Full opinion text
MEMORANDUM AND ORDER SARIS, District Judge. INTRODUCTION Plaintiffs PerSeptive Biosystems, Inc. and Purdue Research Foundation (collectively “PerSeptive”) have filed motions (1) to vacate the March 31, 1997 order on correction of patents; (2) to enter a judgment pursuant to Fed.R.Civ.P. 54(b); and (3) to withdraw the motion to correct inventorship. This flurry of motions was precipitated by a new standard articulated in a recent decision, Stark v. Advanced Magnetics, Inc., 119 F.3d 1551, 43 U.S.P.Q.2d 1321 (Fed.Cir. July 11, 1997) (“Stark ”), which fundamentally alters the legal landscape of proceedings pursuant to 35 U.S.C. § 256. After hearing, this Court must re-examine its March 31, 1997 decision under the new standard. PROCEDURAL BACKGROUND As background, on January 9, 1996 this Court allowed defendants’ motion for partial summary judgment. Based on the undisputed facts in the record, the Court concluded as a matter of law that, pursuant to 35 U.S.C. § 116, Frank Warner and/or Linda Lloyd were joint inventors of three patents concerning “perfusive chromatography”. See Memorandum and Order, Jan. 9, 1996 (“Per-Septive I”) (Attachment A to this opinion.) The Court directed PerSeptive to move to correct inventorship of the patents pursuant to 35 U.S.C. § 256 or the patents would be held invalid. Although objecting to that ruling and requesting the right to seek an interlocutory appeal on the inventorship issue, plaintiff moved to correct the inventorship. The Court held ten days of hearings on that motion. On March 31, 1997, the Court ruled that PerSeptive had not met its burden of proving by a preponderance of the evidence that the nonjoinder was made without deceptive intent on the part of the named inventors: See Memorandum and Order, Mar. 31, 1997, at 131 (“PerSeptive II ”) (Attachment B to this opinion.) Because the Federal Circuit had not decided the proper burden of proof for the element of deceptive intent in a correction motion pursuant to § 256, that issue was starkly contested by the parties. Defendants urged the Court to put on the plaintiffs, i.e. the named inventors, the burden of proving the absence of deceptive intent on the part of the named inventors by clear and convincing evidence. The named inventors argued that the defendants were required to prove their intent by clear and convincing evidence, or, as a fallback, that if the named inventors bore the burden, they were required to prove the absence of deceptive intent only by a preponderance of the evidence. I adopted the fallback position of the plaintiffs. Id. at 123-25. DISCUSSION 1. Stark Stark holds, contrary to what the parties and the Court had assumed, that the proper focus of a Section 256 hearing is not on the intent of the named inventors. Instead, correction of inventorship under Section 256 “only requires an inquiry into the intent of the nonjoined inventor.” Stark, 119 F.3d at 1552 emphasis added. Section 256 “allows complete substitution of inventors as long as the true inventors are without deceptive intent.” Id. at 1556. To the extent, the defendants allege deceptive conduct on the part of the named inventors, the Court is called upon to examine that claim under the “inequitable conduct” doctrine. Id. at 1555-1556. Under this doctrine, defendants bear the burden of proving deceptive intent by the named inventors by clear and convincing evidence. See Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1556-57 (Fed.Cir.1995) (“The factual premises of materiality and intent must be proved by clear and convincing evidence.”). As Stark points out, a patent may be held unenforceable under the inequitable conduct doctrine where any co-inventors have been omitted with evidence of deceptive intent on the part of the named inventors. See 119 F.3d at 1555-56 (citing Burroughs Wellcome Co. v. Barr Lab., Inc., 40 F.3d 1223, 1226 (Fed.Cir.1994)); see also 35 U.S.C. § 115 (requiring that an applicant for a parent “shall make oath that he believes himself to be the original and first inventor”). With respect to Warner and Lloyd, the nonjoined and unnamed true co-inventors, exhaustive discovery has unearthed no hint of deceptive intent. The named inventors proffer none. Still, the straightforward, straightjacket task mandated in Stark — the inquiry into the intent of the nonjoined inventor(s) — is complicated by the fact that both Warner and Lloyd are probably es-topped from asserting an inventorship interest, as they have received notice of these proceedings, but declined to intervene. See PerSeptive II at 88. Accordingly, I decline to order the patents to be corrected and instead simply hold, as suggested by PerSeptive, that they are correctable — subject to the claim of estoppel — because there is no evidence of deceptive intent on the part of the nonjoined inventors. 2. Inequitable Conduct In light of Stark, the Court must reexamine the legal effect of its factual findings in PerSeptive II that defendants have proven by clear and convincing evidence that the named inventors made a series of misrepresentations to the United States Patent and Trademark Office (“PTO”). First, in the 117-page opinion, I concluded that the named inventors intentionally misrepresented their role in developing the perfusive particle and intentionally underplayed the role of Polymer Laboratories. Second, I concluded that defendants had demonstrated that the named inventors made four affirmative misrepresentations to the Parent Examiner regarding the timing of the invention. I fully re-adopt all factual findings in PerSep-tive II. See id. at 88-122 & 125-131. Even before Stark was decided, defendants had filed a motion for determination of inequitable conduct based on these factual findings. (Docket No. 876.) Rather than resolve this action in a piecemeal fashion, I conclude that it is both more efficient and in the interest of justice to determine whether defendants have proven by clear and convincing evidence that the named inventors engaged in inequitable conduct during prosecution of the patent by omitting co-inventors with deceptive intent, rather than to permit plaintiffs to withdraw the motion to correct inventorship. This determination would permit all issues concerning inventorship can be considered in a single appellate proceeding. While all parties envisioned the proceeding to be governed by Section 256, I see no unfair surprise in determining whether plaintiffs engaged in inequitable conduct solely with respect to the omission of inventors because this issue of deceptive intent is substantially the same issue addressed in the Section 256 proceeding under a shifted burden. Early in the Section 256 proceeding, this Court suggested that it decide the issue of inequitable conduct as well as inventorship with respect to each of the alleged misrepresentations. Plaintiffs had objected because of the late notice, and the Court declined to decide the inequitable conduct issue given its ruling on inventorship under Section 256. Now, under Stark, I have reconsidered that decision, in part. There is no right to a jury trial on the affirmative defense of inequitable conduct, which provides relief by way of a court’s equitable powers. See Cabinet Vision v. Cabnetware, 129 F.3d 595, 599 n. 4 (Fed.Cir.1997). A trial court may decide the issue of inequitable conduct involving “conduct-of-the-applicant in-the-PTO” in a non-jury trial before determining “infringement/validity issues.” Gardco Mfg. Inc. v. Herst Lighting Co., 820 F.2d 1209, 1213 (Fed.Cir.1987) (holding that a prior trial of the inequitable conduct claim is precluded only where the party seeking the jury trial shows that the factual issues relating to a legal claim for patent infringement were common with those relating to the equitable claim). A conclusion of inequitable conduct requires an equitable weighing by the Court of the factual issues of intent to deceive and materiality of the alleged omissions or misrepresentations in the totality of the circumstances. See Nobelpharma AB v. Implant Innovations, Inc., 129 F.3d 1463, 1474 (Fed.Cir.1997). The Federal Circuit has clearly delineated the applicable standard: Inequitable conduct resides in the failure to disclose material information with an intent to deceive or mislead the PTO. Once thresholds of materiality and intent have been established, the court conducts a balancing test and determines whether the scales tilt to a conclusion that ‘inequitable’ conduct has occurred. The more material the omission or the misrepresentation, the lower the level of intent required to establish inequitable conduct, and vice ver-sa.... Direct evidence of intent or proof of deliberate scheming is rarely available in instances of inequitable conduct, but intent may be inferred from the surrounding circumstances. Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253, 1256 (Fed.Cir.1997) (internal citations omitted), petition for cert. filed, — U.S. —, 118 S.Ct. 1510, 140 L.Ed.2d 665 (1998). “It is axiomatic that ‘[cjlose cases should be resolved by disclosure [to the PTO], not unilaterally by the applicant.’ ” Id. at 1257 (quoting LaBounty Mfg. Inc. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1076 (Fed.Cir.1992)). Intentional misrepresentations in affidavits are material as a matter of law. See Refac Int’l, Ltd. v. Lotus Dev. Corp., 81 F.3d 1576, 1583 (Fed.Cir.1996) (holding that presentation of a half-truth in an affidavit submitted to the PTO was inherently material); see also Paragon Podiatry Lab., Inc. v. ELM Lab., Inc., 984 F.2d 1182, 1191 (Fed.Cir.1993). Omission of a true inventor with deceptive intent is a material omission because it would involve “filing a false oath.” Stark, 119 F.3d at 1555; see also Sadler-Cisar, Inc. v. Commercial Sales Network, Inc., 786 F.Supp. 1287, 1296 (N.D.Ohio 1991) (finding inequitable conduct in the making of a false oath regarding inventorship). Even deceptive intent by one co-inventor is sufficient to invalidate a patent. See Stark, 119 F.3d at 1556 (“One bad apple spoils the entire barrel.”); see also 37 C.F.R. § 1.324 (1996). In re-examining the record evidence, as described in PerSeptive II, under this equitable balancing test, I conclude that the named inventors, particularly Professor Fred Regnier, .engaged in inequitable conduct by omitting the names of Warner and/or Lloyd as co-inventors on the patent with deceptive intent, and that this omission is material as a matter of law. Accordingly, the patents are unenforceable. This is not a situation of a few instances where, in hindsight, an applicant acted with less than full candor. See, e.g., Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1093 (Fed.Cir.1997). For example, if this case had involved simply the deletion of the date on the Rounds chromato-gram pursuant to a generally permitted practice of the PTO, a finding of inequitable conduct might be inappropriate under the totality of the circumstances, even if in hindsight this deletion reflected less than full candor. The same flexible analysis would be applied if Professor Regnier had simply failed to exercise due diligence in determining whether he used a chromatogram during the 1988 HPL.C meeting to make his presentation. It is the persistent course of material misrepresentations, omissions and half-truths to the PTO that persuade me by clear and convincing evidence of deceptive intent on inventorship. As I discussed in PerSeptive II, a good faith disagreement over the law of joint in-ventorship does not provide the basis for this ruling. Even assuming a close legal question, the Federal Circuit has made it clear that any doubts about the materiality of a that should be resolved by disclosure to the PTO, not “unilaterally by the applicant.” See Critikon, 120 F.3d at 1257. The named inventors had a duty of candor of disclosing the role of Warner and Lloyd at Polymer Labs and the work conducted jointly, and of presenting to the PTO their legal theory on joint inventorship so that the examiner could make an independent determination. A post hoc presentation in an ex parte submission to the PTO after litigation has heated up does not suffice. After balancing the materiality of the misrepresentations and omissions on a central issue — inventorship—and the evidence of deceptive intent, I conclude that defendant has met its burden of providing clear and convincing evidence of inequitable conduct based on the current record. 3. Jury Claim PerSeptive claims that a determination of inequitable conduct by the Court deprives it of the right to a jury trial. PerSeptive claims-that the Court cannot proceed to consider inequitable conduct without first having a jury determine the correct inventive entities for each of the patents. The expanded record after ten days of hearings fully buttresses my conclusion of joint inventorship as set forth in PerSeptive I under the standard for summary judgment set forth in Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). See Per-Septive II, at 88 n. 2. There is no disputed issue of material fact with respect to nonjoin-der of Warner and Lloyd. While plaintiff is entitled to a jury trial on the correct inventive entity because of a fact dispute concerning the question of whether Mary Ann Rounds was just a “pain of hands”, that remaining fact question does not undermine the bottom line that there was inequitable conduct in omitting names of other true inventors, the scientists at Polymer Labs, based on the Court’s review of the undisputed facts. The fact dispute whirling around Rounds is not substantially common to the issue of inequitable conduct involving Polymer Labs. See Gardco Mfg., 820 F.2d at 1213. PerSeptive also claims that it may have additional, evidence to defend against a claim of inequitable conduct and that its due process rights would be violated by making a decision on the current record. It is hard to imagine what additional evidence would be material in light of the extensive testimony and hundreds of documents I have reviewed. At the Section 256 hearing, as I remember, PerSeptive suggested that it had expert testimony to demonstrate that any misrepresentations were not material. This expert testimony might have been helpful if the Court were relying on the misrepresentations as the basis of inequitable conduct claim. However, the basis of my conclusion that there was inequitable conduct is my finding of a deliberate omission of a true inventor. This omission is material as a matter of law. I conclude that expert testimony would not be helpful on the issue of materiality on the joint inventorship issue. In all its post hearing filings, PerSeptive has only a limited, unsworn proffer of additional fact evidence to rebut a claim of inequitable conduct, relating to inventorship. Its post-trial complaints that the ability to present evidence on inventorship