Inventorship Rulings Show Fed. Cir.'s Sympathy for a Good Story

The U.S. Court of Appeals for the Federal Circuit recently issued six opinions involving issues of who is listed as an inventor or owns a patent. Unlike the court’s rulings on other patent issues, such as eligibility, the rulings generally have been favorable to inventors. Some attorneys say this is likely because telling a story about the person who came up with an invention humanizes what can be a highly technical area of law. Bloomberg Law interviewed Finnegan partner Cora Holt for her thoughts on the outcomes of these cases.

In two of the cases—Dana-Farber Cancer Institute v. Ono Pharm. Co. and Bio-Rad Labs., Inc. v. ITC—Cora believes the court did not need to rely on the narrative to come to their decision. She said, “In Dana-Farber, the court was really rejecting what was proposed to be a bright-line rule about public disclosure. And in Bio-Rad, the question was a little bit different, about an individual’s use information that was already in the public domain.”

In Hologic, Inc. v. Minerva Surgical, Inc., which is now before the Supreme Court of the United States, the Federal Circuit found it was bound to apply assignor estoppel, the doctrine that an inventor who assigns patent rights to someone else cannot later claim the patent was wrongly issued. The justices discussed narrowing the doctrine to ensure there is no logical inconsistency between an inventor’s prior representations and that inventor’s current challenge to a patent’s validity. Cora said, “Obligations to assign can really circumscribe what people are able to do in the future. The interest in whether to limit or abolish assignor estoppel is a direct result of the fact that it does come up a lot more given the way that people move around and start their own companies.”

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