By Dennis Crouch
Rubin v. General Hospital Corp (Mass. General) (Fed. Cir. 2013)
Back in 2000, Dr. Rubin and his team identified an IKAP Gene mutation as causing a syndrome known as Familial Dysautonomia. Rubin sent his article to the American Journal of Human Genetics who forwarded the abstract to Dr. Gusella at Mass General for peer-review. Dr. Gusella then filed a provisional patent application in January 2001 shortly before Rubin’s article published. Gusella’s team had been working on the same genetic problem as Rubin (that’s why the journal sent him the article for review). Interestingly, Rubin particularly actually asked the journal not to send it to Gusella because of the lab-lab competition, but the journal sent it anyway.
After Gusella’s patent issued Rubin sued under 35 U.S.C. §256 – asking that Rubin be added as a joint-inventor. 35 U.S.C. §116 roughly defines joint inventorship as “when an invention is made by two or more persons jointly.” The statute makes clear that the two individuals do not need to “physically work together or at the same time,” “make the same type or amount of contribution,” or contribute to “every claim of the patent.” Still, the statute requires they acted “jointly.”
The district court dismissed the case on summary judgment – holding that there was no evidence of collaboration between Rubin & Gusella as required for joint infringement.
On appeal, the Federal Circuit affirmed – holding that “the independent relationship between these teams of scientists, and the nature of this communication of information, do not support joint invention in accordance with §116, or warrant change or substitution of inventorship under §256.” The non-precedential opinion by Judge Newman is short on analysis and does not contend with the controlling precedent of Kimberly-Clark Corp. v. Proctor & Gamble Distributing Co., 973 F.2d 911 (Fed. Cir. 1992). In that case, the court identified one form of joint inventorship “such as collaboration or working under common direction, one inventor seeing a relevant report and building upon it or hearing another’s suggestion at a meeting.” See also Mueller Brass v. Reading Industries, 352 F. Supp. at 1357 (E.D. Pa. 1972).