September 21, 2020
Authored and Edited by Kyu Yun Kim; Thomas L. Irving; Stacy Lewis*
The case of Trans Ova Genetics, LC v. XY, LLC, No. 2019-2312 (Fed. Cir. Sept. 8, 2020) Rule 36 affirmance of IPR2018-00250 Is a lesson in determination of coauthorship and coinventorship. Here, the patentee came out winning simply because the IPR petitioner failed to carry its burden to prove that a prior art article was “of another” for failure to name one Green as a coauthor. Of interest, PTAB also found persuasive that Green was not a named coinventor as support for its conclusion that the petitioner failed to prove that Green should have been named as a coauthor on the prior art article. But the Federal Circuit, in oral hearing, pointed out that effectively the patentee, like the petitioner also put its head in the sand and failed to investigate exactly what Green did. The case could have come out differently, suggesting that if a patentee is going to draw on an article for support in the patent specification, it may, depending on all circumstances, be better for the patentee to find out what a person like Green actually did.
For more detailed analysis of this case, please see on Finnegan’s AIA Blog.
*Stacy Lewis is a Law Clerk at Finnegan
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.
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
Prosecution First Blog
March 29, 2024
INCONTESTABLE® Blog
Winning the Battle but Not the War: Disclaimer Requirement Overturned, Section 2(d) Objection Upheld
March 28, 2024
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.