Opinion
Civil No. 01-1272-HU
November 8, 2002
Robert D. Newell, James D. Zupancic, Patricia L. McGuire, DAVIS WRIGHT TREMAINE L.L.P., Portland, Oregon, for Plaintiff.
David W. Axelrod, Denise M. Graves, SCHWABE, WILLIAMSON WYATT P.C., Portland, Oregon, James F. Haley, Jr., Jeanne C. Curtis, Robert B. Wilson, Elinor K. Shin, Gail A. Katz, FISH NEAVE, for Defendant.
OPINION AND ORDER
On September 3, 2002, Judge Hubel filed his Findings and Recommendation that defendant's motion for judgment on the pleadings be granted in part and denied in part (doc. #61). The matter is now before the court pursuant to 28 U.S.C. § 636(b)(1)(B) and Fed.R.Civ.P. 72(b). Defendant has filed timely objections. When either party objects to any portion of a Magistrate Judge's Findings and Recommendation on a dispositive motion, the district court must make a de novo determination of that portion of the Magistrate Judge's report. See 28 U.S.C. § 636(b)(1); Fed.R.Civ.P. 72(b); McDonnell Douglas Corp. v. Commodore Business Machines, Inc., 656 F.2d 1309, 1313 (9th Cir. 1981). For the reasons stated below, the court adopts in part and rejects in part Judge Hubel's Findings and Recommendation. Defendant's motion for judgment on the pleadings (doc. #20) is GRANTED.
BACKGROUND
The facts of this case are described in the Findings and Recommendation and need not be repeated at length. Plaintiff's first claim for relief under 35 U.S.C. § 256 seeks to add its research scientist, Dr. Gold, as an inventor on defendant's patent U.S. 6,037,370 (the '370 patent). The '370 patent application claimed the "neurotrophic" uses of various chemical compounds called "binders." A chemical is neurotrophic if it can stimulate nerve growth. "Binders" are compounds able to bind to a chemical called FKBP12. This binding action with FKBP12 was once thought necessary for neurotrophic effects. "Non-binders" are chemicals that do not bind to FKBP12.
Defendant first filed the '370 patent application on June 8, 1995. In June 1996, pursuant to an agreement between plaintiff and defendant, Dr. Gold tested some of defendant's pharmaceutical compounds, including binders and non-binders. During these tests, Dr. Gold discovered that one of the non-binders exhibited neurotrophic effects previously believed to be characteristic only of binders. This discovery was communicated to defendant, who subsequently amended claims one through six of the '370 patent application to remove language that restricted neurotrophic activity to binders. Plaintiff alleges that these amendments, which disassociated neurotrophic activity from binders, now include Dr. Gold's invention that non-binders can be neurotrophic. Dr. Gold is not named as an inventor on the '370 patent, so plaintiff brings this action under 35 U.S.C. § 256 to add Dr. Gold as a joint inventor.
In his Findings and Recommendation, Judge Hubel recommended that defendant's motion for judgment on the pleadings be granted in part and denied in part. The Magistrate Judge recommended granting judgment against plaintiff's second claim, which alleges inequitable conduct/fraudulent procurement. Plaintiff, having already agreed to dismiss the claim voluntarily, raises no objection to judgment on this claim in favor of defendant.
As to plaintiff's claim under 35 U.S.C. § 256 to add Dr. Gold as an inventor on the '370 patent, Judge Hubel recommended that defendant's motion for judgment on the pleadings be denied. Judge Hubel concluded that after discovery plaintiff might be able to produce evidence sufficient to show that Dr. Gold was a co-inventor and, if so, the court could order him added to the patent pursuant to Section 256. See Findings and Recommendation at 13 and 16.
Defendant objects to the Findings and Recommendation on two grounds. Defendant argues that: (1) as a matter of law, Dr. Gold cannot be a co-inventor of the '370 patent because Dr. Gold did not make his contribution to the invention until one year after the patent application was filed; and (2) plaintiff is improperly seeking a judgment on the patent's validity by attempting to add Dr. Gold as an inventor on the '370 patent.
DISCUSSION
A patent is invalid if more or less than the true inventors are named. Trovan, Ltd. v. Sokymat SA, Irori, 299 F.3d 1292, 1301 (Fed. Cir. 2002). To save a patent from invalidity for the failure to name a joint inventor or a correct inventor, 35 U.S.C. § 256 provides that if the true inventors are not named on a patent, the patent may be corrected to reflect these true inventors. Pannu v. Iolab Corp., 155 F.3d 1344, 1350 (Fed. Cir. 1998). Plaintiff alleges that by amending claims one through six of the '370 patent application, defendant broadened the scope of the patent to encompass Dr. Gold's invention that non-binders can be neurotrophic. While Dr. Gold is not the inventor of the subject matter as originally claimed, plaintiff believes that he should be named as a co-inventor on the patent as issued. Plaintiff seeks to invoke Section 256 in order to make this "correction."
