Falana v. Kent State University

By Jason Rantanen

Falana v. Kent State University (Fed. Cir. 2012) Download 11-1198
Panel: Linn (author), Prost and Reyna

This case raises an important issue for developers of chemical compounds: when is an inventor's contribution to the method of making a claimed compound an inventive contribution?

The plaintiff in this Section 256 action, Dr. Olusegun Falana, was a post-doctoral researcher hired by Kent State and Kent Displays, Inc. to synthesize organic molecules in connection with a project to develop a temperature independent, high helical twisting power chiral additive for use in portable liquid crystal displays. During his employment, Dr. Falana developed a synthesis protocol for making a novel class of chemical compounds. Dr. Falana used this process to synthesize a compound within this genus designated "Compound 7." While Compound 7 possessed some of the desired characteristics, and represented "significant progress," it did not completely satisfy the project goals. Dr. Falana subsequently resigned from KDI and Kent State to take another position.

A few months after Dr. Falana's resignation, the Kent State professor who had selected Dr. Falana used Falana's synthesis protocol to synthesize another member of the novel class, "Compound 9." Compound 9 possessed the desired degree of temperature independence, and KDI and Kent State filed an application that led to Patent No. 6,830,789; the patent did not list Dr. Falana as in inventor.

Upon learning that he was not listed as an inventor, and after receiving an unsatisfactory response from the Chief Science Officer at KDI, Falana filed a Section 256 action to correct inventorship. The district court ruled in Falana's favor following a bench trial, further finding that the case was exceptional and awarding attorneys fees in an amount to be determined.

On appeal, the Federal Circuit concluded that Dr. Falana had contributed to the conception of the claimed invention. Drawing upon established law, the court first noted that "[c]onception of a chemical compound 'requires knowledge of both the specific chemical structure of the compound and an operative method of making it.'' Slip Op. at 12 (quoting Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997). Here, Dr. Falana contributed to the method of making the claimed compound in a way the required more than the exercise of ordinary skill. The court recognized an important limitation on its holding, however:

"[This] does not mean that such an inventor necessarily has a right to claim inventorship of all species within that genus which are discovered in the future. "Once the method of making the novel genus of compounds becomes public knowledge, it is then assimilated into the store-house of knowledge that comprises ordinary skill in the art." Id. at 15-16.

Comment: The court was also careful to limit its holding in another way. It could have concluded that Falana was inventor simply due to his contribution to the method used to make Compound 9. It did not. Instead, the panel held "that a putative inventor who envisioned the structure of a novel genus of chemical compounds and contributes the method of making that genus contributes to the conception of that genus." Id. at 15 (emphasis added). It was able to articulate the rule in this way because it agreed with the district court that the patent's independent claims do not include a temperature independence limitation – in other words, the claims as construed were not limited to Compound 9, but rather encompassed the genus of compounds produced using Falana's synthesis protocol. Falana thus contributed both to the method of making the genus as well as the structure of the genus itself. The opinion implies that the outcome could conceivably be different if the claims had been limited to Compound 9. See, e.g., Slip Op. at 17.

Finality of Judgment: Federal Circuit practitioners may want to pay particular attention to the section at the end of the court's opinion in which it concluded that the district court's exceptional case determination was not before it in this appeal. Although the court's ruling on the issue of inventorship represented a final judgment, the court concluded that absent a determination of the attorney fees, the exceptional case determination did not. Nor, the court concluded, was there a basis for it to exercise pendent appellate jurisdiction over the issue.

39 thoughts on “Falana v. Kent State University

  1. Low blow LOL. Most universities that I have worked with are not very good at getting their own employees to sign these agreements let alone a post-doc.

  2. "Read in the prior art?"

    Why?

    Under the facts, Falana's invention was independent of the others.  It was prior art to the later patent absent some obligation to assign to the same entity.

    As well, Falana did not contribute to compound 9.

    Where is the joint invention?

    Sent from iPhone

  3. I think the court did make it clear that the claimed genus was to RR enantiomers,

    Yes, on reading it again I see that the claims were construed to cover RR enantiomers only.

    What Falana “conceived” is what he made, an SS enantiomer, not an SS/RR enantiomer.

    It sounds like what he conceived was a stereospecific synthesis process, but I don’t think that method is limited to producing SS enantiomers because R and S designation depends on (chemically) arbitrary priority rules applied to the substituents at the stereocenter. He might well have conceived of the broad genus of RR and SS compounds that his method could produce, albeit in an abstract and high-level way.

    I don’t think there’s any doubt that Falana’s synthesis method was a direct and important contribution to the development of Compound 9. Whether it’s an inventive contribution depends, I think, on whether it was something the other inventors could have gone and read about in the prior art.

