Frederic A. Stern v. The Trustees of Columbia University et al.

Decided January 17, 2006

Judge Mayer with Judges Rader and Linn

*          A contributor to an invention may need to “have an understanding of the claimed invention” to meet requirements for co-inventorship.

While a medical student at Columbia, Stern worked in Bito’s laboratory on the use of prostaglandins for treating glaucoma.  After Columbia obtained a patent on this area, Stern sued Columbia at the U.S. District Court for the Southern District of New York and asked to be added as a coinventor.  Judge Richard Casey granted Columbia summary judgment that Stern lacked sufficient evidence to prove co-inventorship.  Stern appealed to the Federal Circuit.

The Federal Circuit noted that certain claim elements such as therapeutic use in the absence of tachphylaxis (a complication) were not conceived until after Stern left Columbia, and affirmed.  The Federal Circuit repeated its often quoted statement that “[c]onception is defined as ‘the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention…” The court did not reach the issue of how much conception is needed for co-inventorship because acts that occurred before a complete conception were discounted as evidence of coinventorship.

Michael S. Brown et al. v. Mariano Barbacid et al.

Decided February 2, 2006

Judge Newman with Judges Rader and Prost

*          When weighing inventorship issues, the PTO must view “proffered evidence as it would be viewed by persons experienced in the field of invention.”

In this second appeal from an interference at the U.S. PTO, Brown, the junior party, argued that the PTO improperly denied Brown’s corroboration evidence of diligence in reducing his invention to practice and incorrectly deemed Barbacid first inventor.. 

The PTO Board had reviewed laboratory notebooks that Brown had offered to show diligence, but did not accept the pages into evidence because the PTO did not “understand” the results described there, commenting “[t]here is no explanation of what these pages are saying.”  The .Federal Circuit reversed because “[t]he board is charged with expertise appropriate to the invention under examination…”

A theme in Federal Circuit decisions is that a patent specification and claim language should be construed from the viewpoint of a skilled artisan.   This case illustrates that a skilled artisan’s knowledge should be used to determine acts of invention as well.  The PTO Board and, especially courts, often lack technical experts.  That is no excuse to ignore the understanding technically trained  persons when deciding state of the art technical issues.

Medichem v. Rolabo, S.L.

Decided February 3, 2006
Judge Gajarsa with Judges Schall and Dyk

*          “[E]vidence that might be sufficient per se to corroborate a claim directed to the product will generally not be sufficient to corroborate a claim directed to the process..”

In this second appeal from the U.S. District Court for the Southern District of New York, Rolabo argued that Judge Jed Rakoff improperly awarded inventorship priority to Medichem (who had a later application filing date), because Medichem’s evidence failed to corroborate an earlier reduction to practice date.  Both parties are pharmaceutical manufacturers and the contested claims are methods for producing Loratadine (active ingredient in Claritin™). 

The Federal Circuit reversed the award of priority to Medichem because the corroboration evidence merely pertained to “possession of the chemical loratadine….(and not) the claimed process..” (emphasis in original). 

This is an interesting case where the PTO and a district court independently ruled oppositely on the same patent issue (inventorship) and wherein the Federal Circuit followed the PTO and reversed the court.  The Federal Circuit stated that “[w]hile appellant does not argue that the Board decision has a binding effect on this court, Board decisions nevertheless represent the views of a panel of specialists in the area of patent law.”  A district court decision is not superior to a decision from the patent office.