IPBiz disagrees with Patently-O about Kent State decision of CAFC
On January 24, Patently-O wrote about the Kent State case of the CAFC with the following text:
Comment: The court was also careful to limit its holding in another way. It could have concluded that Falana was inventor simply due to his contribution to the method used to make Compound 9. It did not. Instead, the panel held "that a putative inventor who envisioned the structure of a novel genus of chemical compounds and contributes the method of making that genus contributes to the conception of that genus." Id. at 15 (emphasis added). It was able to articulate the rule in this way because it agreed with the district court that the patent's independent claims do not include a temperature independence limitation - in other words, the claims as construed were not limited to Compound 9, but rather encompassed the genus of compounds produced using Falana's synthesis protocol. Falana thus contributed both to the method of making the genus as well as the structure of the genus itself. The opinion implies that the outcome could conceivably be different if the claims had been limited to Compound 9. See, e.g., Slip Op. at 17.
The opinion at page 17 states the following:
Although the Defendants argue that Falana did not contribute to the conception of Compound 9 because Compound 9 was first synthesized after Falana left the team, this argument is inapposite. The claims of the ’789 Patent are not limited to Compound 9. Instead, they claim a subset of the entire genus of naphthyl substituted TADDOLs—those which are RR enantiomers. Falana contributed to the conception of this genus by providing the team of which he was a part with the method for making these novel compounds. Falana’s lack of contribution to the discovery of Compound 9 itself does not negate his contribution of the method used by the other inventors to make the genus of compounds covered by the claims at issue.
The district court did not err in concluding that Falana’s contribution of the method used by the team of which he was a part for making the claimed compounds was enough of a contribution to conception to pass the threshold required for joint inventorship. We therefore affirm the district court’s determination.
IPBiz disagrees with the assertion --The opinion implies that the outcome could conceivably be different if the claims had been limited to Compound 9. -- IPBiz says the CAFC would say Falana was a co-inventor to a claim limited to compound 9 BECAUSE of his contribution to the method of making the genus of which compound 9 is a member. Falana contributed to conception of compound 9 by providing a way of implementing (synthesizing) compound 9. There was no disclosure in the specification of any method, other than Falana's, to make compound 9. It is separately correct that the opinion at page 17 does NOT imply
-- the outcome could conceivably be different if the claims had been limited to Compound 9 --
Falana's argument had appeared on page 13:
Falana responds that he was the one who developed the Synthesis Protocol, which made it possible to make a previously-unknown genus of compounds, to wit, naphthyl substituted TADDOLs. This was the method used by Falana to synthesize Compound 7, the method used by Seed to synthesize Compound 9, and the only method disclosed in the ’789 Patent for making the claimed compounds. Finally, Falana contends that because he contributed the method of making the novel class of compounds claimed in the ’789 Patent, his contribution to conception was sufficient to make him a joint inventor.
See also IPBiz post on 23 January 2012 Kent State University loses in Falana case
the text of the decision
**Some further commentary at Patently-O
OL said...
I must be missing something but this opinion is confusing me and seems internally inconsistent or at least incomplete. It says at page 17:
"Although the Defendants argue that Falana did not contribute to the conception of Compound 9 because Compound 9 was first synthesized after Falana left the team, this argument is inapposite. The claims of the ’789 Patent are not limited to Compound 9. Instead, they claim a subset of the entire genus of naphthyl substituted TADDOLs—those which are RR enantiomers. Falana contributed to the conception of this genus by providing the team of which he was a part with the method for making these novel compounds."
So, if a claim was limited only to Compound 9, the opinion seems to suggest that Falana would not be a joint inventor because compound 9 was discovered after Falana left EVEN THOUGH Falana still contributed the method to make compound 9.
The opinion in the above passage then suggests that the actual claimed subject matter includes more than compound 9 and includes the entire sub-genus of RR enantiomers. It is clear Falana conceived and reduced to practice one embodiment of the larger genus that includes both RR and SS enantiomers but there is nothing highlighting that Falana himself conceived and reduced to practice a RR enantiomer. The closest we get is a statement on page 4 that "Falana’s Synthesis Protocol could be used, and was used, to synthesize both RR and SS enantiomers." If Falana himself synthesized RR enantiomers that fell within the claims then Falana is clearly a joint inventor of the sub genus (ie those limited to RR enantiomers) or maybe even if the RR enantiomers were made by others on the team while Falana was still there then Falana was a joint inventor of the RR sub genus.