  4. The definition, I am sure you are talking about a different case than the case at bar.  There was no continuation or CIP.
     
    If there had been and Falana's invention of SS was disclosed and claimed, or his invention of the protocol claimed, there still might be an objection that the other inventors had no part in inventing SS or the protocol, and that Falana had no part in inventing the RR genus.
     
    The critical links is the invention of the SS/RR genus.  That was neither disclosed nor claimed anywhere in the facts of this case.  The court to be sure said that Falana invented it because his protocol enabled both, but I think this holding is missing a link.  What Falana did was to make SS.  If this is sufficient to conceive of the SS/RR genus, then he is indeed the SOLE inventor of that genus.  But this is where the opinion is short on facts. 
     
    It is not self evident to me, at least, that the conception of a species automatically is conception of a genus.  But, what do I know?

  5. But that was of a prior independent invention

    Was it?

    By claiming (and meriting) a continuation (or CIP) status, are you not saying the opposite?

  6. Leo, I think collaboration is required for coinventorship. However, I still think a collaborative effort can result in many different independent and distinct inventions where not all the collaborative parties are coinventors of every invention. It really depends on who conceived the claimed invention, IMHO.

    As stated in the facts of this case, Falana did not conceive of the claimed invention. He enabled it, to be sure. But that was of a prior independent invention.

    The critical link missing in the Court’s opinion is a link between the claimed invention (RR elantiomer) and the invention conceived by Falana (SS elantiomer).

  7. Do you consisder the posibility that Falana’s prior reduction to practice of a “different” invention than that claimed was prior art under 102(g) and because it was communicated to the later inventors, prior art under 102(f)?

  8. IANAE, I think the court did make it clear that the claimed genus was to RR enantiomers, but that Falana only made an SS enantiomer. The claims did not cover any composition “conceived” by Falana to the extent that development of a protocol implies conception of what was made by the protocol. What Falana “conceived” is what he made, an SS enantiomer, not an SS/RR enantiomer.

    However, this might be wrong to the extent that an RR enantiomeer was an obvious variant at the time Falana produced an SS enantiomer. I think it is true, but I am not sure. Perhaps others will weigh in on whether it was known that a protocol that could produce an SS enantiomer would be expected to also produce a corresponding RR enantiomer. If this is true, then Falana’s conception embraced both SS and RR variants when he produced compound 7.

    If the RR genus claim was obvious given Falana’s prior invention, the patent to the RR enantiomer would be invalid (under current law, but not under the AIA) as obvious without naming Falana as a coinventor, provided there was no obligation to assign to the same entity at the time of invention.

    If, however, the discovery of that Falana’s SS enantiomer could be used to produce RR enantiomers was nonobvious, I do not think Falana was a coinventor.

    I think, in the end, the above might be the proper analysis.

  9. LB Just so that I can keep up, are you saying that this case suggests that, or that the law prior to this case suggests that?

    I am saying that this case suggests that result (please be aware of the facts set forth in my 12:24 comment, notwithstanding the dxmb CIP error).

    As for the law prior to this case, it probably also suggests that result (hence the CAFC’s holding here) but to be perfectly frank I have always found the law re inventorship a bit muddled (to put it nicely) …

  10. So, if a claim was limited only to Compound 9, the opinion seems to suggest that Falana would not be a joint inventor because compound 9 was discovered after Falana left EVEN THOUGH Falana still contributed the method to make compound 9.

    That’s a questionable interpretation of what is essentially dicta anyway. The court was rejecting all arguments based on who didn’t invent Compound 9 because the claim was not limited to Compound 9. Had the claim been so limited, they would have considered the argument, but they don’t commit to whether it’s a winner.

    What really surprises me is that there’s no specific finding of whether Compound 7 falls within the claim.

    But if the RR enantiomers were made by others using Falana’s method only after he left then the RR subgenus looks just like a claim to compound 9 and the opinion implies that compound 9 itself would not by jointly invented.

    What if the RR enantiomers were made by others using Falana’s method after Falana left the room? Same answer?

    When multiple inventors are named on a patent, it’s not usually because they all thought of claim 1 at the same time or they were all in the room when the new material was created. That’s not the only way to make an inventive contribution.

  11. continued…

    Compare this to the different situation where Z comes to the table with knowledge of the specific chemical structure, but without knowledge of an operative method of making it–in such a case Z has not conceived ABCDE, but if W,X, and Y are brought into contact with Z, and W,X, and Y have no knowledge of the specific chemical structure, the combination of W,X,Y, and Z can be said to have conceived the invention, although after that point the structure and the method may be knowledge possessed by each of W,X,Y, and Z.

