Last Week in the Federal Circuit (July 13-17): A Nobel Prize-Worthy Inventorship Dispute

Last week was a busy week at the Federal Circuit, as is often the case after an argument sitting. It issued 19 decisions total, some in cases from the Court’s July sitting and others in older cases. As usual, we provide last week’s statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions: 9

Non-precedential opinions: 8

Rule 36: 2

Longest pending case from argument: Simmons v. Wilkie, No. 19-1519 (102 days from argument to decision)

Shortest pending case from argument (non-Rule 36): BookIT Oy v. Bank of America Corporation, No. 19-2142 (42 days from argument to decision)

Case of the week: Dana-Farber Cancer Institute, Inc. v. Ono Pharmaceutical Co., Ltd., No. 19-2050 (July 14, 2020)

Panel: Judges Newman, Lourie, and Stoll, with Judge Lourie writing the opinion.

You should read this case if: You have a matter involving an inventorship dispute.

Patent inventorship disputes often involve interesting stories and important technologies. Our case of the week this week is no exception.

The three inventors in this case—Drs. Tasuku Honjo, Gordon Freeman, and Clive Wood—conducted groundbreaking research in the field of cancer treatment. They discovered PD-1, a receptor on T cells (a type of white blood cell), and PD-L1 and PD-L2, its associated ligands. Healthy cells express PD-L1 ligands, which bind to T cells’ PD-1 receptors and stop the T cells from attacking the healthy cells. But some tumors also express PD-L1/L2 ligands, protecting them from T cells as well. The patents in this case claim methods of using antibodies to block that receptor-ligand interaction, stimulating the immune response against those tumor cells.

A bit more background on the researchers’ collaboration: Dr. Honjo discovered the PD-1 receptor in the early 1990s. He began working with Drs. Freeman and Wood in 1998 to study the possible use of the PD-1/PD-L1 pathway in treating cancer. In 1999, Drs. Freeman and Wood filed a provisional patent application relating to activating or blocking the PD-1/PD-L1 pathway to modulate the immune response, but they did not list Dr. Honjo as an inventor. All three researchers published an article in October 2000 documenting their discoveries and stating that some tumors may use PD-L1 to inhibit an immune response. Several weeks later, Dr. Honjo, without Drs. Freeman and Wood, conducted in vivo experiments in mice studying tumors expressing PD-L1. Dr. Honjo filed a patent application based on the results of those experiments. The patents in this case all claim priority from that application. Dr. Honjo eventually shared the 2018 Nobel Prize in Physiology or Medicine based in part on the discoveries that led to that application; in his acceptance speech, he credited Dr. Freeman as a major collaborator in his work.

Dana-Farber, Dr. Freeman’s employer, brought suit in 2015, alleging that Drs. Freeman and Wood should be added as inventors on Dr. Honjo’s patents. The district court agreed, concluding that several of their contributions—including their discovery of the PD-L1 ligand and Dr. Wood’s discovery that PD-1/PD-L1 binding inhibits the immune response—were significant to the inventions’ conception. Ono, the assignee of Dr. Honjo’s rights in the patents, appealed.

The Federal Circuit affirmed. It rejected Ono’s various challenges to the district court’s legal analysis, declining to adopt the categorical rules that Ono proposed.

First, Ono argued that Drs. Freeman and Wood’s work did not qualify them as joint inventors because they did not participate in the in vivo experiments that directly led to the patented inventions. The Federal Circuit rejected this “unnecessarily heightened inventorship standard.” It explained that “joint inventors need not contribute to all aspects of a conception.” In the Federal Circuit’s view, their “overall contributions throughout their collaboration with Dr. Honjo” sufficed to make them joint inventors.

Second, Ono asserted that Drs. Freeman and Wood’s contributions could not have been significant because Dr. Honjo’s patents issued over their 1999 provisional application. The Federal Circuit disagreed, observing that “joint inventorship does not depend on whether a claimed invention is novel or nonobvious over a particular researcher’s contribution.” Rather, “[c]ollaboration and concerted effort are what result in joint inventorship.”

Third, Ono pointed out that Drs. Freeman and Wood’s contributions were published before the conception of the patented inventions. It asked the Federal Circuit to hold categorically that research made public before the date of conception, and thus in the prior art, cannot qualify as a significant contribution. The Court declined to adopt such a rule. It acknowledged that merely providing information about the state of the prior art does not make one a joint inventor. But the Court saw “no principled reason to discount genuine contributions made by collaborators” merely because “portions of that work were published prior to conception for the benefit of the public.”