was unfairly denied or limited are conclusory. For example, PerSeptive states that it would have introduced “numerous additional witnesses” concerning, among other things, suggestions made by Professor Regnier regarding the use of larger pore size materials for use with biological macromolecules and the existence of alternative sources of support capable for use in developing perfusive chromatography media. (Docket 878 at 10). This sketchy proffer is insufficient to demonstrate any prejudice on the inventorship issue. PerSep-tive does not adequately explain why it did not mention or seek to introduce additional witnesses on these fact issues at the Section 256 healing where the issues were explored, or demonstrate how the evidence would affect an equitable weighing. It is too little, too late. The other proffered evidence appears to relate to claims of inequitable conduct which I did not even address in my opinion. Any claim that PerSeptive was prejudiced because it chose to put its patent counsel on the stand on the issue of deceptive intent is unpersuasive as it would have faced the same tactical decision in an inequitable conduct proceeding probing nonjoinder. ORDER I order as follows: (1) I DENY the motion to withdraw the motion to correct inventorship; (2) I vacate my March 31, 1997 decision to the extent stated in this Memorandum and Order; (3) I order the entry of judgment pursuant to Fed.R.Civ.P. 54(b) in favor of defendant Pharmacia BioTech, Inc. on its affirmative defense of inequitable conduct. I conclude there is “no just reason for delay” in entering judgment on less than all the claims. The other defendants, Sepracor, Inc. and BioSep-ra, Inc., have settled. The remaining parties shall consult and propose a form of order within ten (10) days of receipt of this order or submit competing draft orders; (4) There are other claims and counterclaims alleging, inter alia, unfair competition, which the parties seem to agree are substantially different from the joint inventorship issues. I stay further proceedings on all remaining claims and counterclaims pending disposition of such appeal; and (5) The motion for attorneys fees need not be brought until after appeal and entry of final judgment. ATTACHMENT A United States District Court District of Massachusetts PerSeptive Biosystems, Inc. and Purdue Research Foundation, Plaintiffs, v. Pharmacia Biotech, Inc., et al., Defendants. Civil Action No. 93-12237-PBS MEMORANDUM AND ORDER January 9, 1996 SARIS, District Judge. INTRODUCTION Plaintiffs Perseptive Biosystems Inc. and Purdue Research Foundation (collectively “Perseptive”) bring this action charging defendants with infringing three patents which involve the use of liquid chronianography to separate and purify mixtures of proteins or other biological molecules. They move for partial summary judgment on the defense advanced by defendants Pharmacia Biotech Inc. (“Pharmacia”) and Sepracor Inc. (“Sep-racor”) that the patents are invalid because they fail to designate one or more of the true inventors. Pharmacia has filed a cross-motion for summary judgment, and Sepracor has asserted pursuant to Fed.R.Civ.P. 56(d)- that the named inventors are not the correct inventive entity of the invention claimed in the patents-in-suit. They assert that Mary Ann Rounds of Purdue University and certain scientists at Polymer Laboratories (“Polymer Labs”) are the true inventors of the subject matter claimed in the patents. Perseptive counters that there can be no genuine issue of material fact that neither Rounds nor any scientist from Polymer Labs participated in the “conception of the invention” described in the patents. Neither defendant asserts that it was involved in the inventive process; those alleged by defendants to be co-inventors are not parties to this suit. These cross-motions raise intriguing questions. Who should be named as inventors on the patent application pursuant to 35 U.S.C. § 102(f)? Are the “inventors” the scientists who developed and tested a particle which improved the ability of chromatographers to separate proteins at high speeds — but without understanding why? Or are the “inventors” the scientists who later discovered the microscopic properties of that particle — internal channels called “throughpores” — and explained the significance of those properties? Or if all these scientists worked collaboratively, are they all “joint inventors” pursuant to 35 U.S.C. § 116? After review of the extensive record, and hearing, the Court concludes that pursuant to 35 U.S.C. § 116 there is undisputed, clear and convincing evidence that the Polymer Lab scientists, Dr.'Frank Warner and Linda Lloyd, are joint inventors who worked in collaboration with the inventors named on the patents. Accordingly, Perseptive’s motion is DENIED, and defendants cross-motions .are ALLOWED. BACKGROUND 1. Liquid Chromatography A primer on liquid chromatography is essential to an understanding of the inventor-ship dispute. Liquid chromatography is a procedure in which a liquid containing a mixture of compounds is passed through a material that separates the mixture into its com-' ponents. The patents at issue in this case concern the use of liquid chromatography to separate mixtures of proteins or other biological molecules into components, in order to identify the components of a substance or to obtain a component in purified form. Liquid chromatography typically is performed using-thin tubes (“columns”) that are ' tightly packed with a matrix of microscopic particles (“media” or “packing materials” or “beads”). To the naked eye, the particles look like fine sand, or talcum powder. The matrix of packed particles does not fill up the entire space inside the column; rather, a network of channels exists. The base particles may be solid or porous. Porous particles may have pores that are crater-like and do not transect the particles and/or pores that transect the particles called “throughpores.” It is the development of and discovery of these throughpores that is at issue in-this suit. The size of the particles and of the pores is also significant. Particle diameter is typically measured in microns. A micron is equal to .000001 meter. The diameter of the pores inside the particles is measured in angstroms. One angstrom is equal to .0000000001 meter. The chromatographer introduces into the column a liquid containing a solution of one or more proteins. When liquid containing a mixture to be separated is introduced at the top of the column, the liquid flows down, around and/or through the particles and out the bottom of the column. The fluid flow rate through a column is referred to as the linear velocity and is typically measured in' centimeters per hour (“cm/hr”). A modern form of column liquid chromatography, high performance liquid chromatography (“HPLC”), uses a pump to push liquid through the column at increased linear velocities, thereby decreasing the time in which the separation is performed. The base particles may be modified (or “derivatized”) by applying a chemical to the particles that has the ability to selectively interact or bind with the components in the liquid mixture. In adsorptive chromatography, the type of chromatography that is the subject matter of the patents, the proteins generally adsorb (meaning “bind”) to the interactive surface regions of the particles. If the particles are porous, the proteins can bind to the