district court, see Fed. R. App. P.
`10(a), and we see no basis to depart from that usual prac-
`tice here. We therefore deny the motion.
`CONCLUSION
`We have considered Campbell’s remaining arguments
`but find them unpersuasive. For the foregoing reasons, we
`affirm the district court’s decision and order finding that
`Mackay and Hewson are co-inventors on the ’049 patent.
`AFFIRMED
`
`