But if the RR enantiomers were made by others using Falana's method only after he left then the RR subgenus looks just like a claim to compound 9 and the opinion implies that compound 9 itself would not by jointly invented. If this analysis is sound then I am confused why the opinion does not tell us when the first RR enantiomers were made using the method. And if the timing of the first synthesis of the sub genus of RR enantiomers is not relevant then why did the opinion imply that it would be relevant for a claim limited to compound 9?
Reply Jan 25, 2012 at 04:15 PM
IANAE said in reply to OL...
So, if a claim was limited only to Compound 9, the opinion seems to suggest that Falana would not be a joint inventor because compound 9 was discovered after Falana left EVEN THOUGH Falana still contributed the method to make compound 9.
That's a questionable interpretation of what is essentially dicta anyway. The court was rejecting all arguments based on who didn't invent Compound 9 because the claim was not limited to Compound 9. Had the claim been so limited, they would have considered the argument, but they don't commit to whether it's a winner.
What really surprises me is that there's no specific finding of whether Compound 7 falls within the claim.
But if the RR enantiomers were made by others using Falana's method only after he left then the RR subgenus looks just like a claim to compound 9 and the opinion implies that compound 9 itself would not by jointly invented.
What if the RR enantiomers were made by others using Falana's method after Falana left the room? Same answer?
When multiple inventors are named on a patent, it's not usually because they all thought of claim 1 at the same time or they were all in the room when the new material was created. That's not the only way to make an inventive contribution.
Reply Jan 25, 2012 at 04:28 PM
The above comments really miss the point of what the CAFC was saying. Falana himself didn't make compound 9 AND he didn't make any compound within the scope of the claim. That is irrelevant to the point of conception: an idea AND a way of implementing it. Only Falana provided a way of making the compounds in the claim. He is a co-inventor for that reason.
He would be a co-inventor of a claim only to compound 9. The CAFC did not say, or suggest, otherwise.
Comment: The court was also careful to limit its holding in another way. It could have concluded that Falana was inventor simply due to his contribution to the method used to make Compound 9. It did not. Instead, the panel held "that a putative inventor who envisioned the structure of a novel genus of chemical compounds and contributes the method of making that genus contributes to the conception of that genus." Id. at 15 (emphasis added). It was able to articulate the rule in this way because it agreed with the district court that the patent's independent claims do not include a temperature independence limitation - in other words, the claims as construed were not limited to Compound 9, but rather encompassed the genus of compounds produced using Falana's synthesis protocol. Falana thus contributed both to the method of making the genus as well as the structure of the genus itself. The opinion implies that the outcome could conceivably be different if the claims had been limited to Compound 9. See, e.g., Slip Op. at 17.
The opinion at page 17 states the following:
Although the Defendants argue that Falana did not contribute to the conception of Compound 9 because Compound 9 was first synthesized after Falana left the team, this argument is inapposite. The claims of the ’789 Patent are not limited to Compound 9. Instead, they claim a subset of the entire genus of naphthyl substituted TADDOLs—those which are RR enantiomers. Falana contributed to the conception of this genus by providing the team of which he was a part with the method for making these novel compounds. Falana’s lack of contribution to the discovery of Compound 9 itself does not negate his contribution of the method used by the other inventors to make the genus of compounds covered by the claims at issue.
The district court did not err in concluding that Falana’s contribution of the method used by the team of which he was a part for making the claimed compounds was enough of a contribution to conception to pass the threshold required for joint inventorship. We therefore affirm the district court’s determination.
