No Patent-Like Claims Under State Law

Written by: Nefi R. Oliva and Justin J. Gillett

BearBox, LLC, Austin Storms, v. Lancium LLC, Michael T. McNamara, Raymond E. Cline, Jr.

Before Chen, Bryson, and Stoll. Appeal from United States District Court for the District of Delaware.

Summary: Federal patent laws preempted a state-law conversion claim. Inventorship was properly evaluated using a limitation-by-limitation approach.

BearBox sued Lancium claiming (1) conversion under Louisiana state law and (2) inventorship of the ’433 patent. On summary judgment, the district court ruled that the conversion claims were preempted by federal patent laws. After a bench trial, the district court ruled that BearBox had failed to establish inventorship of the ’433 patent by clear and convincing evidence. BearBox appealed. It contended that its state-law conversion claim was based on acts of converting documents and information, and not on patent infringement. Regarding inventorship, BearBox argued that the district court erred by analyzing individual claim elements rather than a combination of elements against BearBox’s corroborating documents.

The Federal Circuit reviewed the district court’s determination de novo and affirmed its decision. The Federal Circuit held that BearBox’s conversion claim contained “patent-like” language and sought “patent-like protection” for ideas that were not protected under federal law. The court emphasized that BearBox’s technology was not patented and was shared with various individuals. Regarding inventorship, it found no error with the district court’s limitation-by-limitation approach since BearBox needed to show that it contributed significantly to the invention of at least one claim.

Editor: Sean Murray