Joint Inventorship: Federal Circuit Denies Vanderbilt’s Claim to Cialis Patent Rights

Vanderbilt Univ. v. ICOS Corp. (Fed. Cir. 2010)

Vanderbilt and ICOS have been locked in an inventorship dispute for several years over patent rights to tadalafil, the active ingredient in Cialis. The University argues that its scientists should be listed as inventors on the patents because they provided provided the building-blocks that Glaxo used in its discovery of tadalafil. (ICOS now holds the patent rights).

The district court ruled against Vanderbilt – holding that the Vanderbilt researchers could not be inventors because they did not have an independent understanding of the “complete compound claimed.” On appeal, the Federal Circuit rejected that misinterpretation of the law of joint inventorship, but affirmed the final holding based on its conclusion that Vanderbilt had not provided clear-and-convincing evidence that it contributed to the invention.

The Patent Act provides some foundation for the law of joint inventorship.

When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent. 35 U.S.C. § 116 (1988).

The statute does not spell-out the minimum threshold level of contribution that is required of an inventor, but the Federal Circuit has held that a joint inventor must have contributed “to the conception of the claimed invention.”

Although physical collaboration is not required, the Federal Circuit has also held that some level of collaboration is required. Collaboration can certainly be one-way. Thus, the Vanderbilt researchers might have some claim to inventorship rights if the Glaxo researchers had relied upon information provided by the Vanderbilt researchers. The Federal Circuit rejected that conclusion based on the lack of factual support – even though the Vanderbilt researchers did provide important material to Glaxo (in the UK), there was no evidence that the Glaxo researchers (operating in France) relied upon the material in their inventive process.

Writing in dissent, Judge Dyk argued that the proper course of action was to remand for a better decision. Judge Dyk picked up on confusion in the district court opinion that both accepted and rejected the notion that the Vanderbilt researchers contributed to the inventive process. Additionally, Judge Dyk argued that the district court’s factual conclusions were directed toward reaching a conclusion to the erroneous question of law (discussed above) and that those factual conclusions were tainted by the error in a way that requires remand.

34 thoughts on “Joint Inventorship: Federal Circuit Denies Vanderbilt’s Claim to Cialis Patent Rights

  1. “Sarah” — your faux-schizo writing style sets you apart from the crowd. No need to increase your dose.

    But how could you know I am in Canada unless you have access to my IP address? And how could you get my IP address unless you are running this site?

    It makes one wonder how many personalities on this site are faked.

  2. The poster called “ping,”

    – like I said, the new Mooney. Heck, it probably IS Mooney. Had to change names for obvious reasons.

    Posted by: RWA

    Same troll, new name Get a life, CaveMan.

  3. It’s a little early to be thinking about Christmas isn’t it ping? But sounds like you sure are obsessing about it, year-round no less. Maybe you’re projecting your own sense of despair at me… Try coming out of the basement into the light.

    I am pretty sure that I am not the one obsessing and needing a little sunshine. I am a very happy and care free person who absolutely loves getting something for nothing (Christmas). You, on the other hand, seem to be a dour, bitter person who cringes when others are having fun. You take things much, much too seriously. It’s pretty easy to see who is carrying the despair and who is having fun.

    Have you tried smiling? Other than when you have your private time with your dog, that is (I am not sure that even professionals will be able to help you with that).

  4. It’s a little early to be thinking about Christmas isn’t it ping? But sounds like you sure are obsessing about it, year-round no less. Maybe you’re projecting your own sense of despair at me. Many people like you have difficulties during the holidays. There are professionals who would be more than happy to help you. Try coming out of the basement into the light.

