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Federal Circuit Clarifies the Level of Contribution Required for Joint Invention of a Chemical Compound
By Yana Welinder – Edited by Adam Lewin

Falana v. Kent State Univ., No. 2011-1198, 2012 WL 171550 (Fed. Cir. Jan. 23, 2012)
Slip Opinion

The Federal Circuit affirmed in part the ruling of the U.S. District Court for the Northern District of Ohio, which held that Dr. Olusegun Falana should have been listed as co-inventor on a patent that described the use of his protocol for controlled synthesis of a category of chemical compounds for use in liquid crystal displays (“LCDs”).

Judge Linn, joined by Judge Prost and Judge Reyna, affirmed the district court’s order to add Falana as co-inventor to U.S. Patent No. 6,830,789 (filed Sept. 24, 2001) (“the ’789 patent”). The court found that Falana “envisioned the structure of a novel chemical compound and contributed to the method of making it” because he developed a procedure for synthesizing a new class of compounds that was later used to synthesize a compound that exhibited a desired temperature independence. Slip op. at 13. In so holding, the court considered Falana’s contribution to “the entire class of compounds covered by the plain language of the claims” and rejected the defendants’ narrow reading of the claims to be limited to compounds that can perform “across a temperature range of +10°C to +50°C.” Id. at 7, 9.

PatentlyO provides an overview of the case. IP Frontline criticizes the decision because as applied to patents “with countless claims [it] opens the door to the possibility that at least one of the claims was jointly invented by someone not named in the patent,” which might enable patent defendants to recruit unlisted co-inventors as part of a patent litigation defense strategy. 

Falana, a former researcher with Kent Displays, Inc. and Kent State University, filed an action against his former employers and colleagues to be added as inventor to the ’789 patent, which the defendants had filed after his resignation. Slip op. at 2–5. Falana had developed a synthesis protocol for making naphthyl substituted TADDOLs—a new class of chemical compounds. Id. at 4. Using this protocol, Falana synthesized Compound 7, which did not exhibit sufficient temperature independence to be used in LCDs, but presented “significant progress.” Id. After Falana’s departure, his supervisor used Falana’s protocol to synthesize Compound 9, which was similar to Compound 7 but exhibited the aspired temperature independence. Id. at 5. Though the ’789 patent’s claims did not refer to the temperature independence of the invented compounds, the defendants argued that unless this reference was inferred from the specification “the claimed compounds ‘would be commercially worthless.’” Id. at 8. However, the court found no reason to go beyond the plain language of the claims because even the specification provided that “the temperature dependence . . . is a modifiable characteristic of the claimed compounds.” Id. at 9. Having construed the claims not to be limited to Compound 9, the court further found that Falana sufficiently contributed to the invention because he envisioned the claimed subset of the naphthyl substituted TADDOLs and provided a method for making these compounds that was “more than the use of ordinary skill in the art.” Id. at 15, 17.

This decision is significant because it clarifies that a co-inventor’s contribution will depend on the scope of the claims. Indeed, the court relied on Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466 (Fed. Cir. 1997), to determine whether Falana contributed to the conception of the claimed compounds. Falana was able to meet the Fina test regarding contribution to the invention’s conception because the court construed the claims to cover more than Compound 9. Thus, the court’s holding potentially incentivizes narrower drafting of claims when someone could possibly assert co-inventorship. However, that will only be possible when there is “some open line of communication during or in temporal proximity to [co-owners’] inventive efforts.” Falana, slip op. at 16 (citing Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1359 (Fed. Cir. 2004)). Moreover, the court carefully pointed out that an inventor would not qualify as co-inventor for all future inventions that rely on her method to make new compounds because the disclosure of her method makes it “ordinary skill in the art.” Id. at 17–18.

Yana Welinder is a LLM at the Harvard Law School.

Posted On Feb - 7 - 2012 Comments Off

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