Inventorship: Conception does not Require Scientific Certainty; Rather, “Proof that the Invention Works to a Scientific Certainty is Reduction to Practice”

University of Pittsburgh v. Marc Hendrick (Fed. Cir. 2009) 08-1468.pdf

The patent at issue (6,777,231) relates to a method of creating stem cells from liposuction residue. In an inventorship dispute amongst former Pitt scientists, the district court held that the Hendrick was not a co-inventor. On appeal, the Federal Circuit affirmed – based primarily on the corroborating evidence found in one of the listed inventor’s laboratory notebook.

Inventorship is a question of law, although a challenge to inventorship must be proven with clear and convincing evidence. In a joint invention situation, “each inventor must contribute to the joint arrival at a definite and permanent idea of the invention as it will be used in practice.” However, there is no requirement that the inventors actually work together; that all asserted claims be jointly invented; or that all inventors realize that they invented something.

In this case, the timeline is important: The two listed inventors had written evidence (in lab notebooks and elsewhere) from before Hendrick arrived on campus that they believed their liposuction derived stem sells could transdifferentiate into various types of cells such as bone, cartilage, nerves, and muscles. At that time, however, they were not “scientifically certain” that nerve cells had been created. And, almost certainly, the two did not have enough evidence to patent their specific claim to adipose-derived stem cells that can differentiate into nerve cells. Hendrick and his REBAR team of researchers then came along and confirmed that the “highly speculative” suggestions of the original listed inventors was indeed correct.

On appeal, the Federal Circuit held that despite the lack of scientific certainty, the invention had been conceived before Hendrick joined the team.

[Hendrick’s] is premised upon a misapprehension of what it means to “know” the limitations of the claims.

Knowledge in the context of a possessed, isolated biological construct does not mean proof to a scientific certainty that the construct is exactly what a scientist believes it is. Conception requires a definite and permanent idea of the operative invention, and “necessarily turns on the inventor’s ability to describe his invention.” Proof that the invention works to a scientific certainty is reduction to practice. Therefore, because the district court found evidence that Katz and Llull had formed a definite and permanent idea of the cells’ inventive qualities, and had in fact observed them, it is immaterial that their knowledge was not scientifically certain and that the REBAR researchers helped them gain such scientific certainty.

Here, the lab notebooks were important to to show that the listed inventors had “sufficiently described to those skilled in the art how to isolate the cells from adipose-tissue … [and] thus they had disclosed a ‘completed thought expressed in such clear terms as to enable those skilled in the art to make the invention.'” Citing Coleman.

Affirmed

40 thoughts on “Inventorship: Conception does not Require Scientific Certainty; Rather, “Proof that the Invention Works to a Scientific Certainty is Reduction to Practice”

  1. 40

    Dear Max,

    I truly admire the cleverness of your responsive 3:47 testimony,
    especially the lawyer-like lack of commitment.
    Bravo. Touché!
    Me Too.

  2. 39

    I’m past inventor and 2 years into patent examination. I wish to learn interesting topics of law on the web site. I regard the inventorship question raised by Max interesting and important to the patent system role in encouraging ground breaking inventions. I hope to see the counter argument why this is not an issue but I failed to detect a direct reply to Max’s question.

    Contrary to incremental improvement type of inventions, the ground breaking inventions are speculative/conceptual. Pitt’s scientists scenario has similarity to Schockley’s attempt to exclude Bardeen and Brattain from transistor patent. Science Fiction movies already speculate various “inventive concepts” (according to the loose standard) and Nobel prize hopefuls have many concepts in concrete form. No one wants to see these concepts/speculations own patent right over the true reduction to practice, particularly in fields such as geno research (here already), quantum computing (in 20~50 years) and worm hole and “time machine” (“I’m not betting on these”, according to Steve Hawkins).

  3. 37

    Hi.

    Re:
    “Does that satisfy you? Did you have something else on your mind. Do tell.”

    Yrs. No. Ok?

  4. 36

    Hi JAOI, don’t remember any bruising. I find it isn’t healthy, to dwell on these things.

    As to any other pen names, there was a moment, several months ago, when one of mine didn’t appear, after I (thought I) posted it. I fleetingly thought I had been banned.Then it turned out that there was just a delay in postings getting through.

