The panel explained that in order for Ellsworth to prevail, Ellsworth must:
(1) demonstrate a prior conception of each of the counts 1- 15', and (2) explain why the
inventorship in the Moore patent was incorrect. Id. 61 USPQ2d 1505. Upon reviewing the
evidence, the panel determined that Ellsworth had failed to sufficiently explain why the
inventorship listed on the Ellsworth/Moore patent was incorrect.
The parties were made aware of the Ellsworth decision (Paper 43 at 3). For Herman to
prevail on its motion, Herman must: (1) demonstrate that he alone conceived of the invention of
each of the 32 counts prior to 15 January 1999, and (2) provide an explanation as to why the
inventorship of the Barnes patent is incorrect. As further noted by the Ellsworth panel, "any time
an inventor - particularly in a contested case - has a change of heart about inventorship, the
inventor's credibility necessarily becomes an issue." Id. Accordingly, Herman's conception, and
explanation of inventorship, must be corroborated.
Counsel for Herman agreed that, in this case, Herman must demonstrate prior conception
of all 32 counts (Papers 20 and 86). hi its brief, Herman generally discusses the 32 counts and
does provide an explanation, or story, as to why the inventorship in the Bames patent is incorrect.
Nevertheless, for the reasons that follow, Herman is denied the relief requested.
Herman's credibili
Herman's account of events is as follows:
Herman worked for SAIC on a project that was overseen by NASA (ffs 16-18).
The panel later explained that Ellsworth need not demonstrate a prior conception of
every count, but may be entitled to a patent to those counts (claims) for which Ellsworth could
demonstrate sole conception. Here, however, Herman agreed that in this proceeding, it would
not be entitled to any relief unless it made a successful showing with respect to each and every
one of counts 1-32 (Papers 20 and 86). Bames' opposition is based on that agreement.
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