interactive surface regions in the interior of the particles as well. The separation of the components is achieved because the various components flow through the column and media at different rates, depending on the conditions in the column and the degree to which each component adsorbs to the particles at the so-called “interactive” or binding sites. During the HPLC separation process, the compounds to be separated are carried to the interactive sites by two specific types of fluid movement — convection and diffusion — which can take place at the same time. The rate of convection through the pores is the rate at which pressure drives the liquid containing the compounds to be separated through the pores. The rate of diffusion within the pores is the rate at which the compounds migrate from areas where they are highly concentrated to areas of low concentration. Following adsorption, the chromatogra-pher can change a characteristic of the liquid in the column in a controlled manner, so that the proteins selectively “desorb” (or detach) from the interactive surface regions. Carried by the liquid flow, the proteins exit the column (or “elute”) where they can be detected, measured, or collected. The patents-in-suit involve “perfusive chromatography,” a method which depends on particles which feature throughpores, permitting liquids to flow through a particle. The throughpores used are relatively large compared to the particle size, so that at achievable liquid flow rates, a significant portion of the liquid passing through the column flows through the particles. As defined by the patent claims, “perfusive chromatography” occurs when the rate of convective flow through the particles exceeds the rate of diffusion. This intraparticle flow allows the chromatographer to separate proteins at high speed without losing resolution or capacity. 2. The Collaborative Relationship Between Polymer Labs and Purdue Laboratory — 1986 Since 1977, Polymer Laboratories Ltd. (“Polymer Labs”), a British company, has manufactured and sold products in the area of chromatography and polymer analysis. Polymer Labs has a wholly owned affiliate in Amherst, Massachusetts which distributes chromatography media and pre-packed columns in the United States. One of its early product lines was a series of uncoated chromatography particles sold as early as 1977 under the trade name PL-GEL. This product line offered particles averaging three to 100 microns in diameter and having pore sizes ranging from ten to fifty angstroms up to 4000 angstroms. In the early 1980’s, Polymer Labs developed another kind of base particle (“PLRP-S”), with 4000-angstrom pores for use in reverse phase chromatography, which was sold before 1988. In late 1985, an informal collaboration developed between Dr. Fred E. Regnier, a named inventor, and Polymer Labs. Regnier was the scientist in charge of research at Purdue Laboratory, and Mary Ann Rounds was his research assistant. Rounds made the initial contact with Polymer Labs to inquire as to the availability of packing material. On December 17, 1985, Dr. Frank Warner, the vice president of Polymer Labs, wrote to Rounds at Purdue University in Lafayette, Indiana, stating: “Polymer Laboratories would be pleased to collaborate with yourself and Professor F. Regnier by supplying, free of charge, loose polymeric HPLC packings for derivátizing at Lafayette.” (Emphasis added). He then wrote: “Currently we have available a whole range of polystyrene/DVB macroporous packings at 8 or 10 micron particle sizes in 100, 300, 1000 and 4000-angstrom pore sizes. These may in the future be available in modified form and could possibly be useful to you as an intermediate in your work.” Warner indicated that he was researching “modification areas on these materials” and might be able to provide Rounds with some. In return, he wanted to be informed of any “interesting or commercially useful results on the materials that we supply.” On January 3, 1986, Rounds and Regnier promptly responded, stating that their “objective is to make ion-exchange chromatographic media for biomolecules” and promising that if the research is successful, they would make their findings available well in advance of publication and acknowledge that Polymer Labs provided the materials. The letter concluded: In accordance with your wishes, we will simply exchange findings of interest to you for the packings received. Should you decide that you prefer monetary compensation for the media or a more formal collaboration, please do not hesitate to contact us. (Emphasis added). The understanding was that Dr. Regnier’s lab at Purdue and Polymer Labs would exchange information on the Polymer Labs packing material which Dr. Regnier’s lab received free of charge. Rounds hoped to evaluate the materials for use in the chromatography of large materials. The purpose of the testing at Purdue Lab was to evaluate the performance of an interactive surface chemistry known as SAX when applied to the particles manufac- ■ tured by Polymer Labs. The SAX technology had been patented by Regnier, and had been licensed to Polymer Labs by the Purdue Research Foundation. Rounds evaluated the 300-angstrom and 1000-angstrom media from Polymer Labs in the first half of 1986, and discussed the results with Regnier. They concluded that the results were favorable. With Regnier’s knowledge, Rounds sent the evaluation of the material to Polymer Labs. The, collaboration with Polymer Labs continued to be informal. After receiving the favorable results of the research from Regnier’s laboratory, Polymer Labs decided to commercialize the SAX coated version of its 1000-angstrom particle. In Warner’s words: “The PL-SAX product was developed through a collaboration with Professor Regnier of Purdue University, and that collaboration started, I think, in 1985.” (Emphasis added). On July 7, 1986, Rounds had written Warner: I am pleased to hear that Polymer Labs is interested in marketing the strong anion-exchange packing material which I made from your 1000A polystyrene DVB. Although other larger companies are also quite interested in this technology, it has always been my hope that Polymer Labs would benefit most directly since none of - this work would have been done without your generous gift of polystyrene last December. On December 1, 1986, Polymer Labs obtained a license to use the Purdue coating technology. In December, 1986, Rounds and Regnier submitted a proposal to Polymer Labs “for the development of polystyrene divinylbenzene-based packing materials for HPLC of proteins.” Polymer Labs entered into a formal six month agreement with Purdue to provide funding to Regnier, as principal investigator and Rounds as research assistant, for the development of packing materials for HPLC of proteins, in particular to optimize “the macroporous strong anion-exchange (SAX) packing material for commercialization.” The PL-SAX 1000 was on the market in 1987. 