    Now, was it this blog or was it Patent Prospector? Can’t remember. And what was my new name? Can’t remember. Max***r, I do believe.

    Apart from that, I’m clean (as far as I can remember).

    Does that satisfy you? Did you have something else on your mind. Do tell.

  5. 35

    Max,

    Are you willing to testify here and now that

    (i) you never posted on Patently-O with an alternate pen name?,

    and that

    (ii) your ego(s) has never been bruised on Patently-O?

  6. 34

    Big Guy, you’ve rumbled us. Your perspicacity has no bounds. Oh dear oh dear. Whatever shall we do now?

    dag: quite right. Total waste of time. Fun though.

  7. 32

    MaxDrei = JAOI?

    “We know JAOI and the White Rabbit are at the same source…”

    Or do we?

  8. 31

    Readers, another thought just occurred to me. We know JAOI and the White Rabbit are at the same source but, if that split personality poster so easily comes to the idea that everybody else is using multiple pen names, I start to wonder how many further ones he himself is habitually using. I’m beginning to think that you can’t rely on anything here in this blog except your own judgement as to the value of the words on the screen. I’m thinking it’s best just to ignore the by-line beneath them. Malcolm Mooney might be Dennis but, then again, maybe he isn’t after all.

  9. 30

    Rabbit now you’ve gone and upset me. I am not Jerry, OK? My ego isn’t bruised, and things which you think are “transparent” are anything but. Do me a favour. Exercise that powerful rabbit brain of yours with the thought that, actually, Jerry is NOT me.

    Incidentally, Jerry, thank you. (You aren’t by any chance Jules, or Random PasserBy, are you? No, I thought not.)

    Emma, sorry. I agree the instant case isn’t about FtF vs FtI (You are not another pen name for the performer known as Noise above Law, are you?). I just saw the instant case as an interesting vehicle for exploring the issue which patent system gives most reward to speculators (as opposed to meritorious reducers to practice). Is it FtF or FtI? I am sick of being told that FtF is bad, because it rewards speculators, so I thought I would argue back. Sorry to have confused you.

  10. 29

    Max,

    Helpful hint: Your self-serving use of alternate pen names to sooth your bruised ego is soo transparent, even to the likes of me. Please play fair.

  11. 28

    MaxDrei-
    Don’t change a thing. If you’re aggravating NAL, you must be doing something right!

  12. 27

    I don’t see why FTF and FTI is even an issue. This case is about whether a named inventor actually contributed to conception.

  13. 26

    Gee thanks Passer. You know why I push the EPO? Because here in Europe it competes with national Patent Offices in European countries, for the business of my clients. It is just so amazing to see something at a pan-European level working half way decent, I just can’t stop talking about it, never mind when it’s actually better than the national offerings. I genuinely think the world can learn something from the EPC and the EPO’s problem and solution approach (both invented 30 or more years ago). Bit of a crusader, me.

    But I take your point. In future, I must try to be less provocative, if I want people to read me. It’s just such a temptation though, to wind Americans up. At the office, American patent attorneys are my clients and, in my book, the customer is king (and kings are not always the sharpest cards in the deck). Here on this blog I can have some fun.

  14. 25

    Max, ignore Noise, she’s had permaPMS ever since Obama was sworn in. I for one much prefer to read a MaxDrei comment over anything by Noise. You do kind of have a tendency to overly make sweet love to the EPO in 90% of your comments, but even if that bugged me, my computer, apparently unlike the computers of others on this board, has a little object on the side of the screen called a “scroll bar”. I can use this “scroll bar” gizmo to skip comments that I don’t want to read, it’s great. (but don’t tell Patent Hawk about this, he may try to patent it)

  15. 24

    You could argue every drug undergoing clinical trials to support it’s underlying efficacy claims, is mere speculation on some level.

  16. 23

    “But here’s the problem. Life’s too short. What you get from me is the amount of time I think this blog is worth, such that I personally think that I get out more than I put in.”

    Life’s too short to NOT give your best.

    No wonder your posts and reading comprehension are so crappy – it starts with the crappy attitude. If you would only realize that, indeed you would get more out the more that you put in, and then your positions and post might be meaningful and you might really learn something. So might the rest of us.