  5. Most of you have no respect for the Judiciary,
    and very little respect for each other.
    And while your all discussing how much a good Lawyer wins. And all cases are won or lost because of shredders, payoffs and the like.
    So where is your money coming from. Oh silly me.
    Of course from the people you do applications for. And then if you are a good Lawyer you win no matter what(refer to my third sentence.)And if your lucky to own a Bank too. Then you can even commit crimes that we others have nightmares about.
    Ping may need his Million for a new education if DNA goes away, anyhow.
    I have decided that if the Government thinks it’s okay to allow the PTO to protect certain Lawyers with lots of money that they have “AHEM “earned, and those that they hire to shore up things, it’s a good read.
    And if before a case is even heard in court on patent Infringement and or the Patents validity, and as you all report it here, the outcome is just a matter of dressing up for court. Then I guess we have way to many Lawyers. And only real Judges dress up in robes and decide nothing.
    And hearing all the time that the Democrats don’t like Patents and want really to open the markets for those who want to market. Then that makes me a Writer.
    And to that short little Canadian. I think you need to head home. Imagine you bad mouthing a court that is not even in your home country. And you have to be a citizen to vote here. So are you A Republican in your own mind because your Legal Counsel is from Texas? Of course! Because if you had any sense you would be worried about losing your rights to stay here the way you platform, with a Legal License and a half a brain. IBP/ Babel boy… You need to be the Scarecrow. Straw man step back. Scarecrow is about to get eaten up by a Mule.

  6. RWA,

    Don’t you have a boring and lonely Christmas to get ready for?

    Us life of the party obsequious boot lickers never have a party of one. Don’tcha know that sockpuppets always appear in at least groups of fives?

  7. Obsequious boot licker party of one, your table is ready. You’ve been picking up sock puppet tricks.

    “poster 1 (Mooney): gratuitous assertion 1, said with snark and gusto”

    “poster 2 (also Mooney): ‘oh poster 1, you are the man, and oh so correct’ ”

    There endeth the lesson.

  8. If the penalty for patent infringement by a corporation were to be execution of its CEO,

    That would lead to tremendous grass-roots support for business method patents in the financial sector.

  9. Dear Ping, by “universal” I mean substantive not procedural patent law. So, the differences between common law and civil law don’t bother me. Germany and England have the same substantive law but altogether different procedural law.

    I wrote that US patent law is more “potent”. From that you found (no idea how) “better”. If the penalty for patent infringement by a corporation were to be execution of its CEO, the US patent right would be even more “potent” than it is already. But I doubt that even you would think it to be, in consequence, “better”

  10. Dear ping,

    In the real world, you are simply annoying – like a fly at a picnic or a squirrel at a cotillion. No song lyrics in the world can help you with that. In fact, they only hurt. Sarah and Michael started with song lyrics…

  11. If we could get back to Vanderbilt, for just a moment.

    The CAFC is an industry road map for how to dupe academic scientists with chicken-feed grant money and then stiff them out of their patent rights by destroying evidence of interdepartmental collaboration within the corp.

    You would have to be brain dead to believe that UK/US Glaxo was not passing the Vanderbilt basic research on to France Glaxo. But if there is no evidence of the Anglo-Franco connection, then legally it didn’t happen. Hey, that’s why God gave us paper shredders.

    The CAFC view of two or more people “making an invention” as per Section 116 is not that multiple people funnel information required to produce the patentable subject matter, but that multiple people all actually touch the final, patentable subject matter. I would not draw a distinction between contribution and collaboration in “making an invention.” This CAFC panel does.

    USSCt will grant cert and reverse.

  12. RWA’s color is green, the color of envy.

    That’s OK RWA, the world needs boring people too.

    You probably think that I am Mooney and we are lurking less, since “ll” indicated that my comment was actually appropriate, even though it doesn’t seem to pass your self-righteous standard.

    Tell me, is your “Real World” teh same as Ned’s IMHO-Law and where Sarah and Michael reside?

  13. The poster called “ping,”

    – like I said, the new Mooney. Heck, it probably IS Mooney. Had to change names for obvious reasons.

  14. I know it wasn’t a Patent. I told OED. They did nothing to Litman! They ignored the fact that I paid 4,000.00 and a FAKE PATENT was printed.
    Well, we have an awful lot of people that have gotten away with a lot of Felonies. But Litman in with OED and the Solicitor what can you do. It’s the
    QUID BABY! Litman had them all. And I see he still does.
    And then POOR AL. All those lost emails to the USPTO. He got what he deserved. But did the others?
    I guess as I have read on this site so many times. It is not the rule of Law. It is the money. How many times have I read that? I didn’t want to believe it.
    I guess Obama’s first choice for the Supremes was a Political statement.saying, I wlll do anything for you. Another beautiful song.I wonder if she sees it that way and bowed out immediately because of the back handed slap slap?
    With Pallin out of control. It won’t be long before even the Republicans can contain her. And that will be a sight.
    French your color will be where the quid leads you. That’s lawyer speak.

