Rubin v. Gen. Hosp. Corp.

Faced with the question of whether a federal district court should change the inventors listed on the face of a patent, the Federal Circuit found that the decision to change inventors was a question of priority of invention, and thus was properly an issue to be resolved by the U.S. Patent and Trademark Office (PTO) by virtue of an interference proceeding. Rubin v. Gen. Hosp. Corp., Case No. 11-1439 (Fed. Cir., Mar. 28, 2013) (Newman, J.).

Before issuance of the patents-in-suit, two teams of researchers raced to identify the genetic mutations that cause familial dysautonomia, an inherited disease also known as Riley-Day syndrome. The Fordham University researchers believed they identified the two genetic mutations first. They then sent an article reporting their findings to a medical journal, with specific instructions not to allow the competing team, from Massachusetts General Hospital (MGH), to peer-review the article. The journal’s editor sent the article to the MGH team despite these instructions. Eight days later, the MGH team submitted an article identifying the same genetic mutations. The MGH team then received patents based on the mutations.

Convinced they identified the mutations first, the Fordham team filed suit in federal district court requesting correction of the MGH patents’ inventorship under 35 U.S.C. § 256. The Fordham team claimed that the district court should substitute them as inventors, or in the alternative, add them as joint inventors. If not for the inadvertent transmission of their article, the Fordham team argued, the MGH team would not have identified the two genetic mutations. On summary judgment, the district court dismissed the case, holding that there was no joint inventorship because there was no “collaboration.” The district court also held that substituting the Fordham researchers as the inventors under § 256 was inappropriate for a district court and more appropriate for the PTO. The Fordham University inventors appealed.

The Federal Circuit agreed with the district court on both issues. Despite the fact that the MGH team received the Fordham team’s article, the Court reasoned that the independence of the teams and the minimal communication between them was not enough collaboration to qualify as joint invention. The Court also held that the dispute between the parties ultimately boiled down to a question of priority, the primary issue being whether the Fordham team or the MGH team was the first to identify the two genetic mutations. This determination was more appropriate for a PTO interference proceeding, not for a federal district court.