A putative inventor who envisioned the structure of a novel genus of chemical compounds and contributes the method of making that genus contributes to the conception of that genus and thus may qualify for joint inventorship.

Falana v. Kent State University and Alexander J. Seed, 2011-1198 (Fed. Cir. January 23, 2012).

The plaintiff sought a correction of inventorship under 35 U.S.C. § 256, alleging that he was an omitted co-inventor of a patent for a chiral additive to portable liquid crystal display screens. The plaintiff developed a synthesis protocol for a genus of compounds, including the patented compounds, and was included as a co-author on a publication describing the genus of compounds. The district court agreed, ordering the Patent Office to issue a certificate of correction and awarding attorney fees as an exceptional case.

On appeal, the Federal Circuit affirmed the district court’s decision, holding in relevant part that: (1) a patent’s claims, not its written description, control a dispute over the patent’s scope; (2) the contribution of the method used for making the claimed compounds could be enough of a contribution to conception to pass the threshold required for joint inventorship; and (3) an exceptional case determination justifying attorney fees that was not yet final could not be reviewed. On joint inventorship, the court reasoned that the complete conception of a chemical compound necessarily requires knowledge of a method to make it, and where the method requires more than the exercise of ordinary skill, the discovery of that method is as much a contribution to the compound as the discovery of the compound itself. After the method of making a novel genus of compounds becomes public knowledge, it is then assimilated into the bank of knowledge that comprises ordinary skill in the art.

A copy of the opinion can be found here.

A district court’s denial of judgment as a matter of law on validity is reversible error where a prior art patent expressly anticipates two key requirements claimed by the patent-in-suit, and the lower court overemphasizes the patentee’s expert testimony instead of considering the prior art’s disclosure in its entirety.

Krippelz v. Ford Motor Company, No. 2011-1103 (Fed. Cir. Jan. 27, 2012).

The patentee of a vehicle-mounted exterior “Emergency Light” sued an alleged infringer.  The patentee prevailed before the jury on validity and damages, and the alleged infringer moved for judgment as a matter of law (“JMOL”), arguing that a French patent (“DuBois”) anticipated the lamp.  The district court denied the motion and alleged infringer appealed.  The Federal Circuit reversed the denial of JMOL of invalidity, vacated the earlier grant of summary judgment for infringement, and remanded for entry of a judgment of non-liability for the alleged infringer.

The district court denied JMOL after finding that a reasonable jury could conclude that DuBois lacked two key limitations:  (1) a “conical beam of light” and (2) a lamp “adjacent to the window.”  The district court construed a “conical beam of light” to require a certain type of reflector and a light source positioned at or near its focal point.  It then concluded a reasonable jury could find DuBois lacked these elements.

The Federal Circuit agreed with the district court’s construction, but found DuBois disclosed the elements and a reasonable jury could not find otherwise.  DuBois used language and described other embodiments that expressly satisfied the reflector and light source requirements.  Further, the district court improperly emphasized the patentee’s “conclusory” expert testimony and failed to consider the entire DuBois disclosure, portions of which undermined the expert’s opinion.

For the second limitation, the district court quoted the patentee’s expert to support its holding and the Federal Circuit again rejected his “conclusory testimony.”  The court found a person of ordinary skill would understand DuBois’s drawings, which showed a lamp mounted adjacent to the side window.

A copy of the opinion can be found here.