DCT

5:18-cv-00301

Geary Roberts v. Robert L Shaub SR

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:18-cv-00301, M.D. Fla., 06/18/2018
  • Venue Allegations: Venue is alleged to be proper in the Middle District of Florida because a substantial part of the events giving rise to the claims, including the invention of the product covered by the patent-in-suit, occurred in the district.
  • Core Dispute: Plaintiff alleges that Defendant Mark Nick was incorrectly named as an inventor on a patent that should be owned by the company, and that other defendants have breached contractual and fiduciary duties by failing to assign the patent to the company and correct the inventorship.
  • Technical Context: The technology relates to portable, inflatable aircraft mockups used for emergency response training for airport firefighters, addressing the cost and logistical challenges of using real aircraft for such drills.
  • Key Procedural History: The dispute arises from an operating agreement for SCR², L.L.C., which allegedly required the inventors to assign the patent to the company upon issuance. The complaint alleges this assignment was not fully completed and that an individual, Mark Nick, was erroneously included as an inventor, creating a cloud on the patent's title and preventing the company from obtaining sole ownership.

Case Timeline

Date Event
2012-09-12 SCR², L.L.C. operating agreement executed by members.
2012-10-05 Patent Application No. 13/645,611 filed (Priority Date).
2013-01-07 Plaintiff Roberts pays legal fees for the patent application.
2014-05-06 U.S. Patent 8,714,980 issues.
2017-06-20 Roberts learns the patent has not been assigned to the company.
2018-02-19 Roberts sends demand letters for patent assignment and correction.
2018-03-16 Inventors Riddell and Craig record assignments of their rights.
2018-06-18 Complaint filed.

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,714,980 - “Inflatable Aircraft Trainer and Method to Use”

  • Patent Identification: U.S. Patent No. 8,714,980, “Inflatable Aircraft Trainer and Method to Use,” issued May 6, 2014.

The Invention Explained

  • Problem Addressed: The patent background describes the high cost and logistical difficulty for airports to provide mandated "Hot Fire Training" for firefighters using life-size aircraft. It notes the "unavailability of a life-size aircraft" limits training opportunities for proficiency in agent application and tactical rescue procedures (’980 Patent, col. 1:11-35).
  • The Patented Solution: The invention is a portable, inflatable training device that simulates the approximate size and features of a real aircraft, such as a Boeing 737. It can be transported on a trailer, rapidly inflated on-site, and includes systems for simulating fire and smoke, allowing for realistic emergency training without interfering with normal airport operations or requiring a decommissioned aircraft (’980 Patent, Abstract; col. 2:4-14).
  • Technical Importance: This approach provides a reusable, mobile, and cost-effective platform for various emergency training scenarios, including fires, fuel spills, and passenger evacuations, which was not previously available (’980 Patent, col. 1:40-47).

Key Claims at a Glance

  • The complaint focuses on the patent as a whole, but the core invention is captured in the single independent claim, Claim 1.
  • Independent Claim 1 requires:
    • An inflatable aircraft training device comprised of connected nose, fuselage, and tail sections.
    • A trailer for securing and transporting the device.
    • A plurality of generators to power the device, stowed on the trailer.
    • A plurality of smoke machines to emit smoke, stowed on the trailer.
    • A controller to manage smoke discharge and air supply.
    • An antenna for remote operation of the controller.
    • A plurality of alarms.
    • A plurality of ballast vessels to stabilize the device.
    • An inflatable slide located at the device’s doors.
  • The complaint does not assert specific dependent claims but seeks correction of the entire patent (’980 Patent, col. 7:1-col. 8:22; Compl. ¶¶ 86, 92).

III. The Accused Instrumentality

This case does not involve allegations of an infringing product or service. The legal action is centered on the inventorship and ownership of the ’980 Patent itself and the underlying "Realistic Aircraft Tactical Trainer" ("RATT") technology it covers (Compl. ¶18). The dispute is internal to the members of SCR², L.L.C., the entity formed to commercialize the RATT (Compl. ¶13). The complaint alleges that the RATT was conceptualized and developed by Defendants Shaub, Craig, and Riddell, but not Defendant Nick (Compl. ¶¶ 18, 48-49). A "Revised Invoice" from the patent prosecutor for the "INFLATABLE AIRCRAFT TRAINER AND METHOD TO USE UTILITY APPLICATION" is provided as evidence of the work performed. (Compl., Ex. B, p. 38).