    Circling back a few paragraphs, if Y alone conceives ABCDE, at any time, then Y is the sole inventor of ABCDE, regardless of whether ABCD has yet been conceived by W,X, and Y.

    Of course, any of W,X, and Y could conceive ABCDE independently, in which case there would be more than one inventor, necessitating a priority determination.

    Ultimately, insofar as adding W and X as inventors on ABCDE, it doesn’t matter if the ABCD app has published or not; I don’t think it even matters if there has been actual reduction to practice prior to the constructive reduction to practice of filing.

    ABCDE is a different invention, requiring its own conception (knowledge of structure and method) and reduction to practice. Knowledge of method alone, by one party, is insufficient evidence of conception by that party, and is therefore an insufficient basis upon which to consider that party an inventor of ABCDE.

    That knowledge of method would have to be combined with knowledge that another party has knowledge of the structure but not the method, which other party must know that the first party has knowledge of the method but not the structure, in order for there to be joint inventorship; this is Leopold’s “directed towards development of ABCDE” situation.

    “I’ve been lookin’ at you, Norton…and I know that YOU know that I’ve been lookin’ at you, Norton…”

  12. Post split into 2 parts:

    Forget about Z, just W,X, and Y.

    IMHO, IMHO, IMHO (I have never had an inventorship issue)

    At the time of filing of app 1, the ABCD “invention” of app 1 has been conceived by W,X, and Y (knowledge of both the specific chemical structure of the compound and an operative method of making it), and constructively reduced to practice by the filing.

    In short, the ABCD “invention” claimed in app 1 has been “invented”–both conceived, and reduced to practice.

    If Y conceives ABCDE after the invention of ABCD (after the filing of app 1), although Y’s conception of ABCDE may rely on the already-invented ABCD, it is Y alone who has conceived ABCDE.

    As far as patentability is concerned, I don’t think it matters from where a conceiving inventor gets his or her knowledge of an operative method of making the compound ABCDE–that is, it doesn’t matter if the knowledge is “in the public domain” or not.

  13. I must be missing something but this opinion is confusing me and seems internally inconsistent or at least incomplete. It says at page 17:

    “Although the Defendants argue that Falana did not contribute to the conception of Compound 9 because Compound 9 was first synthesized after Falana left the team, this argument is inapposite. The claims of the ’789 Patent are not limited to Compound 9. Instead, they claim a subset of the entire genus of naphthyl substituted TADDOLs—those which are RR enantiomers. Falana contributed to the conception of this genus by providing the team of which he was a part with the method for making these novel compounds.”

    So, if a claim was limited only to Compound 9, the opinion seems to suggest that Falana would not be a joint inventor because compound 9 was discovered after Falana left EVEN THOUGH Falana still contributed the method to make compound 9.

    The opinion in the above passage then suggests that the actual claimed subject matter includes more than compound 9 and includes the entire sub-genus of RR enantiomers. It is clear Falana conceived and reduced to practice one embodiment of the larger genus that includes both RR and SS enantiomers but there is nothing highlighting that Falana himself conceived and reduced to practice a RR enantiomer. The closest we get is a statement on page 4 that “Falana’s Synthesis Protocol could be used, and was used, to synthesize both RR and SS enantiomers.” If Falana himself synthesized RR enantiomers that fell within the claims then Falana is clearly a joint inventor of the sub genus (ie those limited to RR enantiomers) or maybe even if the RR enantiomers were made by others on the team while Falana was still there then Falana was a joint inventor of the RR sub genus.

    But if the RR enantiomers were made by others using Falana’s method only after he left then the RR subgenus looks just like a claim to compound 9 and the opinion implies that compound 9 itself would not by jointly invented. If this analysis is sound then I am confused why the opinion does not tell us when the first RR enantiomers were made using the method. And if the timing of the first synthesis of the sub genus of RR enantiomers is not relevant then why did the opinion imply that it would be relevant for a claim limited to compound 9?

  14. The law seems to suggest that WXY and Z are necessary co-inventors in that situation.

    Just so that I can keep up, are you saying that this case suggests that, or that the law prior to this case suggests that? I think I may need to read this case again, perhaps more slowly.

  15. As the hypothetical is presented there is no inventor in common so the second application soes not qualify to claim priority as a CIP.

    Thanks for catching that! :P

    Thankfully, CIP or not, the publication timing issue remains unchanged.

