RNAi Litigation

Judge Saris: “I think enough has been alleged under the dicta on collaboration or connection…. I don’t think at a motion to dismiss stage I’m there.”

Attorney Gindler: “Wouldn’t you have liked to have been a Drosophila fly yourself at that table?”

MR. GINDLER: …Your Honor, joint inventorship requires collaboration, and collaboration –

THE COURT: Or connection.

MR. GINDLER: It requires a real affirmative effort on the part of two or more people. In other words, here’s what the Federal Circuit said in Kimberly-Clark, perhaps one of the most cited cases: “The statutory word ‘jointly’ is not mere surplusage. For persons to be joint inventors, there must be some element of joint behavior.” And the case goes on to say that the invention must be the, quote, “Product of collaboration of the inventive endeavors of two or more persons –”

THE COURT: Or connection, “some quantum of collaboration or connection” in Kimberly-Clark, which I read this morning.

MR. GINDLER: I’m just reading this: “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.”

That didn’t happen here. The only thing which is alleged to be collaborative is interaction at two conferences. First, there’s an interaction at the Banbury conference, okay, at which Dr. Bass presented on this role of Dicer in enzyme and its role in RNA interference. None of the Tuschl II inventors were even at that conference.

THE COURT: But Zamore was, right?

MR. GINDLER: Dr. Zamore was there.

THE COURT: Is he here, by the way? No. But they all hung out together, because that was the first litigation that I know about. They were all –

MR. GINDLER: They weren’t hanging out together at the Banbury conference.

THE COURT: No, but I’m saying back here.

MR. GINDLER: Back here they weren’t all hanging out together. They worked at different places.

THE COURT: They were all talking. They were all interacting, and they had collaborative agreements and joint inventorship agreements. I spent a year and a half on this case.

MR. GINDLER: Me too, your Honor.

THE COURT: You and I both did.

MR. GINDLER: People who work in a given field of science talk and they share ideas. That’s what scientists are supposed to do, but that doesn’t make them inventors on each other’s inventions like other things. To say that’s the rule would have the exact opposite effect of what should be going on. You don’t want to chill interchange between inventors at conferences, at meetings, at dinners. You want to encourage it. But that can’t be fodder in the kind of very general allegations made here for joint ownership of a patent. This was a conference at which Dr. Bass presented on the role of Dicer to Dr. Zamore, and there’s the implication that Dr. Zamore must have then told Dr. Tuschl. And if he did, why does that show collaboration? That’s just a one-way presentation by somebody to somebody else.

THE COURT: Can I just say this: I’m not sure on some of these other jurisdictional issues. I have to think through. They’re hard for me. I think enough has been alleged under the dicta on collaboration or connection.

MR. GINDLER: Your Honor, the only thing that has happened here is, there was a conference at which none of the
Tuschl II inventors was present. There is another conference, the Uppsala meeting, where Dr. Tuschl and Dr. Elbashir were there, but there’s no allegation they actually were present when Dr. Bass gave her presentation; and that there was a dinner held at which Dr. Tuschl happened to be seated near Dr. Bass, and they talked about their experiments. The only other things alleged in the complaint –

THE COURT: But isn’t that in and of itself enough to — the very broad dicta that there are no bright lines, it’s fact-specific, it can be building on an article, it can be discussion. I don’t think at a motion to dismiss stage I’m there. I understand some of your other arguments and I’m going to move to them, but the dicta, when I went back and read, is so broad.

MR. GINDLER: I think, your Honor, if you look at the Kimberly-Clark case, the language which I think is the most –

THE COURT: I read it this morning.

MR. GINDLER: The language that’s most important is, you have to have multiple persons working toward the same end and producing an invention by their aggregate efforts.