3. Collaboration — 1987 In 1987, Polymer Labs began applying the SAX coating technology on the 4000-ang-strom particles. On March 18 and October 7,1987, it manufactured such 4000-angstrom particles with diameters of 12 to 15 microns, and 10 to 12 microns respectively. Polymer’s logic in evaluating larger pore sizes was primarily to allow larger proteins to enter the pores of the particles, proteins which might be excluded by the 1000-angstrom pores. Linda Lloyd, a Polymer Laboratory scientist, prepared PL-SAX 4000A and studied the influence of pore size on chromatographic performance of PL-SAX particles, including the 100,300,1000 and 4000 angstrom particle at a flow rate of 1 ml/min (which amounts to 360 cm/hr). In a paper presented at a conference in England on September 15-18, 1987, Lloyd, Warner and others showed the results of separations of biological materials on a matrix composed of PL-SAX 1000 particles at a flow rate of 1440 cm/hr. Polymer Labs again publicly presented the results in the Seventh International Symposium on HPLC of Proteins, Peptides and Polynucleo-tides in Washington D.C. on November 2-4, 1987. Regnier and Rounds attended. A poster prepared for the symposium was entitled “Influence of Pore Size/Ionic Capacity on the Separation of Small and Large Biomo-lecules when using Polymeric Anion Exchange Media.” In the paper presented at the conference, Warner, Lloyd and another author concluded: “Therefore for the analysis of very large proteins, e.g., thyroglobulin and DNA the optimum material would be the PL-SAX 4000A but for the gradient elution of small solutes and the majority of proteins the smaller pore size PL-SAX 1000A would provide optimum resolution loading.” 4. Collaboration — 1988 As a result of the conference, the collaboration between Polymer Labs and Purdue Laboratory continued. At the conference, Regnier and Rounds met with John MeCon-ville, a representative of Polymer Labs who asked them to do some additional chromatographic evaluations of a column packed with the PL-SAX 4000A polystyrene particles which had been derivatized and evaluated by Lloyd. On November 12,1987 Rounds wrote a research plan. Regnier’s Purdue laboratory received experimental batches of PL-SAX 4000A from Polymer Labs for testing on December 28,1987. Rounds ran the columns at high flow rates of 360 cm/hr (1 ml/min) and 720 cm/hr (2 ml/min), according to the standard lab protocols and her experience. The initial separation results were in Rounds’ words “really good.” Of particular significance was the “surprisingly high capacity of the 4000-angstrom pore diameter material compared to 1000-angstrom pore diameter material.” In late December, 1987, after seeing Rounds’ chromatograms, Regnier was so excited about the results of the data that he suggested to Rounds that she call Lloyd and that they “should get together and plan a study and write a paper on these comparisons.” On December 30,1987, Rounds called Lloyd to plan jointly the study and to exchange data. That same day Rounds forwarded the chromatograms and wrote Lloyd: “Dr. Regnier is very excited over the 4000A packing material (he thinks it will be great for preparative use). He suggested that you and I collaborate to do a thorough study of this material, which should be publishable.” (emphasis added). Rounds then asked for 10 micron, 4000A packing particles for testing. The data generated by Rounds in January and February 1988 showed that resolution was retained at relatively high flow rates. On January 12, 1988, Rounds generated a chromatogram on a column of 4000A PL-SAX at 1 ml and 4 ml per minute. On January 19, 1988, Lloyd sent Rounds 8 micron PL-SAX 4000A and 10 micron PL-SAX 4000A for her evaluation. On February 5, 1988 Rounds wrote an animated letter to Lloyd proclaiming the virtues of 4000-ang-strom PL-SAX media which “does indeed perform analogously to non-porous, without the problems of high back pressure and low loading capacity.” Rounds had separated a four protein mixture at a flow rate of 3 ml/min achieving a good resolution in 45 seconds. She wrote: Dr. Regnier is most excited' about the preparative potential of this packing material and told me that he had talked to Frank (Warner) about the possibility of arranging some kind of agreement between PL and “Synosis”, the new company which Fred is involved in starting along with two other men from the Boston area. Whether this takes place or not, there certainly will be a market for the 4000A packing material, if Fred’s interest and enthusiasm for it are a valid indication of the future. The chromatograms generated by Rounds on 4000-angstrom Polymer Labs material, at Polymer’s request, in January and February 1988, represented the then-unknown phenomenon of perfusion chromatography. In early 1988, Warner learned from Lloyd that Regnier’s hypothesis for explaining the high speed resolution was by “flow through” the particles. Rounds had shared Regnier’s explanation with Lloyd. Warner was skeptical that this was the explanation. In February 1988, Lloyd, Warner and other scientists presented another paper at the 39th Pittsburgh Conference and Exposition on Analytical Chemistry and applied Spectroscopy in New Orleans entitled “Polymeric Anion Exchange Columns for the HPLC Analysis of Large Biological Solutes (Proteins).” This paper discussed the use of PL-SAX 4000-angstrom particles of 10-mieron diameter. For analysis of DNA, restriction fragments and oligonucleotides, the paper concluded “the large pore size maximizes the loading capacity through maximum available surface area.” PL-SAX 4000A was introduced as a commercial product at this conference. On March 4, 1988, Lloyd responded to Rounds that Rounds’ PL-SAX 4000A evaluation looked “absolutely great,” and added: “The more I use the [PL-SAX 4000A] material the more convinced I become that high speed/high load separations could be achieved using standard. HPLC systems.” Lloyd forwarded information concerning separations she accomplished on PL-SAX 4000A at a flow rate of 2 ml/min (720 cm/hr), and asked for Rounds’ completed evaluation on the packing materials. On March 16, 1988, Rounds replied again to Lloyd, calling the oligonucleotide chroma-togram “spectacular,” continuing the data exchange, and proposing that they begin “putting together a paper.” In June 1988, PL-SAX 4000A was first sold in the United States. 5. The New Corporation The named inventors — Regnier, Robert C. Dean and Noubar Afeyan — became associated in June, 1987 when they joined as founders to form plaintiff Perceptive’s predecessor, Synosys Corporation. The new company was formed to develop protein’ purification systems. It was incorporated in November, 1987. By March, 1988, it was commencing a major product development program for the sale of a chromatograph adsorbent called Poros, which was manufactured using the Polymer Labs base particle. On March 17, 1988, Dean, on behalf of Synosys, wrote Frank Warner and John McConville to propose a contract between the two entities and to request an exclusive license to sell PL-SAX in the United States. The first paragraph of the term sheet proposed by Dean read: Polymer Laboratories (PL) wishes to market its macroporous, polymer-based chromatography media line in the life science market for preparative use in process development, pilot and production applications, via an exclusive arrangement with Synosys (SYS). SYS agrees to purchase polymer-based media exclusively from PL during the term of this Agreement. SYS intends to collaborate with PL in the future improvement of polymer media. (Emphasis added). On the cover sheet, Dean wrote: “We are very enthusiastic about collaborating with you.” (Emphasis added). On March 24, 1988, Warner of Polymer Labs rejected the proposal for an exclusive relationship, stating that “[r]estrictive practices and forced collaboration between our companies will not be beneficial in the long term.” On November 3, 1988, Dean sent Warner the scanning electron micrographs (SEM’s) which “we have been basing our ideas of Poros 4000 structure upon” and added: “The collaboration developing between us is most satisfying and has exciting potential.” (Emphasis added). On November 28, 1988, Afeyan wrote Warner to procure more PL-SAX 1000A and 4000A and to seek more data on pore size. The letter stated they were taking the necessary steps “for patent protection for these new coats.” On June 21, 1989, Afeyan wrote Warner again seeking 4000-and 1000-angstrom-pore particles, and asking for certain improvements in surface area: Polymer Laboratories is a recognized specialist in porous polymer manufacture, and has already made particles stronger and better than others, at least in our assessment. Encouraged by your past achievements, and based on our numerous discussions about ways to jointly improve the particles, I have a request for such an improvement. (Emphasis added). 