A Notice of Allowance was issued to the University of California by the United States Patent & Trademark Office ("USPTO") for composition of matter claims pending in a patent application licensed by Cytori Therapeutics . The allowed claims cover a population of stem cells, progenitor cells and other replicating cells, which can be obtained from human adipose tissue.
The allowed patent broadens Cytori's current patent portfolio for adipose-derived cell therapies and strengthens Cytori's ability to freely develop future therapeutics. The cells covered by the allowed claims are believed to encompass a clinically important subpopulation of cells within adipose tissue. The subpopulation of human cells described in the patent was defined by characterizing specific cell surface markers for cells, which posses the ability to self replicate and differentiate toward one or more lineages.
IPBiz notes published US application 20030082152, with first claim
An isolated adipose-derived stem cell (ADSC).
The patent application notes: This patent application is a continuation-in-part (CIP) of U.S. Ser. No. not yet known, filed Sep. 10, 2001, which corresponds to PCT application No. PCT/US00/06232, filed Mar. 10, 2000, which claims the benfit of the filing dates of U.S. Ser. No. 60/123,711, filed Mar. 10, 1999, and U.S. Ser. No. 60/162,462, filed Oct. 29, 1999.
First inventor Marc H. Hedrick, M.D., is President, Cytori Therapeutics, once of UCLA (From 1998 until 2005, he directed the Laboratory of Regenerative Bioengineering and Repair for the Department of Surgery at UCLA.)
IPBiz also notes published US application 20060228796, titled Adipose tissue-derived adult stem cells for the repair of articular cartilage fractures and uses thereof , assigned to Artecel, Inc. , which has first claim:
A composition comprising an isolated adipose tissue-derived adult stem cell that can differentiate into a chondrocyte in combination with a viscous, biocompatible liquid material implanted into a host, wherein the host is in need of articular cartilage repair.
IPBiz notes that if the names Hedrick and Artecel sound familiar, they should. There was a certain inventorship case in CD Cal, discussed by, among others, Patent Docs, who wrote:
On June 9, 2008, the University of Pittsburgh obtained a judgment correcting inventorship of U.S. Patent No. 6,777,231 under 35 U.S.C. § 256. The U.S. District Court for the Central District of California determined that several of the inventors, who had assigned their rights to the Regents of the University of California, were not properly named as inventors, thus extinguishing the Regents' rights and nullifying a license from the University of California to Cytori Therapeutics, Inc. As a consequence, the Pittsburgh licensee, Artecel Inc., became the sole licensee of the '231 patent.
As granted, the '231 patent named Adam J. Katz, Ramon Llull, William J. Futrell, Marc H. Hedrick, Prosper Benhaim, Hermann Peter Lorenz, and Min Zhu as inventors, and the patent is assigned to both the University of Pittsburgh and the Regents of the University of California.
Based on these factual findings, the District Court concluded that the University of Pittsburgh had carried its burden of showing by clear and convincing evidence that the UCLA inventors (Benhaim, Hedrick, Lorenz, and Zhu) were not inventors of the invention claimed in the '231 patent. According to the Court, the evidence established that Dr. Hedrick's work regarding differentiation of adipose-derived stem cells into nerve cells occurred after Drs. Katz and Llull conceived of the claimed invention, i.e., adipose-derived stem cells that could be induced to differentiate into multiple cell types (adipose and muscle cells). The Court concluded that the UCLA inventors' work merely "confirmed the operability of the invention." Thus, only Drs. Katz and Llul are properly named as inventors of the '231 patent.
As a result of the case, the licensee of the University of Pittsburgh, Artecel Inc., became the sole licensee of the '231 patent.
Patent Docs also wrote -->
Cytori Therapeutics, the University of California's licensee, had this to say on its website regarding the District Court's decision:
Cytori believes the recent decision on the '231 patent is in error and that work completed at the University of California was critical to obtaining this patent. Cytori recognizes that [the] '231 [patent] may have value in the long term in areas unrelated to the Company's existing product pipeline, and consequently Cytori and the UC Regents are reviewing their legal alternatives to this ruling, including that of appealing this decision to the Federal Circuit. It is Cytori's intention to aggressively protect its business, its intellectual property and its investors.
However, the company also asserts that losing its rights to the technology claimed in the '231 patent is not critical to its business:
The Court's decision [in the '231 inventorship lawsuit] does not impact Cytori's primary ongoing business activities or product development pipeline because Cytori's products do not practice the '231 patent. Cytori's Celution® System yields an output comprising a diverse mixture of cells found in adipose tissue whereas the '231 patent covers a narrowly defined population of adipose derived adult stem cells in an environment substantially free of other cellular materials found in adipose tissue. The output that is covered by the '231 patent requires different isolation or processing techniques, which are unnecessary for therapeutic efficacy, and which the Celution System, by design, does not perform.
Cytori's Celution® System device is protected, according to the company, by U.S. Patent No. 7,390,484.
Note NARTRON v. SCHUKRA on co-inventorship issues.
Inventorship is a question of law, which we review without deference. Ethicon,
Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998). “The inventors as
named in an issued patent are presumed to be correct.” Hess v. Advanced
Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed. Cir. 1997) (quotation marks omitted).
Thus, a party alleging non-joinder “must meet the heavy burden of proving its case by
clear and convincing evidence.” Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1358
(Fed. Cir. 2004).
“One who simply provides
the inventor with well-known principles or explains the state of the art without ever
having a firm and definite idea of the claimed combination as a whole does not qualify
as a joint inventor.” Ethicon, 135 F.3d at 1460 (quotation marks omitted); see
Caterpillar Inc. v. Sturman Indus., Inc., 387 F.3d 1358, 1377 (Fed. Cir. 2004) (“[A]
person will not be a co-inventor if he or she does no more than explain to the real
inventors concepts that are well known in the current state of the art.” (quotation marks
omitted)). Moreover, a joint inventor must “contribute in some significant manner to the
conception or reduction to practice of the invention [and] make a contribution to the
claimed invention that is not insignificant in quality, when that contribution is measured
against the dimension of the full invention.” Pannu v. Iolab Corp., 155 F.3d 1344, 1351
(Fed. Cir. 1998); see Caterpillar, 387 F.3d at 1377 (quoting Fina Oil & Chem. Co. v.
Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997)).
Here, Borg Indak asserts that Benson contributed the extender for a lumbar
support adjustor. However, the contribution of the extender is insignificant when
measured against the full dimension of the invention of claim 11, not just because it was
in the prior art, but because it was part of existing automobile seats, and therefore
including it as part of the claimed invention was merely the basic exercise of ordinary
skill in the art. See Fina Oil, 123 F.3d at 1473 (“The basic exercise of the normal skill
expected of one skilled in the art, without an inventive act, also does not make one a
joint inventor. Therefore, a person will not be a co-inventor if he or she does no more
than explain to the real inventors concepts that are well known and the current state of
the art.” (citations omitted)); see also Eli Lilly, 376 F.3d at 1362 (“A contribution of
information in the prior art cannot give rise to joint inventorship because it is not a
contribution to conception.”).
[IPBiz loves cases citing the John Ewen case.]