A Federal Circuit Reminder of the Continued Importance of Laboratory Notebooks and Other Corroborative Evidence of Inventorship
Stephen Parker | April 22, 2016
Meng v. Chu
April 5, 2016
Before: Prost, Dyk and Wallach. Opinion by Prost
In 1987, a research group at the High Pressure Low Temperature (“HPLT”) lab at the University of Houston lead by Ching-Wu Chu, a professor and the lab’s lead investigator, developed inventions related to superconducting compounds having transition temperatures higher than the boiling point of liquid nitrogen. The University of Houston filed two applications listing Chu as the sole inventor. The inventions were assigned to the University of Houston and licensed to Dupont. The University of Houston and Ching-Wu evenly shared the license proceeds received from Dupont, and Chu gave $274,000 from his share to Pei-Herng Hor, a grad student at the lab, and Ruling Meng, an independent scientist at the lab. After issuance of patents for the inventions, in 2008 Hor filed a law suit in the District Court for the Southern District of Texas seeking to be added as a co-inventor and in 2010 Meng intervened seeking to also be added as a co-inventor. The District Court denied both Hor’s and Meng’s claims on the bases that they had failed to meet the “heavy burden” of proving co-inventorship by clear and convincing evidence despite Hor and Meng having received proceeds under the license, having been the first and second listed authors on a publication related to the inventions, and having been commended by Chu in a letter of recommendation for Hor for his discoveries related to the inventions. The Federal Circuit affirmed.
The patents at issue (i.e., U.S. 7,709,418 and U.S. 7,056,866) relate generally to superconducting compounds having transition temperatures higher than the boiling point of liquid nitrogen, including (a) compounds having a 2-1-4 ratio of Yttrium to Barium to Copper (YBCO-214) in the ‘418 patent and (b) compounds having of 1-2-3 ratio of Yttrium and/or certain rare earth elements (such as Gadolinium, Europium, and Samarium), Barium, Copper, and Oxygen (YBCO-123) in the ‘866 patent.
Ching-Wu Chu (Chu) is the sole named inventor. Chu worked with Pei-Herng Hor (Hor) and Ruling Meng (Meng) in the High Pressure Low Temperature (“HPLT”) lab at the University of Houston. Chu was a professor and the lab’s principle investigator, Hor was Chu’s graduate student, and Meng was an independent scientist.
Between December 1986 and January 1987, the group contemplated substituting Yttrium for Lanthanum in a prior art compound. Both Hor and Chu claim that they were the first to come up with the idea of substituting Yttrium for Lanthanum.
This substitution was first performed in late January, 1987 using a 2-1-4 ratio of Yttrium to Barium to Copper (YBCO-214). The resulting compound became the subject of the ’418 patent.
In February 1987, the group began work on pair-breaking experiments which partially substituted Gadolinium, the most magnetic rare earth element, for Yttrium in YBCO-214. Pair-breaking experiments ramped up in early March 1987, but with a new focus: instead of partially substituting magnetic rare earth elements for Yttrium in YBCO-214, the group completely substituted magnetic rare earth elements for Yttrium in YBCO-123. These complete substitutions appear to have been contemplated as early as March 7, as a lab notebook entry shows chemical formulas for completely substituting rare earth elements in YBCO-123 on this date.
Hor and Chu disagree as to how this new series of experiments came about. According to Chu, he originally had the idea to perform complete rare earth substitution back in February, when he performed partial rare earth substitution and observed that this did not suppress superconductivity. He then claims that, as a natural consequence of this activity, he instructed Meng in March to try complete substitution of Europium and Samarium, followed by Gadolinium and other rare earth elements. Hor does not claim responsibility for the Europium and Samarium substitutions, but instead dismisses them as “substitutions [likely] done by Meng as a part of a vast number of different elements being tried by the HPLT lab.” Hor claims that the true surge in complete rare earth substitution experiments began with the successful substitution of Gadolinium on March 15. Hor claims that he triggered this activity on March 11 or 12, when he instructed Meng to synthesize a compound that completely substituted Gadolinium for Yttrium in YBCO-123.
