inventorship : CAFC Alert

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

Summary

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.


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Problems That May Arise When Inventor Changes Employment: Obviousness-type Double Patenting

Stephen G. Adrian | March 13, 2013

In Re Jeffery Hubbell

March 7, 2013

Panel:  Newman, O’Malley and Wallach.  Opinion by O’Malley.  Dissent by Newman.

Summary

Most patent practitioners would not be worried about an issued patent having a much later filing date than the application they are prosecuting. However, this case illustrates that such a patent can ultimately bar their application from issuing due to the doctrine of obviousness-type double patenting.


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A District Court application of Therasense

Lee Wright | February 28, 2013

Caron and Spellbinders Paper Arts Company, LLC vs. QuicKutz, Inc.

United States District Court for the District Of Arizona

November 13, 2012, Decided

 

SUMMARY

In Therasense, Inc. v. Becton, Dickinson & Company, 649 F.3d 1276 (Fed. Cir. 2011) the CAFC ruled that District Courts must find intent and materiality separately, i.e., weighing the evidence of intent to deceive independently from analysis of materiality.

Here, in one of the few cases since Therasense, a District Court applies separate analyses for each of intent and materiality.  In addition, the District Court applied the exception to the but-for materiality requirement in cases of affirmative egregious misconduct.

Knowingly not naming the inventors was held to be inequitable conduct.

Declarations by persons not skilled in the art were held to be inequitable conduct.

Declarations that did not disclose financial relationships with the inventors were held to be inequitable conduct.

A Declaration where the Declarant, when he made the declaration, did not know whether the statements in the declaration were true or not was held to be inequitable conduct.


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CAFC Allows Willful Infringer to Continue Infringements for an “Ongoing Royalty” Due to “the Public’s Interest to Allow Competition in the Medical Device Arena”

Stephen Parker | February 16, 2012

Bard Peripheral Vascular, Inc., et al. v. W.L. Gore & Associates, Inc.

February 10, 2012

Panel: Gajarsa, Linn and NewmanOpinion by Gajarsa.  Dissent by Newman.

Summary

This decision concludes a forty-year-long story that began in 1973 between two cooperating individuals that independently filed patent applications for vascular grafts in 1974.  Those applications went to interference in 1983 and have been the subject of ongoing litigation since, concluding now in the current CAFC decision.  The Arizona district court from which the present case was appealed expressed that this was “the most complicated case the district court has [ever] presided over.”  In this case, the Gore inventor was the first to both 1) conceive of the invention and 2) file a patent application in 1974 (i.e., filing 6 months prior to the Bard inventor), but Gore lost in an interference before the Patent Office.  Now, Gore is found to be willfully infringing the patent that was awarded to Bard, and is subjected to doubled damages (i.e., totaling $371 million) and attorney’s fees (i.e., totaling $19 million).  However, despite these findings, the CAFC allows Gore to continue infringing, declining a permanent injunction and awarding reasonable royalties in the amount of between 12.5% to 20% for future infringements due to the weight of “the public interest to allow competition in the medical device arena.”


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Joint Inventorship of a novel compound may exist even if co-inventor only developed method of making

Bernadette McGann | January 25, 2012

Falana v. Kent State University and Alexander J. Seed

January 23, 2012

Panel:  Linn, Prost and Reyna.  Opinion by Linn.

Summary

The CAFC held that a putative inventor who envisioned the structure of a novel chemical compound and contributed to the method of making that compound is a joint inventor of a claim covering that compound.  One may be a joint inventor even if co-inventor’s contribution to conception is merely a method of making the claimed product and said co-inventor does not synthesize the claimed compound.


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