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Medical Student Presented Insufficient Evidence to Corroborate His Claim of Coinventorship

January 17, 2006
Blackford, Christopher T.

Decision icon Decision

Last Month at the Federal Circuit - February 2006

Judges: Mayer (author), Rader, and Linn

In Stern v. Trustees of Columbia University, No. 05-1291 (Fed. Cir. Jan. 17, 2006), the Federal Circuit affirmed the district court’s grant of SJ that Fredric A. Stern failed to present sufficient evidence to be named as a coinventor of U.S. Patent No. 4,599,353 (“the ’353 patent”).

The ’353 patent, owned by Columbia University (“Columbia”), is directed toward the use of prostaglandins in treating glaucoma. Laszlo Z. Bito, a faculty member at Columbia and the only named inventor, conceived the invention claimed in the ’353 patent while studying the effects of repeated prostaglandin application in rhesus monkeys.

Before the ’353 patent application was filed, Stern, who was then a medical student at Columbia, conducted experiments in Bito’s laboratoryrelating to the application of prostaglandin in rhesus monkeys. At that point, however, Bito had already published numerous papers on the effects of prostaglandins in various animals and had identified rhesus monkeys as a future subject for study. Stern’s experiments in Bito’s laboratory showed that application of a single dose of prostaglandin reduced intraocular pressure (“IOP”) but did not prove whether tachyphylaxis would develop in primates, the absence of which is required for successful glaucoma treatment.

After learning about the ’353 patent, Stern brought suit, seeking to be added as a coinventor. To determine inventorship, the trial court first construed the claims of the ’353 patent. The court construed the only disputed claim phrase, “to maintain reduced intraocular pressure,” to mean “maintenance of reduced intraocular pressure . . . without development of tachyphylaxis.” Using this construction, the district court held that Stern failed to present clear and convincing evidence of inventorship and granted Columbia’s motion for SJ.

On appeal, the Federal Circuit reviewed the grant of SJ de novo, ruling that Stern had failed to present sufficient evidence to corroborate his claim of coinventorship. In particular, the Court found that there was no collaboration between Stern and Bito in developing a glaucoma treatment. Rather, Stern merely carried out an experiment previously done by Bito on different animals. The Court further stated that Stern not only failed to conceive of any of the ideas underlying the claimed invention, but he also did not have an understanding of the claimed invention.

Stern also argued that his laboratory notebooks would have proved his claim of coinventorship had they not been destroyed by Bito. The Court, however, rejected Stern’s argument, ruling that regardless of the notebooks’ contents, unwitnessed laboratory notebooks alone are insufficient to support a claim of coinventorship.