6. The Named Inventors Dr. Regnier believed that Rounds’ test results on the 4000A particles in January and February 1988 were unusual and did not understand them. Excited, Dr. Regnier talked with Afeyan and Dean, about the chro-matogram early in 1988, and they speculated that there might be convection in the particles. In February 1988, they took SEM’s of the particles. They also discussed the chro-matograms as something the fledgling company might pursue. By March 29, 1988, Dr. Regnier wrote in a memorandum that the Polymer Labs 4000A particles “have pores that go completely through the particle.” Dean annotated the memorandum: “through porosity permits perfusion.” In June, 1988, Dr. Regnier gave a presentation at the Twelfth International Symposium on Column Liquid Chromatography in Washington, D.C. entitled “Macroporous Styrene-Divinyl Benzene-Based Media for Proteins.” He used Rounds’ chromatograms of the PL-SAX media but crossed out “PL-SAX” and called the media “Poros.” At the conference, he called his work “perfusion” and explained the results as due to “flow through” the pores by convection. Warner, who was present at the conference, was angry that “Polymer Labs were not given the right recognition in this work,” and concerned when Regnier said that the technologies were in the process of being patented. At his deposition, Warner explained his concern: Because I wanted to make sure that there was nothing that was being patented without PL’s input into that, because alot of this work had alot of collaboration between Mary Rounds and Polymer Laboratories, and I wanted to make sure that we were not left out in the cold, (emphasis added). At that June 1988 meeting, Warner immediately confronted Afeyan, who stated that: “The flow through chromatography he did not consider was patentable at that time and they had no intentions in that direction.” Afeyan remembers that in the late summer and early fall of 1988, the named inventors determined that the throughpore which was necessary for perfusive chromatography was a structure that permitted intrapartiele convective mass transfer to dominate over diffusive mass transfer with resulting ability to operate media at high linear velocities, while maintaining excellent performance characteristics. The initial invention disclosure was prepared in October, 1988. Afeyan testified that the inventors did not realize that the 4000-angstrom particles had transecting pores until this time period. 7. The Patent Application More than a year later the patent application was filed, on July 6, 1989. The patent office initially rejected the application based on the prior art of Polymer Labs, Rounds and Regnier. In an “Amendment, Response and Interview Summary Record” filed on September 5, 1990, the named inventors disclosed that Dr. Regnier, while a professor at Purdue University, had informally consulted with Polymer Labs for many years, and that prior to January 1, 1989, the applicants discovered that “some batches” of the wide pore materials supplied experimentally by PL “produced outstanding separations at extraordinarily high flow rates. These properties could be observed with some wide pore materials and not with others.” The applicants pointed out to the examiner that there was “no evidence suggesting that the 8 micron or 10 micron ’4000 A’ material, some prototype batches of which were capable of perfusion chromatography, were even sold or in public use prior to the making of their, invention.” They also stated that in June, 1988, neither Dr. Regnier nor the other inventors were aware that any experimental PL particles had throughpores. Attached to the Rule 131 declaration of the inventors as to the date of invention were the chromatograms dated January 12, 1988 and February 1988, generated by Rounds. These were submitted as evidence of “actual reduction to practice.” Essentially, the inventors claimed that the date of invention was before January 1, 1989, but after Regnier’s presentation in June, 1988. By January, 1990, Polymer Labs knew that Perseptive had filed a patent application, but never filed its own. It did send a letter to Perseptive contesting the validity of the patent. On September 5, 1991, it filed a declaratory judgment action claiming invalidity of the patent on the grounds, inter alia, of prior art, but the litigation was withdrawn. 8. The patents-in-suit There are three patents at stake. Persep-tive filed suit against defendants on October 14, 1993 alleging infringement of United States Patent Nos. 5,019,270 (“ ’270 patent”) and 5,228,989 (“ ’989”), which claim respectively chromatography methods of separating biomolecules at high speed and high efficien-ey, and particles for practicing these methods. Specifically, claim 1 of the ’270 patent provides for: A chromatography method comprising the steps of: (A) forming a chromatography matrix by packing a multiplicity of particles defining throughpores and solute interactive surface regions therewithin; and (B) passing a fluid mixture of solutes comprising biological molecules through said matrix at a velocity sufficient to induce a convective fluid flow rate through said throughpores greater than the rate of solute diffusion through said throughpores and to produce a Peclet number in said throughpore greater than 1.0. ’270 patent, col. 25, lines 37-48. The ’270 patent states that the PL-SAX 4000A ten micron particle, run at a velocity greater than 300 cm/hr satisfies the method claimed in the ’270 patent (Col. 12, lines 52-54). Chromatograms prepared by Rounds are included in figures 10 and 12 of the specification. On January 25, 1995, Perseptive filed another action alleging infringement of United States Patent No. 5,384,042 (“ ’042 patent”), which claims a matrix for conducting high efficiency and high speed adsorption chromatography of biological molecules. Collectively, the ’270, the ’989 and the ’042 patents will be referred to as the perfusion patents. All three perfusion patents list as inventors Drs. Noubar B. Afeyan, Robert C. Dean and Fred E. Regnier. Perseptive claims that each of the claims of the ’270 and ’989 patent were conceived during the period August 1988 to November 1988. DISCUSSION Pursuant to 35 U.S.C. § 102(f), a person “shall be entitled to a patent unless — (f) he did not himself invent the subject matter sought to be patented.” The inventors named in an issued patent are presumed to be correct. Amax Fly