IPBiz disagrees with the assertion --The opinion implies that the outcome could conceivably be different if the claims had been limited to Compound 9. -- IPBiz says the CAFC would say Falana was a co-inventor to a claim limited to compound 9 BECAUSE of his contribution to the method of making the genus of which compound 9 is a member. Falana contributed to conception of compound 9 by providing a way of implementing (synthesizing) compound 9. There was no disclosure in the specification of any method, other than Falana's, to make compound 9. It is separately correct that the opinion at page 17 does NOT imply
-- the outcome could conceivably be different if the claims had been limited to Compound 9 --
Falana's argument had appeared on page 13:
Falana responds that he was the one who developed the Synthesis Protocol, which made it possible to make a previously-unknown genus of compounds, to wit, naphthyl substituted TADDOLs. This was the method used by Falana to synthesize Compound 7, the method used by Seed to synthesize Compound 9, and the only method disclosed in the ’789 Patent for making the claimed compounds. Finally, Falana contends that because he contributed the method of making the novel class of compounds claimed in the ’789 Patent, his contribution to conception was sufficient to make him a joint inventor.
See also IPBiz post on 23 January 2012 Kent State University loses in Falana case
the text of the decision
**Some further commentary at Patently-O
OL said...
I must be missing something but this opinion is confusing me and seems internally inconsistent or at least incomplete. It says at page 17:
"Although the Defendants argue that Falana did not contribute to the conception of Compound 9 because Compound 9 was first synthesized after Falana left the team, this argument is inapposite. The claims of the ’789 Patent are not limited to Compound 9. Instead, they claim a subset of the entire genus of naphthyl substituted TADDOLs—those which are RR enantiomers. Falana contributed to the conception of this genus by providing the team of which he was a part with the method for making these novel compounds."
So, if a claim was limited only to Compound 9, the opinion seems to suggest that Falana would not be a joint inventor because compound 9 was discovered after Falana left EVEN THOUGH Falana still contributed the method to make compound 9.
The opinion in the above passage then suggests that the actual claimed subject matter includes more than compound 9 and includes the entire sub-genus of RR enantiomers. It is clear Falana conceived and reduced to practice one embodiment of the larger genus that includes both RR and SS enantiomers but there is nothing highlighting that Falana himself conceived and reduced to practice a RR enantiomer. The closest we get is a statement on page 4 that "Falana’s Synthesis Protocol could be used, and was used, to synthesize both RR and SS enantiomers." If Falana himself synthesized RR enantiomers that fell within the claims then Falana is clearly a joint inventor of the sub genus (ie those limited to RR enantiomers) or maybe even if the RR enantiomers were made by others on the team while Falana was still there then Falana was a joint inventor of the RR sub genus.
But if the RR enantiomers were made by others using Falana's method only after he left then the RR subgenus looks just like a claim to compound 9 and the opinion implies that compound 9 itself would not by jointly invented. If this analysis is sound then I am confused why the opinion does not tell us when the first RR enantiomers were made using the method. And if the timing of the first synthesis of the sub genus of RR enantiomers is not relevant then why did the opinion imply that it would be relevant for a claim limited to compound 9?
Reply Jan 25, 2012 at 04:15 PM
IANAE said in reply to OL...
So, if a claim was limited only to Compound 9, the opinion seems to suggest that Falana would not be a joint inventor because compound 9 was discovered after Falana left EVEN THOUGH Falana still contributed the method to make compound 9.
That's a questionable interpretation of what is essentially dicta anyway. The court was rejecting all arguments based on who didn't invent Compound 9 because the claim was not limited to Compound 9. Had the claim been so limited, they would have considered the argument, but they don't commit to whether it's a winner.
What really surprises me is that there's no specific finding of whether Compound 7 falls within the claim.
But if the RR enantiomers were made by others using Falana's method only after he left then the RR subgenus looks just like a claim to compound 9 and the opinion implies that compound 9 itself would not by jointly invented.
What if the RR enantiomers were made by others using Falana's method after Falana left the room? Same answer?
When multiple inventors are named on a patent, it's not usually because they all thought of claim 1 at the same time or they were all in the room when the new material was created. That's not the only way to make an inventive contribution.
Reply Jan 25, 2012 at 04:28 PM
The above comments really miss the point of what the CAFC was saying. Falana himself didn't make compound 9 AND he didn't make any compound within the scope of the claim. That is irrelevant to the point of conception: an idea AND a way of implementing it. Only Falana provided a way of making the compounds in the claim. He is a co-inventor for that reason.
He would be a co-inventor of a claim only to compound 9. The CAFC did not say, or suggest, otherwise.
posted by Lawrence B. Ebert at 11:20 AM
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