Tuesday, April 05, 2016

The CAFC does superconductors: the story of Paul Chu and 1-2-3 superconductors

Back in 2008, IPBiz discussed some of the aspects of the
Paul Chu/superconductor affair, including text about "how"
Chu's group found out about the paper by Bednorz and Müller:

CHU'S GROUP HAD A routine: the researchers divided up the journals and were responsible for catching any news of even the remotest significance. ''I told them you don't have to understand what you read, but come back and tell us what you think is exciting,'' Chu says. Zeitschrift fur Physik is not an obscure journal, but at places like Bell Laboratories it went unnoticed. ''It's not in our tea room library,'' said Bertram Batlogg, who rushed into the fray at Bell a month later. Chu, calling his staff together that morning last November, had a headstart. [IPBiz note: years later Batlogg would become enmeshed in the Schon science fraud.]

link: http://ipbiz.blogspot.com/2008/11/flashback-on-peer-review.html
See also: http://ipbiz.blogspot.com/2009/09/to-all-next-big-things-that-werent.html

An opinion from the CAFC on April 5, 2016 briefly alludes to a different version of "who" identified the paper by Bednorz and Müller.

The context of the opinion was a challenge to inventorship of patents relating to the superconductors. The challengers lost.

Some of the ancillary facts are of interest. Relevant to the amount of money previously given
to the inventorship challengers (the amount Chu obtained is not mentioned here), one notes a statement in the recent post
CRISPR dispute raises bigger patent issues that we're not talking about by Shobita Parthasarathy: "Most, if not all, of the patent revenues, after all, will go to their institutions and not to them personally." This statement that appears in phys.org is of questionable accuracy, especially as to "if not all."

The appellants in Meng and Hor v. Chu, who argued they should be listed as inventors and arguing against Paul Chu, lost at the CAFC:

Appellants Pei-Herng Hor (“Hor”) and Ruling Meng
(“Meng”) filed this suit against Appellee Ching-Wu Chu
(“Chu”) under 35 U.S.C. § 256 for correction of inventorship
of U.S. Patent Nos. 7,709,418 (“’418 patent”) and
7,056,866 (“’866 patent”). Following an eight-day bench
trial, the United States District Court for the Southern
District of Texas denied both parties’ claims. For reasons
discussed below, we affirm.

This is a case about inventorship of patents relating to
1-2-3 superconductors:

The patents at issue generally relate to superconducting
compounds that have transition temperatures higher
than the boiling point of liquid nitrogen. The ’418 patent,
filed on January 23, 1989 and issued on June 6, 2006,
covers compounds consisting of Yttrium, Barium, Copper,
and Oxygen, assembled according to a 2-1-4 ratio of
Yttrium to Barium to Copper.

As to "who is who":

Chu worked with Hor and Meng in the High Pressure
Low Temperature (“HPLT”) lab at the University of
Houston. Chu was a physics professor and the lab’s
principal investigator. Hor was Chu’s graduate student
and, later, post-doctoral fellow. Meng served as an independent
materials scientist.
In November 1986, Meng’s Chinese mentor pointed
her to an article entitled “Possible High Tc Superconductivity
in the Ba-La-Cu-O System” by Bednorz and Müller,
which she subsequently shared with Chu. Meng and Chu
decided to reproduce the compound described in the
article (“LBCO compound”) using the solid state reaction
method. Meng and Chu disagree as to whose idea it was
to use the solid state reaction method, an approach that
differed from Bednorz and Müller’s, who used a coprecipitation
method. Meng prepared the LBCO compound
in late November, and the group observed it had
superconducting qualities.

Of the PRL publication:

Publication, patent, and commercialization efforts for
the rare earth superconductors soon followed. On March
16, Chu submitted a paper to the Physical Review Letters
describing complete substitution of the rare earth elements
in YBCO-123, which was published on May 4. J.A.
5304–07. Hor and Meng are listed as first and second
authors to the paper, and Chu is listed last. J.A. 5304.
The article does not mention partial substitution of rare
earth elements in YBCO-214. Id.

As to money:

In 1988, DuPont licensed the technology relating to
the ’418 and ’866 patents. Chu shared the proceeds
evenly with the University of Houston, and then, out of
his remaining portion, gave $137,000 to Hor and $137,000
to Meng.

Of the law:

Because issued patents are presumed to correctly name
their inventors, the burden of proving nonjoinder of
inventors is a “heavy one,” which must be demonstrated
by clear and convincing evidence. See Hess v. Advanced
Cardiovascular Sys., 106 F.3d 976, 980 (Fed. Cir. 1997).
In order to prevail on a § 256 claim, an alleged co-inventor
must show that he contributed to the conception of the
claimed invention and that his contribution was “not
insignificant in quality, when that contribution is measured
against the dimension of the full invention.” Acromed
Corp. v. Sofamor Danek Grp., 253 F.3d 1371, 1379
(Fed. Cir. 2001). An alleged co-inventor’s testimony
regarding his contribution must be corroborated, which
courts assess under a “rule of reason” analysis. Ethicon,
Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1461 (Fed. Cir.

“Conception, and consequently inventorship, are questions
of law” which we review de novo. Sewall v. Walters,
21 F.3d 411, 415 (Fed. Cir. 1994). We review underlying
factual determinations for clear error. Id. “Credibility
determinations are entitled to strong deference.” Hess,
106 F.3d at 980.


“An alleged coinventor’s
testimony, standing alone, cannot rise to the
level of clear and convincing evidence; he must supply
evidence to corroborate his testimony.” Symantec Corp. v.
Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1295 (Fed.
Cir. 2008).

Yes, the Ewen case is cited:

Conception of a chemical compound “requires
knowledge of both the specific chemical structure of the
compound and an operative method of making it.” Fina
Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir.
1997). However, where the operative method requires
“nothing more than the use of ordinary skill in the art,”
this “would not normally be a sufficient contribution to
amount to an act of joint inventorship.” Falana v. Kent
State Univ., 669 F.3d 1349, 1357 (Fed. Cir. 2012).

Meng lost on "ordinary skill in the art":

The district court considered Meng’s use of the solid
state reaction method and concluded that “the evidence is
not clear and convincing enough for the Court to find that
suggesting [use of the solid state reaction method] was
anything beyond that of ordinary skill in the profession.”
J.A. 51. Although Meng asserts the contrary, she does not
specifically explain what differentiates her efforts from
what would have been the ordinary efforts of a skilled
artisan. Meng seems to suggest that she exercised more
than ordinary skill because she “worked independently”
and engaged in “excessive experimentation,” but these are
only characterizations of the organizational structure of
the lab and the quantity of work that Meng performed,
not the level of skill she exercised. Accordingly, we agree
with the district court that Meng’s work does not exceed
the level of ordinary skill in the art.

link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/14-1746.Opinion.3-31-2016.1.PDF


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