July 21, 2020
Authored and Edited by Yoonhee Kim; Kara A. Specht; Elizabeth D. Ferrill
In Dana-Farber Cancer Institute v. Ono Pharmaceutical Co., No. 19-2050 (Fed. Cir. July 14, 2020), the Federal Circuit affirmed a district court judgment ordering two scientists, Dr. Gordon Freeman and Dr. Clive Wood, to be added as co-inventors on Ono Pharmaceutical’s patents claiming the use of antibodies to target a specific receptor (PD-1) or its ligand (PD-L1) to treat cancer.
The Federal Circuit held that Drs. Freeman and Wood’s work contributed to the conception of the patented inventions in this particular case. Specifically, Drs. Freeman and Wood collaborated with Inventor Dr. Tasuku Honjo, the Nobel Prize winner for his discovery of PD-1, and provided what the Court found to be “significant building blocks” for the particular inventions, including their discoveries of PD-L1, the PD-1/PD-L1 interaction being inhibitory, and PD-L1 expression in human tumors.
The Federal Circuit rejected Ono’s arguments challenging the extensiveness of Drs. Freeman and Wood’s contributions to conception. The Federal Circuit viewed that none of the proffered bases in this particular case—Drs. Freeman and Wood’s absence from certain experiments leading to conception, no previous in vivo work by them, the novelty and nonobviousness of the claimed inventions over a patent application reflecting Drs. Freeman and Wood’s contribution, and publication of their work a few weeks prior to conception of the total invention—necessarily negated the alleged inventors’ overall contributions to conception of the invention throughout their collaborations with Dr. Honjo.
Copyright © 2020 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
Conference
2024 Licensing Executives Society USA – Canada Annual Meeting
October 20-23, 2024
New Orleans
Conference
4th Annual Passport to Proficiency on the Essentials of Hatch-Waxman and BPCIA
October 8-24, 2024
Virtual
Conference
2024 Corporate Counsel Women of Color: Career Strategies Conference
October 2-5, 2024
Las Vegas
Hybrid Conference
2024 Patent Law Institute: Critical Issues & Best Practices
September 30 - October 1, 2024
New York
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.