RNAi Litigation

Archive for May, 2012

[from Case 1:11-cv-10484-PBS Document 66 Filed 05/09/12]

I. Introduction

Defendants’ reply arguments are an exercise in misdirection. The Second Amended Complaint (“SAC”) asserts a § 256 claim for sole inventorship, not priority of invention, as Defendants contend. Plaintiff UUtah thus need not allege that Dr. Bass invented the Tuschl II subject matter before Defendants, and Defendants’ principal authority is inapplicable. Nor must UUtah allege that Defendants “misappropriated” her invention.

Indeed, allegations that the Tuschl II named inventors intentionally claimed Dr. Bass’s invention as their own would render the patents unenforceable for all, contrary to the purpose of § 256 as a savings provision. Defendants’ cited authorities do not require misappropriation. Finally, Defendants’ scattershot arguments constitute evidentiary challenges and, as such, do not detract from the sufficiency of UUtah’s sole-inventorship claim. They are also factually incorrect.

Defendants’ joint inventorship challenges are equally misplaced. Defendants protest that
UUtah’s claim could “strip inventors of their exclusive patent rights” simply upon reading or hearing of relevant developments. But the Federal Circuit has ruled that collaboration that could give rise to joint inventorship is a fact-specific inquiry, which can turn on such actions as reading an article or hearing a talk at a meeting.

The named inventors’ attention to Dr. Bass’s mini-review and her presentation at the Banbury and Upsala meetings demonstrates collaboration sufficient to plead joint efforts under Kimberly-Clark and its progeny. Unable to distinguish Kimberly-Clark, Defendants invite the Court to ignore it and rely instead on contrary lower-court decisions. The Court should decline this invitation and deny Defendants’ motion.

II. Argument

A. UUtah’s Sole Inventorship Claim States a Claim That Is Plausible on Its Face

Defendants argue that UUtah “confuses a claim for sole inventorship under section 256 with a claim of ‘prior invention,’ which cannot be brought under section 256.” But it is the Defendants who are confused. The SAC does not allege that both Dr. Bass and the named Tuschl II inventors conceived of the Tuschl II subject matter albeit at different times. Rather, it alleges that Dr. Bass is the sole inventor of the Tuschl II subject matter. The SAC therefore states no claim for determining whether she or the named Tuschl II inventors were first to invent. Defendants’ reliance on Rubin is therefore misplaced. Since the SAC does not assert a claim of priority of invention, the district court’s rule in Rubin does not apply.

Defendants are equally wrong in arguing that when an omitted sole inventor seeks to correct inventorship under § 256, i.e., substituting the omitted inventor for the named inventor, he or she must prove that the named inventors “misappropriated” the invention. The Federal Circuit rejects this argument. The Stark II court considered whether § 256’s prohibition of deceptive intent relates to the named inventor or the omitted inventor. Dr. Stark sued Advanced Magnetics to correct inventorship under § 256, claiming that he was the sole inventor on one patent and a joint inventor on several other patents. After holding that § 256 prohibits relief only if the omitted inventor had deceptive intent, the Federal Circuit concluded that “section 256 allows complete substitution of inventors ….”

The court did not require the innocent omitted inventor to prove that the named inventors misappropriated the invention. Indeed, Stark II suggested misappropriation by the named inventors may constitute inequitable conduct that could render the patent unenforceable. Defendants’ argument that an omitted sole inventor must prove misappropriation thus conflicts with § 256’s purpose. The Federal Circuit has “interpreted § 256 broadly as a ‘savings provision’ to prevent patent rights from being extinguished simply because the inventors are not correctly listed.” But Defendants’ rule would require an omitted sole inventor. The Federal Circuit reiterated this conclusion in Virginia Elec. & Lighting Corp. v. National Serv. Ind., Inc. to prove inequitable conduct by the named inventors, thereby extinguishing patent rights for all. The two district court cases Defendants rely upon do not support their argument that misappropriation is an element of a claim under § 256. Defendants cite Yeda Research & Dev. Co. v. ImClone Sys. without pointing to a specific page. In fact, the Yeda court nowhere stated that misappropriating the invention is an element of a sole inventor’s claim for correcting inventorship. Defendants also cite the district court’s factual recitation in University of Colorado Found. v. American Cyanamid Co., where the court recited that the named inventors had copied parts of the omitted inventor’s publication into their patent applications. But the ruling does not require misappropriation as an element of an omitted sole inventor’s correction claim.