On March 16, Chu submitted a paper describing complete substitution of the rare earth elements in YBCO-123, which was published on May 4. Hor and Meng are listed as first and second authors to the paper, and Chu is listed last. The article does not mention partial substitution of rare earth elements in YBCO-214.
On March 26, Chu submitted a continuation-in-part application which claimed partial and complete substitutions of the rare earth elements. This application eventually issued as the ’866 patent.
In 1988, DuPont licensed the technology relating to the ’418 and ’866 patents. Chu shared the proceeds evenly with the University of Houston, and then, out of his remaining portion, gave $137,000 to Hor and $137,000 to Meng. In 1992, Chu wrote a letter of recommendation for Hor in support of his promotion and tenure at the university. The recommendation stated that “Pei’s contributions to our research on high temperature superconducting (HTS) and related materials have been significant and numerous” and that “[h]e and colleagues under his direction discovered the whole series of the so-called 123 compounds.”
Hor filed action in the District Court for the Southern District of Texas against Chu in December 2008 and Meng intervened in February 2010, both seeking correction of the inventorship as joint inventors for the ‘418 and ‘866 patents. Based on an eight-day bench trial, the District Court denied both Meng and Hor’s claims. Meng and Hor appealed the District Court’s decision to the Federal Circuit.
Summary of the Law:
1. In order to prevail on an inventorship claim under 35 U.S.C § 256, an alleged co-inventor must show that he contributed to the conception of the claimed invention and that his contribution was “not insignificant in quality, when that contribution is measured against the dimension of the full invention.” Acromed Corp. v. Sofamor Danek Grp., (Fed. Cir. 2001).
2. Because issued patents are presumed to correctly name their inventors, the burden of proving nonjoinder of inventors is a “heavy one,” which must be demonstrated by clear and convincing Hess v. Advanced Cardiovascular Sys., (Fed. Cir. 1997).
3. An alleged co-inventor’s testimony regarding his contribution must be corroborated, which courts assess under a “rule of reason” analysis. Ethicon, Inc. v. U.S. Surgical Corp., (Fed. Cir. 1998).
4. “Conception, and consequently inventorship, are questions of law” which the Federal Circuit reviews de novo. However, underlying factual determinations are reviewed for clear error, and “credibility determinations” are entitled to strong deference.
1. Hor contends that he made a significant contribution to the conception of the rare earth superconductors claimed in the ’866 patent because he initiated the complete replacement of Yttrium with Gadolinium on or around March 11, and Hor offers in support:
a. his own testimony that he conceived of the invention;
b. testimony from Meng and other individuals associated with the HPLT lab;
c. documentary evidence, including Chu’s 1992 letter of recommendation and excerpts from Chu’s publications; and
d. circumstantial evidence, including:
i. the timing of the “surge” of synthesis activity in March 1987,
ii. the timing of the continuation-in-part application and Chu’s paper which was submitted after substitutions that Hor claims credit for,
iii. the fact that Hor had been named a first author on the paper, and
iv. the fact that Chu shared $137,000 of the proceeds of the DuPont license with Hor.
Chu responds that the evidence cited by Hor was insufficient on the bases that:
1. Hor’s arguments ignore evidence that Chu had fully conceived of the ’866 patent before Hor’s Gadolinium experiments,
2. Hor’s corroborating witnesses were interested and/or lacking personal knowledge, and
3. Hor’s other evidence were equivocal.
The Federal Circuit agreed with Chu that Hor did not prove his claim for joint inventorship by clear and convincing evidence, emphasizing that:
1. Hor and Chu agreed at oral argument that a lab notebook entry dated March 7, 1987 contained chemical formulas for the complete substitution of rare earth elements in YBCO-123, and that Hor does not claim responsibility for these formulas.
2. Instead, the earliest date Hor cites for his version of the rare earth conception story is March 11 and, thus, even if Hor’s version of events was accepted, this would not be sufficient to establish that he was the first to conceive of complete rare earth substitution.
