2011-1439 (Fed. Cir. March 28, 2013)

On March 28, 2013, the Federal Circuit upheld Judge Casper’s summary judgment decision, which dismissed plaintiff’s request to correct inventorship because there was no evidence of collaboration between the teams of scientists at Fordham University and Massachusetts General Hospital (“MGH”).

In 2000, Drs. Berish Y. Rubin and Sylvia L. Anderson identified genetic mutations causing Familial Dysautonomia (“FD”) and authored an article, which they sent to the American Journal of Human Genetics. Despite express instructions from Drs. Rubin and Anderson, the journal forwarded the abstract to Dr. Gusella at MGH for peer review. The complaint alleged that Dr. Gusella and his colleagues at MGH used the still-confidential article to complete their research and file a provisional patent application claiming their discovery. Drs. Rubin and Anderson sought relief under 35 U.S.C. § 256 to be substituted as inventors on the patents-in-suit or, alternatively, to be named as joint inventors.

The Federal Circuit first addressed the issue of joint inventorship. Because the teams of scientists worked independently and because the information was passed to MGH inadvertently, the Court held that the evidence did not support joint invention in accordance with 35 U.S.C. § 116. Second, the Court agreed with Judge Casper that the “real” issue was not of correcting inventorship, but rather of priority of invention. Because § 256 is a general remedial statute, the question is not of “correcting” named inventors. Rather, the issue of priority is one to be determined by PTO procedures.