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Donald G. Richardson v. Suzuki Motor Co., Ltd.

868 F.2d 1226, 9 U.S.P.Q.2d 1913 (1989)

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Donald G. Richardson v. Suzuki Motor Co., Ltd.

United States Court of Appeals for the Federal Circuit

868 F.2d 1226, 9 U.S.P.Q.2d 1913 (1989)

Facts

Donald G. Richardson (plaintiff) invented a modified suspension system, for which he obtained a patent. Richardson entered an agreement with Suzuki Motor Company, Ltd. (Suzuki) (defendant) under which Suzuki was granted the right to test Richardson’s suspension system and use Richardson’s proprietary knowledge, which Richardson was obligated to provide during the term of the agreement. Richardson and a colleague then devised an improvement involving an alternate shock mount. This was disclosed to Suzuki. Later that year, Suzuki filed corresponding patent applications in Japan and the United States claiming the alternate shock mount disclosed by Richardson, plus another claim for a modification by Suzuki. Richardson brought a patent-infringement suit in federal district court. Aside from the federal claims of infringement, the suit included state-law claims of fraud, misappropriation of trade secrets, breach of contract, and breach of the implied covenant of good faith and fair dealing. Richardson also moved for assignment of the Suzuki patents. The court denied Richardson’s motion, reasoning that Richardson was not the only inventor responsible for the Suzuki patents’ claims, both because he had collaborated with a colleague on the alternate shock mount and because Suzuki claimed its modification in the same patents. The court found no infringement. Richardson appealed to the United States Court of Appeals for the Federal Circuit.

Rule of Law

Issue

Holding and Reasoning (Newman, J.)

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