    Don’t you think it’s a bit disingenuous to fling such crap and then fall back and post a message such as “But my abiding interest is in the development of the law as such”? If your interest is only to the level that precludes you from actually THINKING about what you read and post, one must question just how abiding that interest is. I suspect that the interest only extends to what ever floats through your mind while your fingers are on the keyboard.

    Anyone have extra wipes for MaxDrei?

  17. 22

    “…we can manage quite well without you thank you.”

    I’m sure you can, Max. You’re a one man circle jerk.

  18. 20

    “On appeal, the Federal Circuit held that despite the lack of scientific certainty, the invention had been conceived before Hendrick joined the team. of the invention had in contribution of confirming the validity of prior research is not they type of activity that creates a right of inventorship:”

    I don’t understand this part of the article due to the sentence fragment. Anyone care to guess how to make sense of it?

  19. 19

    Noise, you are right. I do need to do a better job. But here’s the problem. Life’s too short.

    What you get from me is the amount of time I think this blog is worth, such that I personally think that I get out more than I put in. If you don’t follow, and say so in your inimitable fashion, that’s my gain (cos then I know better where my communication skills are still not perfect), and your problem,

    Anyway, I’m off now. Bye bye.

  20. 18

    DC: “And, almost certainly, the two did not have enough evidence to patent their specific claim to adipose-derived stem cells that can differentiate into nerve cells.”

    I assume then that the notebook excerpts supporting this conception were not used in a 131 dec to get behind prior art during prosecution.

    I’m not sure what to make of this case, tho’ I’m inclined to share Boggled’s concerns upthread. As ever, the facts are key. When does a hypothesis become a conception?

    Let’s say the claimed invention is a method of diagnosing disease X by measuring an increase in compound Y. Years earlier, Professor Angela had written in a notebook that “changes in molecules of type Z, whether an increase or decrease, could be used as in indicator of disease X.” Technician Bob was hired to put sample in a machine and discovered that the increases in Y, a molecule of type Z, are observed in diseased patients. Is Bob an inventor? Do the job descriptions matter? What if the notebook entry is less equivocal (but still speculative)? i.e., “changes in Y could be used as an indicator of disease X”?

    Also, I wonder if this case will help resolve the dispute between Stanford and the grad student who was allegedly improperly omitted as an inventor?

    link to patentdocs.org

    I somehow doubt it.

  21. 17

    Thanks Luke.

    “Don’t Bother” don’t bother to chip in; we can manage quite well without you thank you.

  22. 16

    luke,

    If Max wants to adress a hypothetical situation, he needs to premise it as such. If he wants to crap a comment and have readers guess which aspects are to be discussed (in the development of legal theory), he needs to do a much better job of “setting the table”.

    With what Max posts, it is NOT a table I would sit at.

    Now Max, your post is still crap. But if you want to put a little effort into it and propose a hypothetical with a different fact set, so that we may engage in a meaningful discussion, by all means, set the table.

  23. 15

    @noise

    Please address Max’s point. He is applying these facts to a possible future situation. It what good lawyers do.

  24. 14

    Noise, yes, I do know that, in this case, there was no rival independent filer. But my abiding interest is in the development of the law as such, and in what this particular case teaches us about the law as such, rather than in the specific boring facts of this case, which I had thought to be of secondary interest, at least for readers of this blog who are lawyers. But, go on, tell me I’m wrong again

  25. 13

    Bother, the ones you need to write to are the ones who write in “Max has a point”, for they also encourage me to keep posting. You and Noise, though. You feel free to carry on encouraging each other. I don’t mind. It all makes fun.

  26. 11

    ” I was merely positing that, in a race between rival independent parties, who are all diligent, the US patent goes to the earliest speculator rather than the one who is first to reduce to practice (actually or constructively).”

    You are merely wrong. The fact pattern here is NOT concerned with rival independent parties. The fact pattern here speaks NOTHING to your illusory “earliest speculator”.

    Don’t you get tired of being wrong?

  27. 10

    Noise , I was reading in the Decision the para bridging pages 12 and 13 about

    “…had the firm and definite idea….Thus, they had conceived….”

    I gathered from the Decision that corroboration of the speculation can come later. So, in what way was I wrong to equate “conception” with “speculation”?

    As to rewarding speculation, I was merely positing that, in a race between rival independent parties, who are all diligent, the US patent goes to the earliest speculator rather than the one who is first to reduce to practice (actually or constructively).

