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« Conference & CLE Calendar | Main | Visual Memory LLC v. NVIDIA Corp. (Fed. Cir. 2017) »

August 14, 2017

Comments

Thanks for the digest of the facts. One could also argue that determining "litigation misconduct" requires a legal understanding of document discovery requirements and other attorney conduct obligations that a judge should have and a lay jury would not.
This decision should also be sobering for those who have argued that incorrect inventorship designations on patents are less important under the AIA.

Paul, I'm not aware of anyone asserting that inventor designations are less important under the AIA than they were pre-AIA. The failure to name all inventors can still be disastrous for the patent owner. What I see as having changed is the ease with which an incorrect inventorship listing can be corrected: under the AIA, there's no need to aver that the non- or mis-joinder was done "without deceptive intent". That doesn't obviate the need to get the inventorship listings right.

Dan,

Recently on another blog a fairly well known blog regular expressed exactly the argument that Paul references.

Notwithstanding "without deceptive intent," one still has (if "extra" inventors are included) the fact that oaths are being submitted that are putatively fraud on the Office, with people swearing that they are inventors when they are not.

Not sure there that the removal of "intent" affects the action of (possible) fraud.

I think the misjoinder of inventorship issue in the case was relevant to Avid's injury at needing to defend against these patents, and that the tortured history of how inventorship was misjoined was a factor that contributed to that injury. This is because AIA (and the inventors) took affirmative steps and made what the court thought were misrepresentations to USF and Imperial. Neither university is the beneficiary of the attorney's fees, of course, but one or both of them may be able to bring suit against AIA to get whatever ownership interests they have. And AIA may find itself liable for attorney's fees unless they negotiate; paradoxically, this opinion may force them to change inventorship in ways that create the very outcome they worked so hard to avoid.

Thanks for the comments.

Mullan was actually not a postdoc, but was a grad student who went to Florida ahead of his supervisor, John Hardy. UC London had licensed a previous Alzheimer's mutation to Athena on terms Hardy and Mullan did not like, and so they wanted to handle APPswe-mutation patents differently.

Mullan made himself sole inventor, without telling Hardy. They never declared the invention of APPswe to U South Florida. The head of R&D at U South Florida confirmed as much under oath. The judge found that a contravention of Florida state law (U South Florida is a state institution, and faculty are employees; Mullan was a student at the time). That is, if there were a valid patent, Univ South Florida would own it. Moreover, it was clear Hardy was a co-inventor, and the judge found so. Yes, they could have corrected inventorship at any time in this long travail, but Hardy had no association with Alz Institute of America, which was a pure troll, and was doing all the patent enforcement.

If this had become a traditional patent case, the patents were extremelyl vulnerable on 112: enablement and written description. Mullan never made a transgenic mouse (although that was the claim that mattered), and no one else did for four years, although it was a sought-after goal for many research groups.

AIA was a patent troll, suing many companies and Jackson Labs based on invalid patents and wrongful sole inventorship with patents assigned to the wrong assignee. Again, not a hard case.

Covered in J Law Biosciences: https://academic.oup.com/jlb/article/2/2/213/826058/The-mouse-that-trolled-the-long-and-tortuous
and https://academic.oup.com/jlb/article/3/1/185/1751296/The-mouse-that-trolled-again?searchresult=1

This endgame about attorney fees is a continuation of a long and complex saga, and it's good the Federal Circuit is trying to put an end to it.

It's a very odd case. In the background, a research institute moved out of U South Florida under shadow of allegations of sexual harrassment; also a fist fight. Another backdrop is Star Tobacco (since renamed), the company that brought down the Governor of Virginia in a bribery scandal (although the Supreme Court eventually weighed in to reverse the former Governor's conviction). Mullan became CEO of the company when Jonnie Williams, the person accused of making the bribes, stepped down. Not a good case for making precedential law.

Thanks for the more extensive background, Bob. Plenty of bad acting to go around; but the narrow issue here was the jury trial one, and the panel's silence on all this background indicates to me that they did not want to color their decision with the malfeasance with which it could be associated.

Not mentioned in the post was a summary affirmance handed down the same day against AIA and in favor of Eli Lilly. it seems AIA and Dr. Mullan are getting whatever comeuppance that they deserve.

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