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Doctor Excluded on Patent Application by Former Employer Wins Case to Correct Inventorship and Ownership and is Awarded Attorneys' Fees

Stan Gibson's Notes from the Inventor Underground

Doctor Excluded on Patent Application by Former Employer Wins Case to Correct Inventorship and Ownership and is Awarded Attorneys’ Fees

Patent and Technology trial lawyer Stan Gibson discusses the critical importance of identifying the correct inventors on a patent application.

Stan Gibson, Intellectual Property Trial Attorney

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Dr. Olusegun Falana (Dr. Falana) filed a complaint against Kent State University ("Kent State") and the inventors listed on the U.S. Patent No. 6,830,789 ("the ‘789 Patent") seeking to correct the ownership of the patent. Dr. Falana alleged that he was an omitted co-inventor of the ‘789 Patent. After a bench trial, the district court agreed with Dr. Falana and ordered that the ‘789 Patent should be corrected to reflect Dr. Falana as a co-inventor. The district court also found that the case was exceptional and awarded attorneys’ fees to Dr. Falana. Kent State appealed from the district court’s ruling.

Kent Displays, Inc. ("KDI") is a privately owned corporation that is a spin-off technology company formed by Kent State. KDI designs and manufactures liquid crystal displays ("LCDs") used in electronic devices, such as cell phones, digital cameras and e-books. KDI started a research program to develop chiral additives, which are chemical compounds that can be used to improve the performance characteristic of LCDs, such as the display’s color, contrast and brightness. Due to time constraints on the project, Dr. Falana was selected to help with the project and was expected to work independently and have his own ideas while working on the KDI project. While conducting his research, Dr. Falana developed a synthesis protocol and synthesized additional compounds. One of the other doctors working on the project described the interaction with Dr. Falana and others as a team process and even wrote a letter to the INS in support of Dr. Falana’s immigration status, where he stated that Dr. Falana’s "outstanding performance led to a patent we are currently preparing and a proposal we have submitted to the [National Science Foundation]."

According to the Federal Circuit, "[t]he patent specification discloses the Synthesis Protocol developed by Falana as the protocol utilized to synthesize the claimed class of chiral compounds." Once the ‘789 Patent issued, Dr. Falana discovered that he was not listed as an inventor. After receiving unsatisfactory answers as to why he was not listed on the patent as an inventor, Dr. Falana filed an action to correct inventorship.

After a bench trial, the district court found that Dr. Falana contributed to the conception of the claimed invention, by inter alia, the development of the Synthesis Protocol. The district court also found that the case was exceptional and that the defendants engaged in inequitable conduct. Accordingly, the district court awarded attorneys’ fees in favor of Dr. Falana.

On appeal, the defendants contended that the district court erred in the claim construction and erred in concluding that Dr. Falana was an omitted co-inventor on the ‘789 Patent. Ultimately, the Federal Circuit agreed with Dr. Falana that the patentee meant to claim the entire class of compounds covered by the plain language of the claims and the specification should not be used to limit the claims absent a clear statement evidencing an intent to limit the claims to the written description.

After determining the scope of the claims, the Federal Circuit noted that "[i]nventorship is a question of law that we review without deference." "A joint invention is the product of collaboration between two or more persons working together to solve the problems addressed … People may be joint inventors even though they do not physically work on the invention together or at the same time, and even though each does not make the same type or amount of contribution." The Federal Circuit then noted that "the critical question for joint conception is who conceived, as that term is used in the patent law, the subject matter of the claims at issue" and that "contribution to one claim is enough."

After analyzing the relevant law, the Federal Circuit framed the question as follows: "The question before this court is whether 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." The Federal Circuit answered the question by stating that

"[w]here the method requires more than the exercise of ordinary skill, however, the discovery of that method is as much a contribution to the compound as the discovery of the compound itself. This case is simply the application of the well-known principle that conception of a compound requires knowledge of both the chemical structure of the compound and an operative method of making it. Accordingly, this court holds that a putative inventor who envisioned the structure of a novel genus of chemical compounds and contributes the method of making that genus contributes to the conception of that genus."

Finally, the Federal Circuit concluded that Dr. Falana had contributed to the claims of the patent even though he had not contributed to a particular compound that was synthesized after he left.

"Although the Defendants argue that Falana did not contribute to the conception of Compound 9 because Compound 9 was first synthesized after Falana left the team, this argument is inapposite. The claims of the ‘789 Patent are not limited to Compound 9. Instead, they claim a subset of the entire genus of naphthyl substituted TADDOLs—those which are RR enantiomers. Falana contributed to the conception of this genus by providing the team of which he was a part with the method for making these novel compounds. Falana’s lack of contribution to the discovery of Compound 9 itself does not negate his contribution of the method used by the other inventors to make the genus of compounds covered by the claims at issue."

Accordingly, the Federal Circuit affirmed the district court’s holding that Dr. Falana was a joint inventor.

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This case is significant not only because of the central holding that the inventor of a method that leads to the discovery of compounds is a joint inventor of the compound, but also because it is a reminder of the critical importance of identifying the correct inventors on a patent application. Inventorship also carries with it ownership rights so that KDI now has a situation where it does not own all of the rights to the patent. In addition, given the district court’s findings, it is likely that any defendant who is sued for allegedly infringing the patent will argue that the patent is invalid for intentionally failing to list the proper inventors of the patent.

Olusegun Falana v. Kent State University and Alexander Seed, Case No. 2011-1198 (Fed. Cir. Jan. 23, 2012).