IV. Analysis of Inventorship Allegations

The complaint does not allege patent infringement and therefore does not include a traditional claim chart. Instead, the First Claim for Relief seeks to correct the patent’s list of inventors under 35 U.S.C. § 256 by removing Mark Nick (Compl. ¶¶ 83-89). The central allegations supporting this claim are factual assertions about who contributed to the conception of the invention.

Subject of Allegation Factual Allegations from Complaint Complaint Citation
Nick's Lack of Contribution Mark Nick "had nothing to do with the development of the RATT concept, design, or method for use." ¶48
Erroneous Inclusion Defendant Shaub instructed the patent attorney to name Nick as an inventor, allegedly based on the mistaken belief that "they 'needed a fourth person' on the patent." ¶¶ 46, 51
Concession by Other Inventors Inventors Riddell and Craig informed Plaintiff Roberts that Nick "was not involved in the concept, design, or development of the RATT." ¶49
Legal Basis for Correction The complaint asserts that because Nick made no contribution, he was "listed on the Patent as an inventor in error" and should be removed. ¶86
  • Identified Points of Contention:
    • Factual Question: The primary question for the court will be a factual one: did Mark Nick conceive of or contribute to the conception of the subject matter of at least one claim in the ’980 Patent? The complaint alleges he did not, but this will depend on evidence of his involvement, if any, in the development process.
    • Deceptive Intent: While the complaint alleges the inclusion was an "error," a defense could raise the question of whether there was any deceptive intent associated with the incorrect listing. Under 35 U.S.C. § 256, correction is permitted for errors made "without any deceptive intention." The complaint's narrative that Shaub mistakenly believed a fourth inventor was needed may support the "without any deceptive intention" requirement (Compl. ¶51).

V. Key Claim Terms for Construction

While claim construction is not the primary focus of this inventorship dispute, the scope of the claims defines the "invention" to which an individual must have contributed. The central issue is not the meaning of a term for infringement purposes, but what the patented "concept, design, or method" (Compl. ¶48) actually encompasses.

  • The Term: "inflatable aircraft training device"
  • Context and Importance: This term defines the overall subject matter of the patent. To be a joint inventor, Nick must have contributed to the conception of this "device" as it is defined by the elements of Claim 1. The dispute will hinge on whether he contributed to the idea of the device itself or any of its key claimed components (e.g., the trailer, the integrated smoke machines, the ballast vessels, the remote controller).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification suggests the device is not limited to a specific aircraft, stating that while a Boeing 737 is used for description, the device is "applicable to other sizes of aircraft including propeller as well as rotary wing aircraft" (’980 Patent, col. 4:65-col. 5:1). This could broaden the scope of the "conception" to a general platform idea.
    • Evidence for a Narrower Interpretation: Claim 1 recites a specific combination of a dozen distinct components, including the trailer, generators, smoke machines, controller, and ballast vessels (’980 Patent, col. 7:1-col. 8:22). An interpretation focused on the claim language would require an inventive contribution to this specific combination, not just a general idea of an inflatable plane. The detailed description emphasizes the integration of these subsystems for realistic training scenarios, such as the manifold system for smoke distribution and the ballast system for stability (’980 Patent, col. 4:46-59; col. 5:40-47).

VI. Other Allegations

No infringement is alleged; this section is not applicable.

VII. Analyst’s Conclusion: Key Questions for the Case

This case is not a standard patent infringement suit but an internal corporate dispute over patent ownership and inventorship. The outcome will likely depend on the resolution of two primary questions:

  1. A core issue will be one of inventorship determination: What factual evidence will be presented to establish whether Defendant Mark Nick made a material, conceptual contribution to any single claim of the ’980 Patent? The case will turn on whether Plaintiff can prove, by clear and convincing evidence, that Nick did not contribute to the conception of the claimed invention.

  2. A secondary, but critical, question will be one of contractual obligation: Does the LLC’s operating agreement create an unambiguous and enforceable duty for the correctly named inventors to assign their ownership rights in the patent to the company? The resolution of the associated state-law claims for breach of contract and specific performance will determine the ultimate control and ownership of this patent asset.