“Aggregate efforts” means working together. If I tell you something that I did, you say, “Well, that’s very, very interesting –”

THE COURT: What if I said to you, “Hey, try out the three-prime jagged end. I tried that out in my lab, and it really made a difference, and I think the difference is this lysate, the enzyme, you know, that did the cleavage.” And let’s say then Tuschl says, “That’s exciting. We were working with the Drosophila fly, and we hit an enzyme that similarly did things, and it’s exciting because this is –” because he’s a brilliant man — “I think that this could really help.” I’m –

MR. GINDLER: And then if they said, “Hey, let’s work together –”

THE COURT: Is that enough? No, and that’s all they talk about. You would say that’s not enough, but the dicta from the Federal Circuit is stronger than that.

MR. GINDLER: That’s correct, your Honor, because scientists work in related fields all the time, and they talk to each other in very excited ways about their discoveries which –

MR. GINDLER: You can hear it. Wouldn’t you have liked to have been a Drosophila fly yourself at that table? I mean, the two of them were probably, like, excited about this stuff.

MR. GINDLER: Actually, their egg would have to be at the table.

THE COURT: All right, all right, the egg. I’ll grant it, be an egg on the table.

MR. GINDLER: Scientists each day every day of this year have meetings and collaborations where they talk about what they were doing to each other in candid and exciting ways. That’s part of the world of academia. They don’t try and keep secret what they’re doing in their labs. They tell everybody, and, most importantly, they tell all of their colleagues, but that doesn’t mean that they’re working on a collaborative effort together. And here –

THE COURT: But wouldn’t the reverse rule from a policy point of view actually be harmful? Because it would mean that people would be afraid to have those dinner conversations. That would hurt science because they’d be afraid, if they shared their exciting insight and their lab requirements, they’d lose all.

MR. GINDLER: That’s exactly my point.

THE COURT: No, no, but think of it from her point of view, because if you don’t protect her inventorship interests, assuming it’s correct — I don’t know about that — she would have never had that discussion with Tuschl. She would have clammed right up because she would be afraid that if she shared what happened in her lab, that he could then use it to get the patent and she’d lose out completely.

MR. GINDLER: Your Honor, anybody — there’s a simple solution for that. That’s the one thing that Dr. Bass never did: She never filed a patent application. Dr. Tuschl did. We wouldn’t be here today, your Honor, if Dr. Bass had done what any other inventor does if they want a patent. Some academics actually choose not to seek patents.

THE COURT: Well, you know, the universities have historically been behind where the pharmaceutical industry is. They’re slow. UMass has been pretty good here from their point of view, but –

MR. GINDLER: There also are some professors for whom
8 they don’t really care. Dr. Bass could have dealt with the issue that you just raised by doing what Dr. Tuschl did, which is: You publish a paper, you file a patent application. It’s what Dr. Tuschl did; it’s what she did; and all of their rights would have been protected.

THE COURT: Is there a statute of limitations on her ability to do this?

MR. GINDLER: Yes. She’s way late. That’s why they’re doing — that’s why this action is being brought, because she didn’t file a patent application.

THE COURT: She’s like the Little Red Hen. She said, “The bread is ready, and I’m ready to take it.”

MR. GINDLER: Exactly. It’s twelve years later after the issuance of the patents, and the best she can come up with for collaboration is the attendance of a colleague of the Tuschl II inventors at a conference; the fact that at another conference Dr. Tuschl was there, but not that he actually ever heard her speak on her subject matter; that they had dinner together; and that they read a prepublication version of her article in Cell. And I would point –

THE COURT: Can I just say something? I get your point. You’ve briefed it at length. I just am not sure I can do that on a motion to dismiss, and I think the dicta is broad enough to encompass her claims.

MR. GINDLER: If I had your Honor read one case, it would be to read the Rubin case.

THE COURT: I will read the Rubin case, but that was — I understand that was Judge Casper’s case. I did not read that this morning, but I did read all of Federal Circuit cases, and they’re pretty broad.

MR. GINDLER: They’re broad in terms of making clear that there’s not a bright line, but they all require that there be true collaborative activity, people working together towards a common end, and that’s just not here.

THE COURT: Okay, thank you. Let me hear the response.

Leave a Reply