Ash Corp. v. United States, 206 Ct.Cl. 756, 514 F.2d 1041, 1047 (1975)(per curiam). “The burden of showing misjoinder or nonjoinder of inventors is a heavy one and must be proved by clear and convincing evidence.” Garrett Corp. v. United States, 190 Ct.Cl. 858, 422 F.2d 874, 880 (per curiam), cert. denied, 400 U.S. 951, 91 S.Ct. 242, 27 L.Ed.2d 257 (1970). To invalidate a patent under section 102(f), “a party must demonstrate that the named inventor in the patent acquired knowledge of the claimed invention from another, or at least so much of the claimed invention as would have made it obvious to one of ordinary skill in the art.” New England Braiding Co., Inc. v. A.W. Chesterton Co., 970 F.2d 878, 883 (Fed.Cir.1992). A patent is also unenforceable if it fails to name all persons properly considered as joint inventors pursuant to 35 U.S.C. § 116. A joint invention is the product of a collaboration between two or more persons working together to solve the problem addressed. Burroughs Wellcome Co. v. Barr Laboratories, Inc., 40 F.3d 1223, 1227 (Fed.Cir.1994), cert. denied, 516 U.S. 1070, 116 S.Ct. 771, 133 L.Ed.2d 724 (1996) (Nos. 94-1527, 94-1531). People may be joint inventors even though they do not physically work on the invention together or at the same time, and even though each does not make the same type or amount of contribution. Id. “The statute does not set forth the minimum quality or quantity of contribution required for joint inventorship.” Id. At the heart of this controversy is the meaning of the term “inventorship.” In Burroughs Wellcome, the Federal Circuit had the following useful discussion, which bears repeating at length: Conception is the touchstone of inventor-ship, the completion of the mental part of invention. It is “the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” Conception is complete only when the idea is so clearly defined in the inventors mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation. Because it is a mental act, courts require corroborating evidence of a contemporaneous disclosure that would enable one skilled in the art to make the invention. Thus, the test for conception is whether the inventor had an idea that was definite and permanent enough that one skilled in the art could understand the invention; the inventor must prove his conception by corroborating evidence, preferably by showing a contemporaneous disclosure. An idea is definite and permanent when the inventor has a specific, settled idea, a particular solution to the problem at hand, not just a general goal or research plan he hopes to pursue. The conception analysis necessarily turns on the inventor’s ability to describe his invention with particularity. Until he can do so, he cannot prove possession of the complete mental picture of the invention. These rules ensure that patent rights attach only when an idea is so far developed that the inventor can point to a definite, particular invention. Id. (citations omitted). The court emphasized that a person is not “precluded from being a joint inventor simply because his contribution to a collaborative effort is experimental.” Id. at 1229. “Instead, the qualitative contribution of each collaborator is the key — each inventor must contribute to the joint arrival at a definite and permanent idea of the invention as it will be used in practice.” Id. Here, the record overwhelmingly demonstrates that the scientists at Polymer Labs and at Regnier’s laboratories, although in physically different locations, collaborated in developing and testing the media essential to perfusion chromatography. Yet, Perseptive insists that the three scientists listed on the patent, Regnier, Dean and Afeyan, were the true inventors of the patent because they were the only ones to conceive'that the quality of the packing material which made it a successful media for high pressure liquid chromatography was the throughpore which had a sufficiently large diameter to allow the rate of convection to exceed the rate, of diffusion. While Warner and Lloyd understood that the Polymer Lab 4000-angstrom' beads had desirable properties in performing high speed liquid chromatography, they admit that they did not understand the properties of the beads which accomplished the high speed separations. Indeed, Warner candidly admitted that initially he doubted Regnier’s explanation. Nevertheless, Warner and Lloyd knew what the 4000-angstrom particles did and could replicate them, even if not consistently. Relying heavily on Burroughs Wellcome, Perseptive argues that “neither [Warner, nor Lloyd] had an understanding of even the most basic aspect of Perfusion Chromatography, namely that the invention requires chromatography particles with a pore structure which permits liquids to flow through the particle, let alone other, more specific details of the inventions.” Rather “it was Drs. Afey-an, Dean and Regnier who first proposed the possible explanation of the performance of the 4000 angstrom particles.” Is discovery of the properties of a previously manufactured particle, without more, sufficient to constitute an invention subject to patent protection? General Elec. Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242, 66 S.Ct. 81, 90 L.Ed. 43 (1945), provides illumination. In General Elec., the patentee had claimed that the object of his invention was to produce an inside-frosted glass bulb which was stronger than the prior art, and that the inventive feature of the patented bulb was the fact that the interior surface was characterized by the presence of rounded as distinguished from sharp angular crevices. An earlier inventor, seeking to improve the diffusion of light, had described how to make rounded crevices on frosted glass. Although the Supreme Court acknowledged that the patentee seemed to be “the first to have recognized that the form of the pitting had an effect on the strength of the glass,” id. at 248, 66 S.Ct. 81, it held that there was no patent protection where “the prior art discloses the method of making an article having the characteristics of the patented product, though all the advantageous properties of the product had not been fully appreciated.” Id. It added: “It is not invention to perceive that the product which others had discovered had qualities they failed to detect.” Id. at 249, 66 S.Ct. 81; see also De Forest Radio Co. v. General Electric Co., 283 U.S. 664, 682, 51 S.Ct. 563, 75 L.Ed. 1339 (1931) (“It is method and device which may be patented and not the scientific explanation of their operation.”); accord Eli Lilly & Co. v. Premo Pharmaceutical Laboratories, Inc., 630 F.2d 120 (3d Cir.), cert. denied, 449 U.S. 1014, 101 S.Ct. 573, 66 L.Ed.2d 473 (1980). Here the named inventors seem to be the first to have recognized that the existence and size of the throughpore in the Polymer Labs packing particle had an effect on the separation of liquids under high pressure. However, just as recognizing that the form of the pitting had an effect on the strength of the light bulb did not trigger patent protection in General Elec., the discoverers of the latent qualities in the packing material developed and manufactured by another cannot claim sole inventorship within the meaning of the patent laws. The undisputed evidence is sufficient to overcome any inference that might be drawn from the fact that Polymer has failed to press a claim of inventorship. See Consolidated Aluminum Corp. v. Foseco Int’l Ltd., 10 U.S.P.Q.2d 1143, 1172 (N.D.Ill.1988), aff'd, 716 F.Supp. 316 (N.D.Ill.1989), aff'd, 910 F.2d 804 (Fed.Cir.1990) (“[FJailure of others to claim inventorship at the time of the original inventors’ publication is evidence permitting an inference that [the] other’s position [as inventors] [is] not sustainable.”). Polymer Labs was under no duty to file or join in the patent application. Checkpoint Sys., Inc. v. U.S. Int’l Trade Comm’n, 64 F.3d 756, 762 (Fed.Cir.1995). It did file a declaratory judgment action contesting the validity of the patent, but the action was dropped, and the record is unclear as to whether it was dropped as part of a settlement or for lack of interest, or for lack of financial ability to press the claim. 