Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Dana-Farber Cancer Institute, Inc., v. Ono Pharmaceutical Co., Ltd., No. 2019-2050 (Jul. 14, 2020). The opinion affirmed a district court determination that collaborators with the named inventor on six patents must be added as co-inventors.
The relevant patents are directed to a method of treating cancer by administering antibodies targeting specific receptor-ligand interactions on T-cells to stimulate the immune response against tumor cells. A named inventor on all six patents, Dr. Tasuku Honjo, discovered a PD-1 receptor in the early 1990s, and found binding of PD-1 in tumor cells. From 1998 to 2001, Dr. Honjo collaborated with Drs. Clive Wood and Gordan Freeman through meetings, joint disclosure of research and experimental data, and sharing of materials. Drs. Freeman and Wood discovered ligands that interacted with PD-1. In 2002, Dr. Honjo filed a Japanese patent application to which the six patents at issue claim priority.
Dana-Farber filed suit in the district court alleging that Drs. Freeman and Wood should be added as inventors on Dr. Honjo’s patents. After a bench trial, the district court issued an order granting Dana-Farber its requested relief. Ono (the assignee of Dr. Honjo’s patent rights) appealed.
On appeal, Ono asserted that the judgment of the district court should be reversed because (1) the district court’s legal analysis regarding conception was faulty, and (2) the district court’s factual findings regarding inventorship were clearly erroneous. The Federal Circuit disagreed. The Court rejected Ono’s proposed legal standard, which would require each joint inventor to individually conceive of the complete invention and participate in a particular moment of conception, as inconsistent with the law. The Court explained that “[t]here is no ‘explicit lower limit on the quantum or quality of inventive contribution required for a person to qualify as a joint inventor,’” and concluded that Dr. Freeman’s and Dr. Wood’s absence from certain important experiments did not negate their overall contributions to conception of the invention throughout their collaboration with Dr. Honjo. Regarding the factual findings, the Court held that the district court did not clearly err in its factual determination that the work of Drs. Freeman and Wood in determining the structure and function of the PD-L1 ligand was a significant contribution to the conception of each of the patents at issue. Finding no error in the district court judgment, the Court affirmed.
This blog post was co-authored by Kelsey Covert & Eric Chad