    I agree with the CAFC (and everyone upthread) that if Application 1 publishes before Application 2 is filed (or more accurately, before ABCDE is conceived by inventor Z), then WXY should not be listed as inventors on an application claiming the non-obvious (but derived) composition ABCDE.

    The weirdness (in my opinion) re inventorship comes in where all the facts are the same except publication of WXY’s invention comes after Z’s invention. The law seems to suggest that WXY and Z are necessary co-inventors in that situation.

  16. What you can claim as your actual invention depends on timing.

    Agreed – “what you can claim” is what I meant by “patentable advances.” I still don’t see how you get from here to who the inventors are, which is a claim-by-claim inquiry. If ABCD is published and if ABCDE is legally obvious, then the issue of potential joint inventorship is moot.

    The problem here is that ABCD is itself novel. Just because ABCDE is claimed, that doesn’t mean E is necessarily the only inventive contribution. ABCD is separately patentable, and the contributors of ABCD are just as responsible for ABCDE’s entitlement to patent protection.

    Are you stating the law here, or your view as to what the policy should be? Because I’ve never seen questions of joint inventorship framed in terms of whether the separate contributions are separately novel, but rather in terms of collaboration. The courts have recognized that not all of the collaborators need to know that they are collaborating, which is a little weird, but there must be some element of collaboration. If Z reads an internal memo describing ABCD, and comes up with ABCDE to solve a different problem, then I don’t think W and X are joint inventors. On the other hand, if he adds E to more completely solve the problem they were addressing, than they probably are.

    You’re right that the CIP is a red herring, as 103(c) allows a company to patent obvious advances under the right circumstances without regard to whether the later application is a CIP.

  17. you can’t have a CIP unless there’s overlap in inventorship,

    The question at hand is about whether W, X and Y are properly inventors, so that’s kind of a red herring.

    I disagree with IANAE that the issue of inventorship depends on the timing.

    Of course it does. The issue of whether you even have an invention depends on timing. Now more than ever, as it depends on the time of filing rather than the time of invention.

    What you can claim as your actual invention depends on timing. If the timing is such that W, X and Y contributed what turns out to be only common general knowledge, they can’t be inventors – unless re-inventing the prior art counts toward inventorship.

    What if W, X and Y had given Z a well-known published textbook in the field that showed Z some stuff he didn’t already know? What if ABCD was in that textbook? Are W, X and Y inventors of ABCDE? What if, instead of a textbook, W, X and Y did all that textbook stuff themselves as grad students in Z’s lab?

    Contrast Malcolm’s hypothetical where ABCD could have actually been claimed as a patentable invention in the application.

    If the only contribution of W and X was in the development of ABCD, and if that development was not directed towards the development of ABCDE,

    The problem here is that ABCD is itself novel. Just because ABCDE is claimed, that doesn’t mean E is necessarily the only inventive contribution. ABCD is separately patentable, and the contributors of ABCD are just as responsible for ABCDE’s entitlement to patent protection.

  18. Late to this discussion…

    I will use Y as the common party, and will disregard Z.

    I largely agree with Leopold, except for this: “If the development of ABCD was directed towards achieving something like ABCDE, even if they didn’t yet know what E was, then they are.”

    I think that would be the case only if ABCD was novel, otherwise anybody who builds components directed toward assembly in a patentable combination is an inventor–which they are not–AND if somebody at the time of invention of ABCD had knowledge of the specific chemical structure ABCDE, which somebody may or may not be one of W,X, or Y, but which somebody is named as an inventor of ABCDE.

  19. By the way, if I’m correct, then I think Free Crayon’s post was actually on point – the issue of prior art doesn’t impact whether someone is an inventor, but instead impacts whether they have invented something that is a patentable advance.

  20. another in-house is correct, of course, that you can’t have a CIP unless there’s overlap in inventorship, so we have to modify the hypothetical to make Z one of W, X, Y. Let’s assume Y and Z are the same person.

    I disagree with IANAE that the issue of inventorship depends on the timing. Timing resolves whether an obvious advance can be patentable or not.

    The question of inventorship depends on collaboration. If the only contribution of W and X was in the development of ABCD, and if that development was not directed towards the development of ABCDE, then I don’t think they are collaborating and W and X are not joint inventors of ABCDE with Z. If the development of ABCD was directed towards achieving something like ABCDE, even if they didn’t yet know what E was, then they are.

    Did I miss something?

  21. As the hypothetical is presented there is no inventor in common so the second application soes not qualify to claim priority as a CIP.

  22. Ned I don’t have a specific info on standard practices in such cases. The Association of University Technology Managers (AUTM) may have such information (see http://www.autm.net).

