Print PDF

Scientist Who Contributed to the Method of Making a Novel Compound Is a Joint Inventor of a Claim Covering That Compound

January 23, 2012

Decision icon Decision

Last Month at the Federal Circuit - February 2012

Judges: Linn (author), Prost, Reyna

[Appealed from: N.D. Ohio, Senior Judge Dowd]

In Falana v. Kent State University, No. 11-1198 (Fed. Cir. Jan. 23, 2012), the Federal Circuit affirmed the district court’s holding that Dr. Olusegun Falana, who contributed the method for making the claimed compounds, is a joint inventor of Kent State University’s (“Kent State”) U.S. Patent No. 6,830,789 (“the ’789 patent”).

Kent Displays, Inc. (“KDI”), a spin-off of Kent State, hired Falana to make certain chemical compounds. While working on this project, Falana developed a method for making a novel class of compounds (“Synthesis Protocol”) and made a compound within that class, designated as Compound 7. After Falana left Kent State, Dr. Alexander J. Seed made a second compound, designated as Compound 9, using Falana’s Synthesis Protocol. Later, KDI and Kent State filed an application and obtained the ’789 patent, which claimed a genus of compounds related to Compound 9. The ’789 patent named Seed and KDI scientists, Drs. Joseph Doane and Asad Khan, as inventors and disclosed Falana’s Synthesis Protocol as the method to synthesize the claimed compounds.

After learning that he was omitted as an inventor on the ’789 patent, Falana filed a 35 U.S.C. § 256 action against Kent State, KDI, Seed, Doane, and Khan to correct inventorship. Doane, Khan, and KDI did not oppose the addition of Falana as a joint inventor and the district court dismissed them from the case. After a bench trial, the district court concluded that Falana contributed to the conception of the claimed invention by, among other things, developing the Synthesis Protocol. In addition, finding the case to be exceptional, the district court awarded Falana attorney fees with the amount to be determined later. Kent State and Seed appealed.
On appeal, Kent State and Seed contended that the district court erred on multiple grounds, including claim construction, exclusion of two exhibits, conclusion that Falana was an omitted joint inventor on the ’789 patent, and finding the case exceptional and awarding attorney fees to Falana. Initially, with respect to claim construction, the Court ruled that the claims of the ’789 patent should not be limited by the specification because the specification suggested a modifiable characteristic of the claimed compounds and the prosecution history was silent on this point. Accordingly, the Court affirmed the district court’s claim construction.

Second, at trial, Kent State and Seed offered two exhibits in an effort to show that the Synthesis Protocol was in the prior art and was in fact known to Seed before his work with Falana. Both the district court and the Court found that those two exhibits showed only that portions, not the entirety, of the Synthesis Protocol were known in the art. Further, although the district court excluded these exhibits, it permitted Seed the opportunity to explain the portions of the Synthesis Protocol, and, thus, the Court held that the exhibits would be cumulative of his testimony. As a result, the Court found no abuse of discretion by the district court to exclude those exhibits.

Next, although Kent State and Seed did not challenge any of the district court’s findings of fact, they argued on appeal that Falana’s contribution to the Synthesis Protocol was insufficient to make him a joint inventor of the claims of the ’789 patent, all directed to chemical composition and not methods, and that Falana’s Compound 7 did not fall within the scope of the claims. Initially, the Court reiterated its previous holding that the conception of a compound requires knowledge of both the chemical structure of the compound and an operative method of making it. Thus, the Court affirmed the district court’s decision that Falana’s contribution of the method for making the claimed compounds was enough of a contribution to conception to pass the threshold required for joint inventorship. Specifically, the Court found that KDI and Seed’s post-lawsuit characterization that Falana’s Synthesis Protocol was known in the art was not credible and that Falana did not develop the Synthesis Protocol by simply following the teachings of others. In addition, the Court found that Falana developed the Synthesis Protocol to synthesize Compound 7, noting that KDI considered Compound 7, within a previously unknown genus of compounds, as a “great improvement” because it represented “significant progress.” Finally, the Court found that Seed used Falana’s Synthesis Protocol to make Compound 9. In addition, the Court rejected the argument that Falana did not contribute to the conception of Compound 9. After all, the Court noted, Falana contributed to the conception of a genus of compounds, a subset of which was claimed in the ’789 patent, by providing the method of making the genus.

Finally, the Court found that the district court’s exceptional case ruling and its decision to award unquantified attorney fees were not final. Consequently, they were not reviewable on appeal. The Court refused to exercise pendent appellate jurisdiction over this issue because Kent State and Seed did not—nor from the record could they—argue that the exceptional case determination and award of attorney fees are “inextricably intertwined with the determination on the merits or that the exceptional case determination and award of attorney fees must be reviewed in order to properly review the decision on the merits.” Slip op. at 20.
Accordingly the Court affirmed the district court’s determination that Falana is a joint inventor of the ’789 patent.

Summary authored by Ian Y. Liu, Ph.D., Esq.