Defendants may wish to argue that Dr. Bass and the named Tuschl II inventors conceived of the same claimed subject matter at different times, thereby creating an issue of priority. But the focus here must be on the SAC, and the SAC makes no such allegation or claim. Counts I and III of the SAC plead claims to substitute Dr. Bass as the sole inventor under § 256, not for determining priority of inventorship as between Dr. Bass and the improperly named inventors.

Next, Defendants fire a shotgun of bullet-pointed arguments that are merely attacks on the evidence, not on the allegations of the SAC. They are also wrong. For example, Defendants assert that the SAC alleges that Dr. Bass was aware of 3’ overhangs only “of about two nucleotides in length,” whereas some of the Tuschl II patent claims recite overhangs of one to five nucleotides. The term “about two” nucleotides necessarily implies awareness of a range of lengths of nucleotides in the 3’ overhangs beyond simply two nucleotides. This allegation suffices at the pleading stage to allege a fact from which the Court may infer that Dr. Bass conceived of 3’ overhangs from one to at least five nucleotides. Even if misappropriation were a required element, the SAC could satisfy it. The SAC alleges that Dr. Tuschl did not know about 3’ overhangs before reading a draft of Dr. Bass’s mini-review and that Defendants incorporated Dr. Bass’s invention into the
Tuschl II patent applications. Read the rest of this entry »

[from Case 1:11-cv-10484-PBS Document 64 Filed 04/18/12]

The University of Utah’s (“Utah”) Opposition to Defendants’ Motion to Dismiss exposes the lack of legal basis of Utah’s Second Amended Complaint (“SAC”). With respect to Utah’s sole inventorship claim, Utah’s Opposition makes clear that Utah is attempting to use the correction of inventorship statute to wage a priority contest. Indeed, Utah expressly refers to its sole inventorship claim as a claim of “prior invention.” But as another Court of this District recently explained, “section 256 is not intended to resolve disputes concerning priority of invention.” Utah’s misunderstanding of the scope and purpose of section 256 dooms its sole inventorship claim from the start.

Utah’s joint inventorship claim is based on a fundamental misunderstanding of the law on collaboration 35 U.S.C. § 256. Although it is undisputed that Dr. Bass never worked with the Tuschl II inventors or engaged in any joint research with them, Utah claims that Dr. Bass is their “joint inventor” because Dr. Tuschl read her mini-review in the journal Cell and cited it in his own work, and because Dr. Bass allegedly told Dr. Tuschl about some of her laboratory’s experiments over dinner at a conference. The Federal Circuit, however, has made clear that a “joint invention is the product of collaboration of the inventive endeavors of two or more persons working toward the same end and producing an invention by their aggregate efforts.” The SAC does not and cannot allege any such collaboration between Dr. Bass and the Tuschl II inventors. As a result, Utah’s joint inventorship claim fails as a matter of law, as well.

Utah’s sole inventorship claim fails as a matter of law

Utah’s Opposition betrays a fundamental misunderstanding of the law governing its sole inventorship claim under 35 U.S.C. § 256. Utah confuses a claim for sole inventorship under section 256 with a claim of “prior invention,” which cannot be brought under section 256.

To substitute Dr. Bass for the named inventors of the Tuschl II patents, Utah must not only prove that Dr. Bass first conceived the entire subject matter claimed in the patents; Utah must also prove that the named inventors misappropriated Dr. Bass’s inventions as their own.

Without citing a single case involving a section 256 claim for substitution of inventors, Utah contends that “wrongful appropriation is not an element of a claim of prior or joint invention.” Utah proceeds to argue that the SAC sufficiently alleges a claim for “prior invention.” However, section 256 does not authorize substitution of inventors based on a claim of “prior invention,” as a Court of this District recently confirmed. “Section 256 is not intended to resolve disputes concerning priority of invention but is intended to encourage collaboration between and among inventors and correct the named inventors without the need to invalidate the patent.”

If the law were otherwise, then any author of an allegedly anticipatory prior art reference could bring a claim for substitution of inventors under section 256 on the theory that they were the “first and true inventor” of the claimed subject matter, just as Utah urges here. Opp. at 11. But that is plainly not the law. Id. at *26 (“To rule otherwise would mean that any independent researcher could bring suit under section 256 claiming they were the first to invent the patented subject matter,” which is contrary to the purpose of section 256.). Read the rest of this entry »