RNAi Litigation

Archive for May 12th, 2012

[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 »