    I do understand that most universities have policies for researchers to share royalties; that’s primarily because Bayh-Dole mandates that researcher/inventors must share in the royalties for federally funded research (most university research is). But sharing in royalties is a separate issue from having the researcher assign/be subject to an obligation to assign inventions that research is at least a co-inventor of.

    One of tne other Bayh-Dole obligations a university undertakes is to get assignments/obligations to assign from the researcher for a federally sponsored research. But as the Stanford case makes clear, that’s not automatice, but must be “proactively” carried out by the university.

  23. sockie What does the filing after publication have to do with anything?

    See the CAFC quote in my comment, sockie.

    Isn’t this taking the “becomes public knowledge” comment oout of context?

    Not at all, sockie.

    Aren’t there already rules about ownership and what constitutes material available as prior art against entities commonly assigned

    There are such rules but we’re discussing inventorship, not ownership or prior art. Try harder, sockie.

  24. Is the statement above true even if the CIP was filed before Application 1 published?

    I think that probably is where the line should be drawn. If the contributions of others are prior art to one’s application, they are not inventors. The inventors should be those who developed the patentable advance.

    If ABCD is still novel, and needed to make ABCDE, I would think the inventors of ABCD should be named on a patent claiming ABCDE.

    If ABCD is prior art, then only the person who added E should be named. Otherwise you wind up in a situation where you can’t claim a car without naming the inventor of the pneumatic tire. Good luck getting an assignment from him to your company.

  25. MM. I am interested in this forum’s response to your hypothetical… Any one care to chime in? Do you have to list an inventor (in the US) when his contribution is in the prior art, but still part of the claims? DId I characterize the issue correctly?

  26. What does the filing after publication have to do with anything?

    Isn’t this taking the “becomes public knowledge” comment oout of context? Aren’t there already rules about ownership and what constitutes material available as prior art against entities commonly assigned (and properly linked by claims while the parent is still alive)?

  27. EG, most U’s have policies whereby professors share in royalties. I suspect that if Falana were a named co-inventor, he might get a piece of the action regardless that he must assign his rights to Kent State. Do you have an info on standard practices in cases such as this one?

  28. CAFC: “Once the method of making the novel genus of compounds becomes public knowledge, it is then assimilated into the store-house of knowledge that comprises ordinary skill in the art.” Id. at 15-16.

    So …. inventors W, X, Y, and Z work for PharmaCorp.

    W, X, and Y are inventors of a composition comprising ABCD described and claimed in Application 1. ABCD is a hugely important drug. Application 1 is published.

    Application 2, filed after the publication of Application 1, is a CIP of Application 1. The only new matter in Application 2 is a non-obvious derived composition comprising ABCDE that was conceived of and reduced to practice by Z. The reduction to practice involves first making ABCD exactly as described in the original app, then adding E.

    If Application 2 recites only claims to ABCDE, then the only inventor that should be listed is Z. Correct?

    Is the statement above true even if the CIP was filed before Application 1 published?

  29. So it all boils down to “Kent being Superman” and then Superman being God.. Who thought that up at the Catholic University? You really should have done something with your talent rather than mine. You think that makes it ok? Sorry buddy… Now see if I had known who my Daddy was it may have been a no brainer.. LOLOL. This is not a free pass. The pass was mine to give, not yours!

  30. Presumbaly you chose not to use the word “assume” because of the obvious ASS-U-ME response that follows unwarranted assumptions.

    After the Stanford case, one would simply not assume one way or the other whether rights devolve to an employer, but would check the specific facts at hand.

  31. The problem of inventive contributions by university researchers (and worse yet, students) is one of the “Dark Sides” of university tech transfer. And as stated up thread, without an assignment/obligation to assign, the university has, at best, a shop right which is likely worthless for tech transfer purposes. Universities may be resistant to getting employment agreement agreements with their researchers that include assignment obligations (because academic researchers may object to their “freedom” being restricted), but the alternative is being SOL when it comes to being able to conduct tech transfer.

  32. No wonder they wouldn’t deal with me. No wonder I have been gagged… I always thought there was separation of Church and State. So now what? Dick there is an awesome resemblance.

  33. Yes, that presumption is wrong. You need an obligation to assign or an automatic assignment in th employment agreement. Otherwise, you’re looking at a shop rights situation or worse. Or you pay the guy a bonus to get the assignment.

  34. Thanks Jason – As we move forward, the additional interesting issue would be whether Kent State’s invention counts as a derivation under the America Invents Act.

  35. My first thought was that this must surely be a Phyrric victory, for Falana was hired to invent and so, presumably, his work product would belong to his employer.

    But any such presumption would be wrong, right?

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