Court Helps UPitt Drop Some Inventors

Posted on | July 23, 2008 | No Comments

2008-1468 Univ. of Pittsburgh v. Hedrick
CD/CA 04-9014
Judge Consuelo Marshall

Defendants Hedrick et al. appeal from the judgment of Judge Consuelo Marshall finding that defendants were not inventors of 6,777,231 and directing the PTO to change inventorship under 35 U.S.C. § 256.

§ 256 allows a court to remove an inventor from an issued patent if the person was named "in error"–however, the court did not explicitly find or address whether the 5 were named in "error."

There was no dispute that all of the named inventors worked on and researched adipose-derived stem cells, the subject of the ‘231.  The application was filed in September 2001 and issued in August 2004–the Regents of the Univ. of California are listed as the assignee.  The court’s findings show that UPitt filed the application.

In October 2004–shortly after issuance–UPitt brought the action to remove 5 of the 7 named inventors (the 5 that apparently didn’t work at UPitt).

The court discusses the law related to inventorship, particularly conception and contribution versus conducting "mere" supporting research.  Finding that UPitt’s inventors "conceived" of the claimed invention before and without the others, the court held that the others were not inventors.

More reading:

Findings and Conclusions

Counsel:

Pitt: Williams and Connolly (Adam Perlmam, Dane H Butswinkas, David I Berl, David S Blatt, Glenn J Pfadenhauer, Matthew J Peed) and Sheppard Mullin Richter & Hampton(Gary Clark).

Hedrick: Bingham McCutchen LLP (Erin Dunston, George L Fox, James B Lewis,Ryan M Nishimoto, Malcolm K McGowan) Sidley Austin (Jeffrey M Olson, Sandra S Fujiyama).

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