  28. 9

    NAL,

    Enjoy your post. But I recommend that you simply stop responding to MaxDrei. Goodness gracious is his schtick tired and boring!!! Ignore him. Maybe he’ll go away.

    Theoretically he has an actual job and will find posting his nonsense to be a waste of time when it’s not generating any reaction. It’s a waste of time regardless, but if we all agree to ignore him, maybe he’ll stop.

    Unfortunately, as the other two train wrecks, Mooney and 6, both work at the PTO, they have essentially unlimited time to post excrement here. Ignoring them probably won’t work, and some of their stuff is actually amusing, so let’s try to pick the battles we can win.

    Ignore Max. You’ll feel better.

  29. 7

    When I see a comment like “Not much life in this thread eh Dennis” on a thread just opened the night before, I thought to myself, this has got to be MaxDrei crap.

    Sure enough.

    MaxDrei, you will have to learn to flush for yourself. And to wipe yourself. I see at this point that you have learned neither.

    Your logic is flawed quite simply as you have conflated the issue in Dennis’ thread (ownership due to conception) with a made up (non-issue) of speculation and awarding a patent therefor. There simply is no basis for your comment “this case seems to award a US patent to a speculator”. A patent is not awarded to speculation. Reduction to practice is required and was present in the case at hand. The Issue of ownership is separate and has longstanding jurisprudence. Conception is clearly (and logically) different that reduction, no? You have conflated the two and tossing in FtF completely misses the fact pattern at hand.

    Let me repeat that: Dragging in one of your inane favorite topics (first to invent versus first to file) has nothing to do with the issue at hand. Your question “Which does the American economy prefer, mere speculation, or the earliest possible reduction to practice of valuable contributions to technology?” does not fit the present fact pattern, as the patent was reduced to practice and mere speculation was not rewarded. A “technician’s” help in reducing to practice does not convey patent ownership. Never Has.

    If you actually think when you read, rather than be in such a hurry to post excrement, you would recognize the fact pattern here does not logically relate to your post.

    Paul, don’t encourage mindless dribble – even your caveat of “[with at least one adequate enablement description]” invalidates the rest of your supposition, unless you don’t think that the adequate enablement description is truly enabling – but that’s a different issue now, isn’t it?

  30. 6

    I am so confused–how can this decision be reconciled with Rasmussen v. SmithKline (Fed. Cir. 2005)? Although that was an interference, the situations seem to be very similar–a conception of the invention was later reduced to practice essentially as explained in the disclosure. Does this mean that treatment of cancer is an unpredictable art, whereas making stem cells from adipose tissue is not? Or is this just another example of Federal Circuit roulette?

  31. 5

    Max poses an interesting challenge, because it is indeed true that conceivers who file first [with at least one adequate enablement description] will very often win interferences or other litigation over those who delay filing for an actual reduction to practice, unless the later filers can thoroughly prove both an earlier conception and fairly continuous dilligence. Thus, the “first to invent” system is not really a good excuse for delaying application filings.
    [But filing delays may well be due to the good reason that an assignee does not want to pay for a lot of speculative or narrow patent applications before an actual reduction to practice or at least obtaining more supporting data for the specification.]

  32. 4

    Not much life in this thread eh Dennis? let’s see if I can stir it up.

    American critics of FtF assert that it is BAD because it encourages speculative filings. Well, this case seems to award a US patent to a speculator (as against any other diligent researcher in the same area who succeeds sooner in reducing to practice ) on the basis that he was “First to Invent” (or first to speculate). That’s LESS encouragement to reduce to practice than is offered by FtF, in which a premature filing, that isn’t quite enabling, is worse than useless in that it positively harms the filer who jumps the gun.

    Which does the American economy prefer, mere speculation, or the earliest possible reduction to practice of valuable contributions to technology?

    Come on Noise. Tell me where my logic is flawed, and why this contribution is fit only to flush down the toilet.

  33. 3

    Sorry to go off topic, but I heard something interesting at the PTO this week. Apparently, in certain art units, second pair of eyes is going to start reviewing rejections after a certain point in the case (2nd or 3rd RCE I heard). I don’t think it’s PTO-wide, but rather they are targeting art units with low allowance rates. I heard this secondhand, and we haven’t been told anything in my art unit, so maybe it’s just a rumor. But if not, it marks a heck of a change.

Comments are closed.