3. Hor has also not provided clear and convincing evidence that he contributed to conception, noting that:
a. “An alleged coinventor’s testimony, standing alone, cannot rise to the level of clear and convincing evidence; he must supply evidence to corroborate his testimony,”
b. the District Court found that Meng’s corroborating testimony was only “mildly persuasive,”
c. that the lab records “do not conclusively point one way or the other,” (i.e., noting that the alleged ‘surge’ in synthesis activity drawn from lab records which the district court found ‘do not conclusively point one way or the other,’ and could just as easily support Chu’s contention that he initiated complete rare earth substitution experiments in March, as it could Hor’s).
d. and that circumstantial evidence below was “just not especially convincing:”
i. Hor being named first author,
ii. the 1992 letter of recommendation (i.e., in which Chu wrote that “Pei’s contributions to our research on high temperature superconducting (HTS) and related materials have been significant and numerous” and that “[h]e and colleagues under his direction discovered the whole series of the so-called 123 compounds.”); and
iii. Hor’s compensation via the DuPont license payments (i.e., which Hor received $137,000.00).
Meng contends that she should be named a joint inventor of the ’418 and ’866 patents because she developed and implemented the solid state reaction methods by which the claimed superconducting compounds were synthesized. Meng asserts that her efforts, “through extensive experimentation and analysis, required more than the exercise of ordinary skill.” She emphasizes that Chu only provided her with general directions, and that she worked independently to come up with the specific steps for creating the superconducting compounds.
Here, the Federal Circuit explained that conception of a chemical compound “requires knowledge of both the specific chemical structure of the compound and an operative method of making it.” Fina Oil & Chem. Co. v. Ewen, (Fed. Cir. 1997). The Federal Circuit further explained that where the operative method requires “nothing more than the use of ordinary skill in the art,” this “would not normally be a sufficient contribution to amount to an act of joint inventorship.” Falana v. Kent State Univ., (Fed. Cir. 2012).
Although Meng asserted the contrary, the Federal Circuit expressed that she did not specifically explain what differentiates her efforts from what would have been the ordinary efforts of a skilled artisan. Accordingly, the Federal Circuit agreed with the District Court’s determination that “the evidence is not clear and convincing enough for the Court to find that suggesting [use of the solid state reaction method] was anything beyond that of ordinary skill in the profession.”
The Federal Circuit, thus, affirmed the district court’s determination that Meng did not prove her claim to correction of inventorship under § 256 by clear and convincing evidence.
1. A first takeaway from this case is to be mindful to maintain laboratory notebooks and other corroborative evidence of conception of inventions for proof of inventorship. While under the AIA evidence of conception is not needed for “first to invent” purposes, such evidence is important for proof of inventorship – and, hence, in some cases ownership (i.e., as absence contractual obligations to the contrary co-inventors are co-owners).
2. Another takeaway from this case is to be mindful that in many circumstances there are various individuals involved in projects that may later claim inventorship – and, hence, in some cases ownership. Accordingly, it may be prudent to obtain specific assignments and/or signed statements of non-inventorship and/or limited involvement from other participants to avoid later ownership-impacting inventorship disputes – for example, to memorialize when assistants’ activities involve routine engineering at one’s direction and nothing more than the use of ordinary skill in the art.
3. Another takeaway from this case is to be mindful of the type of information necessary to be corroborated in a laboratory notebook or the like for proof of inventorship – in particular, evidence of the first conception of an invention (i.e., including details of all aspects of the claimed invention).
4. Another takeaway from this case is to be mindful of the manner in which a laboratory notebook is maintained – for example, it may be desirable to have a laboratory notebook maintained for a particular individual (e.g., it may be desirable to have an inventor to maintain a personal notebook and to have assistants, etc., sign as witnesses in such a notebook, rather than having a lab notebook that may receive entries from various lab persons, and to also clarify, e.g., when assistants activities involve routine engineering at one’s direction and nothing more than the use of ordinary skill in the art).
5. Another takeaway from this case is to be mindful that if one is a genuine co-inventor, the clear and convincing evidence standard is a heavy burden for overcoming the presumption that inventorship has been correctly identified – e.g., circumstantial evidence, such as, e.g., letters of praise, payments, authorship, etc., may be insufficient to clearly and convincingly establish co-inventorship.