1. Joint Inventorship Although there is undisputed, clear and convincing evidence that the named inventors are not the sole inventors of the perfusion chromatography process simply by discovering the properties of a packing material which facilitated the scientific advance, Section 116 recognizes that an invention may be made “by two or more persons jointly.” (emphasis added). Prior to the 1984 amendments, the concept of joint invention was “one of the muddiest concepts in the muddy metaphysics of patent law.” Mueller Brass Co. v. Reading Indus., 352 F.Supp. 1357, 1372, 176 U.S.P.Q. 361 (E.D.Pa.1972), aff'd, 487 F.2d 1395 (3d Cir.1973) (table), quoted in 1 Donald S. Chisum, Patents § 2.02[2] at 2-5 (1995). In the 1984 Amendment to Section 116, Congress intended to clarify the law of joint inventorship by codifying the following helpful principles first stated in Monsanto Co. v. Kamp, 269 F.Supp. 818, 154 U.S.P.Q. 259 (D.D.C.1967): A joint invention is the product of collaboration of the inventive endeavors of two or more persons working toward the same end and producing an invention by their aggregate efforts. To constitute a joint invention, it is necessary that each of the inventors work on the same subject matter and make some contribution to the inventive thought and to the final result. Each needs to perform but a part of the task if an invention emerges from all of the steps taken together. It is not necessary that the entire inventive concept should occur to each of the joint inventors, or that the two should physically work on the project together. One may take a step at one time, the other an approach at different times. One may do more of the experimental work while the other makes suggestions from time to time. The fact that each of the inventors plays a different role and that the contribution of one may not be as great as that of another does not detract from the fact that the invention is joint if each makes some original contribution, though partial, to the final solution of the problem. Kimberly-Clark v. Procter & Gamble Distr. Co., Inc., 973 F.2d 911, 916-17 (Fed.Cir.1992) (emphasis in original) (quoting Monsanto, 269 F.Supp. at 824). In Kimberly-Clark, 973 F.2d at 916, the Federal Circuit confirmed that an invention can be made “jointly” under Section .116 only if two or more persons actually collaborate in it. The purpose of the amendment was to encourage team research. Id. In determining co-inventorship, courts look to a number of factors, the most important being the relationship of the scientists who conceived the idea and who reduced it to practice. See Celestron Pacific v. Criterion Mfg., 552 F.Supp. 612, 616 n. 1, 219 U.S.P.Q. 870 (D.Conn.1982). Here, the relationship between the scientists at Polymer Labs and Purdue Laboratory was precisely the kind of collaboration and synergy the 1984 amendment was intended to promote. Warner and Lloyd discovered that a 4000-angstrom packing material had terrific separation results but did not understand why. They hired Regnier and his research staff to study the material, and funded the research, as well as performing research on their own. Excited letters went back and forth between the laboratories sharing information. The named inventors examined the particles under an electron microscope, discovered the through-pores, and appreciated that the reason for the success of the particle was that the convective mass transport through the particles dominated the mass transport within the throughpores. This conception enabled others to replicate the perfusive chromatograph method more consistently. Without the manufacture and testing of the 4000-angstrom particle, and the recognition and publication of the positive test results, Regnier and his team would not have had the critical scientific starting point for their research- — the recognition of the success of the 4000-angstrom particle in separating proteins at high speed. . ,- While “the theory or explanation as to why a product or process works to achieve its aim is generally not viewed as part of the act of inventing,” D. Chisum at § 202[5] at 2-20 to -21, here Perseptive did more than provide the scientific explanation for why the process worked — that the throughpores were large enough for the rate of convection to exceed the rate of diffusion. Rather, the Perseptive scientists discovered the very existence of the throughpores in the 4000-ang-strom particles. Without this discovery and the understanding of the significance of the throughpores, the conception of the process was not complete. This discovery contributed to the operativeness of the completed invention by pinpointing the factor essential to “predictability of activity.” GAP Corp. v. Amchem Prod., Inc., 514 F.Supp. 943, 972, 211 U.S.P.Q. 172 (E.D.Pa.1981). Prior to the throughpore discovery, Polymer Labs did not have a “definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir.1986) (quoting 1 Robinson on Patents 532 (1890)), cert. denied, 480 U.S. 947, 107 S.Ct. 1606, 94 L.Ed.2d 792 (1987). Perseptive reported to the Patent Office that only some of the experimental batches of PL-SAX wide-pore materials exhibited unusual behavior. The named inventors also testified there were inconsistent test results on the samples. Without understanding the significance of the throughpore and its dimensions, Polymer Labs did not have a basis for controlling for this feature. Once the named inventors understood the significance of the throughpore, the scientists at Polymer Laboratories continued to work with the named inventors to perfect the perfusive particles and method until a month before filing the patent application. In short, each made “some original contribution, though partial, to the final solution of the problem.” Monsanto, 269 F.Supp. at 824. It is not necessary that joint inventors contribute equally to each claim under 35 U.S.C. § 116(3). There is no evidence that the three patents or the various claims should be treated differently for co-inventor-ship purposes. ■ The patents aré' therefore invalid for failure to name all inventors, unless they may be corrected. 2. Intent to Deceive Patent applications must be filed by the inventor, 35 Ü.S.C. § 111, who “shall make oath that he believes himself to be the original and first inventor.” 35 U.S.C. § 115. When an improper inventor appears on a patent application or a rightful inventor is omitted therefrom, 35 U.S.C. § 256 gives this court authority to cprrect the mistake if it arose as a result of. “error and without deceptive intention.” See RCA Corp. v. Davidson, 215 U.S.P.Q. 469, 471 (D.N.J.1981) (ordering correction of issued patent,, after