Authored by: Jeremy J. Gustrowsky
In a recent decision, the Federal Circuit affirmed a win for Lancium LLC in a dispute brought by BearBox LLC and its founder, Austin Storms, over patented technology for managing power consumption in Bitcoin mining datacenters. The case revolved around whether BearBox could claim damages under Louisiana state law for Lancium’s alleged use of BearBox’s technology, and whether Mr. Storms should be named as an inventor on Lancium’s U.S. Patent No. 10,608,433.
BearBox’s claims stemmed from a 2019 dinner conversation and a follow-up email in which Mr. Storms shared information about his system with Lancium’s co-founder. Lancium later filed for the ’433 patent, but did not name Mr. Storms as an inventor. BearBox argued that Lancium’s patent incorporated its ideas and sought damages under a state law conversion claim—essentially arguing that Lancium had “converted” BearBox’s technology for its own use.
The Federal Circuit held that federal patent law preempts such state law claims when they seek “patent-like” protection for ideas that are not patented. The court found BearBox’s conversion claim was really an attempt to recover damages similar to those available for patent infringement, which is not allowed when the technology is unpatented and has been shared publicly. The court also upheld the district court’s decision to exclude BearBox’s late-filed expert report and found that BearBox failed to prove Mr. Storms was a sole or joint inventor of the ’433 patent.
This decision underscores that once an invention is publicly disclosed and not protected by a patent, state law cannot be used to claim exclusive rights or damages for its use by others. The ruling also highlights the importance of timely expert disclosures and the high bar for proving inventorship after a patent has issued.