Assistance in Constructive Reduction to Practice (Writing Patent Application) Alone Does Not Support A Declaratory Judgment Action For Inventorship

The Fed Cir vacated a preliminary injunction and remanded with instructions to dismiss the case based on lack of subject matter jurisdiction.

StoneEagle Services, Inc. v. Gillman et al., __ F.3d __ (Fed Cir. Mar. 26, 2014) (RADER, Moore, Reyna) (N.D. Tex.: Solis) (3 of 5 stars)

As a preliminary matter, the Fed Cir had jurisdiction (under 5th Cir law) because the preliminary injunction modified a prior preliminary injunction, and did not merely "clarify[]" it, as the district court had suggested. But the district court had no jurisdiction because inventorship was the only possible claim in the complaint, and Gillman merely claimed to have written the patent application, but mere constructive reduction to practice creates inventorship no more than mere actual reduction to practice. Perhaps Gillman had a state court ownership claim, but there were no facts to establish federal question jurisdiction.