The assertion that Dr. Gold should be named as the inventor of the patent — as issued — rests on the premise that defendant impermissibly amended its patent to add new matter to claims one through six, in violation of 35 U.S.C. § 132 ("No amendment shall introduce new matter into the disclosure of the invention."). As plaintiff alleges, "[D]efendant amended the claims to add subject matter not found in the original application. . . ." Plaintiff's Response to Defendant's Objections to the Findings and Recommendation at 2.
Defendant objects to a claim of invalidity being raised through a Section 256 action to correct inventorship, arguing that a challenge to the validity of a patent may be asserted only as a defense to an infringement suit. See In re Lockwood, 50 F.3d 966, 974 n. 8 (Fed. Cir. 1995), vacated, 515 U.S. 1182 (1995). Plaintiff responds that it is not attacking the validity of the patent, but merely seeks to have Dr. Gold's contribution to the invention claimed in the '370 patent recognized by adding Dr. Gold's name to the patent. Moreover, plaintiff contends that there is no requirement that a patent corrected in a Section 256 action be valid in all other respects. See Stark v. Advanced Magnetics, Inc., 199 F.3d 1551, 1554 (Fed. Cir. 1997) (allowing plaintiff's Section 256 claim to proceed despite the fact that the patent could ultimately be declared unenforceable due to inequitable conduct).
While it is true that plaintiff is not arguing that the '370 patent should be declared invalid, a decision that Dr. Gold should be added to the '370 patent would require a preliminary finding that the patent is invalid. This is because both conception and reduction to practice are deemed to occur no later than the filing date of the patent application. Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998). The new matter prohibition of 35 U.S.C. § 132 serves to ensure that the patent applicant was in full possession of the claimed subject matter on the application filing date. TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec., 264 F.3d 1111, 1118 (Fed. Cir. 2001). "Because the filing date is so important in determining patent rights, it is essential that there be no question that, at the time an application for patent is filed, the invention claimed therein is fully capable of being reduced to practice. . . ." In re Argoudelis, 434 F.2d 1390, 1395 (Fed. Cir. 1970) (Baldwin, J., concurring) (emphasis in original).
Dr. Gold did not make his discovery that non-binders could be neurotrophic until one year after defendant filed the '370 patent application. To add Dr. Gold to the patent would necessarily require a finding that defendant was not in possession of the claimed subject matter at the time it filed its application or, in other words, that the patent is invalid. The '370 patent may indeed be invalid in this sense, but, contrary to the Findings and Recommendation, it is impermissible to declare it invalid in an action brought under Section 256. Congress has conferred no jurisdiction on the federal courts to adjudicate a patent's validity in a Section 256 action to correct inventorship. Cf. 35 U.S.C. § 282 (allowing parties to assert invalidity as a defense to an infringement action).
Stark v. Advanced Magnetics, Inc. is distinguishable. In that case, the Federal Circuit merely observed that a patent corrected pursuant to Section 256 may also be declared invalid in some hypothetical future action but that any potential invalidity was irrelevant to the claim of inventorship by Dr. Stark. See Stark, 199 F.3d at 1555. In contrast, adding Dr. Gold in this instance would mean that the patent is necessarily invalid. Otherwise, the contention that Dr. Gold is a co-inventor of the claimed subject matter on an application filed one year before his collaboration would be nonsensical. As the Federal Circuit explained in Credle v. Bond:
[W]here the sets of dates alleged define distinct, non-overlapping periods, the allegation that the inventors are joint is facially inconsistent with the two distinct periods, because a person who first conceived and first reduced the subject matter of the invention to practice cannot, under the law, be a joint inventor with a person who allegedly did not even conceive the invention until after the former's reduction to practice. Collaboration under such circumstances simply is not possible.25 F.3d 1566, 1574 (Fed. Cir. 1994). Unless the '370 patent is invalid because defendant impermissibly broadened the scope of its original application, it is impossible for Dr. Gold to have collaborated on the subject matter of this patent filed one year before his involvement. Plaintiff may not assert that a patent is invalid in an action to correct the named inventors under Section 256.
Accordingly, this court finds that, as a matter of law, Dr. Gold cannot be named as a joint inventor under Section 256.
CONCLUSION
The Findings and Recommendations (doc. #61) is adopted in part and rejected in part. With regard to plaintiff's claim of inequitable conduct/fraudulent conduct, the recommendation for judgment in favor of defendant is adopted. However, the recommendation that defendant's motion for judgment on the pleadings be denied is rejected. The motion for judgment on the pleadings (doc. #20) is GRANTED.
IT IS SO ORDERED.