  15. Mr. David French,

    My response to your serious and valid observation may have sounded jocular, but was meant in all earnestness (well, as much earnestness as I care to impart).

    You speak of equity of a patent that was not a patent at all at the time of the sharing of information. One must be a big boy in the big boy world and protect oneself if one is going to go about and share precious information (that’s why they make Non-Disclosure Agreements). You shouldn’t expect the nanny government to make sure that you are tucked in at night if you want to go clubbin.

    As to what Dennis does or doesn’t do – that’s not really up to you to say, now is it? There are many that post in any manner of ways. The color here is a virtual rainbow, which I would deprive no one of. I think my color is fuschia, but I’m not sure.

  16. David French writes:

    I made a serious and valid observation. Some of the above comments seem to be in the nature of bar-room jocularity. While sometimes charming, I would like to see comments on this very valuable blogging billboard focused on thoughtful observations.

    Dennis does not maintain this widely viewed public arena so that participants can engage in one upman-ship or putdown man-ship.

  17. Thanks lurking less,

    But I do not seek your indulgence. Perhaps I have learned from my friends IANAE and Maxie, that being argumentitive is not only charming and entertaining, but educational as well.

    Perhaps it is also ironic that the post you cite as an example of appropriateness is one that incites a retort from RWA. If so inclined, the lesson from such is that my more charming and entertaining posts are the ones in more demand.

    Hush now, my audience beckons. I got a gig to do.

  18. ping,

    Some of your comments are appropriate, such as the one in this thread at Apr 09, 2010 at 09:50 AM. However, many comments in other threads feel like mere trolling and argument-provoking. Those comments are not charming or entertaining. One common complaint on Patently-O is that (presumably) we should be more intellectually inclined, yet we don’t act that way.

  19. Oh I’m sorry, my invitation to join the exclusive ranks here is right here in my vest pocket.

    Hmm, maybe my back pocket.

    Hmm, maybe my dog ate it. No wait, I don’t have a dog. Maybe your dog ate it while I was visiting.

    Let me look for it. Nope all I see is the jealousy of some dried out hack wishing that he could muster a little wit and be half as charming and entertaining as…

    …sharks with lasers!

    If you want to volley, you need to get it up over the net. And don’t be so anti-music. Song lyrics are the poetry of the modern age.

  20. “Please tell us more” was a sarcastic volley referring to the irony of YOU pointing out something like “over-compensating for lack of common sense.” Something you have demonstrated since you showed up on this board just a few days ago.

  21. RWA,

    Is it common sense to protect yourself prior to having a contractual commitment?

    Is it common sense to protect your confidential information with a NDA?

  22. Re: “it appears that Vanderbilt provided Glaxo with confidential information … Unfortunately, federal jurisdiction may not extend to imposing a trust on Glaxo in favor of Vanderbilt for at least a portion of the benefits of the invention.”

    ? If it was really confidential and kept that way [rather than profs rushing out to publish], and really used, wouldn’t they have trade secrecy law recovery rights?
    Imposing a trust for providing unpatentable research tips that are not trade secrets is not just a jurisdiction issue, it would be an attempted parallel state court quasi-patent system with no rules and no legal or constitutional basis.

  23. “…over-compensate for lack of common sense”

    Please tell us more, ping. But please don’t put it in the form of song lyrics.

  24. “Resolving the question of inventorship does not address the real issue: providing a fair outcome under the facts of the case in terms of enjoying the benefits of the invention.”

    Too much bad law has come from courts trying to provide a fair outcome while ignoring the issues that affect the law for years to come. Be careful what you wish for.

  25. David French writes:

    Reading the case, it appears that Vanderbilt provided Glaxo with confidential information in anticipation of entering into a contract by which they would provide research support to Glaxo. This case is as much about equitable entitlement to the benefits of the patent as it is about inventorship. This type of situation must occur all the time.

    Unfortunately, federal jurisdiction may not extend to imposing a trust on Glaxo in favor of Vanderbilt for at least a portion of the benefits of the invention. Resolving the question of inventorship does not address the real issue: providing a fair outcome under the facts of the case in terms of enjoying the benefits of the invention.

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