
Firm Wins Second Motion to Dismiss in Patent Inventorship Dispute

For two years, the Firm has been representing Everyone’s Earth – a company with a mission of revolutionizing manufacturing for ecological integrity – and its founder Thomas Kallish in litigation brought by Nicole Richards. The litigation concerns patents related to a biodegradable cotton diaper product issued by the United States Patent and Trademark Office (USPTO) that list Ms. Richards and Mr. Kallish as joint inventors. Earlier this year, the Firm succeeded in its first motion to dismiss Ms. Richards’s claims seeking to invalidate the assignment of her interest in the patents to Everyone’s Earth on the basis of fraud and secured a ruling from the District Court that the patents belong to Everyone’s Earth.
Ms. Richards separately claimed that she was the “sole inventor” of the diaper patents – not merely a “co-inventor” with Mr. Kallish – and sought a certificate from the USPTO correcting the patents to reflect this designation. After the Court upheld the validity of Ms. Richards’s assignment of the patents to Everyone’s Earth, the Firm moved to dismiss this claim as well, arguing that Ms. Richards had no standing to bring it under Article III of the U.S. Constitution, which requires that any plaintiff in a federal lawsuit have suffered an actual, concrete injury.
On December 12, 2024, the U.S. District Court for the Southern District of New York agreed, once again dismissing Ms. Richards’s claim. The Court found that absent any ownership interest, Ms. Richards did not plausibly allege any economic or reputational harm by virtue of Mr. Kallish being named as a co-inventor on the patents. The Court noted that it is unclear whether being identified as a “joint inventor” as opposed to the “sole inventor” of a patent can ever give rise to the type of reputational harm that the Federal Circuit Court of Appeals (the court with jurisdiction over appeals in federal patent cases) has recognized as sufficient to establish standing. Such reputational harm might consist of the loss of public recognition, pecuniary gain, and other benefits that inure from recognition in the scientific community as a patent inventor. However, the District Court did not decide categorically whether a co-inventor can ever establish standing based on an arguable “dilution” of his or her reputational esteem as opposed to being omitted outright from a patent. Instead, the Court found that because Ms. Richard’s allegations of reputational harm were wholly speculative and lacked any economic consequences, she had not established standing to challenge inventorship.
The case is Richards v. Kallish et al, Case No. 22-cv-9095 (CS) in the United States District Court for the Southern District of New York.
