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The blog for inventors, in-house counsel, & entrepreneurs.

CAFC Weekly: April 9, 2010

by Bruce Jobse and Orlando Lopez

This week brings two cases related to questions that arise in many patent applications and that are faced by both small and large companies, but are of special interest to small companies-the question of inventorship and the question of reduction to practice.  The question of reduction to practice is important, not only because of the practice of “swearing back” (Didn’t your mother teach you not to swear?!), which is based on the first to invent patent system unique to the US (and indeed in danger of disappearing due to patent reform), but also because in SBIRs and other government contracts, reduction to practice has a particular significance in terms of government rights (more on that in a later post).  Rounding the week is a typical claim construction case.

In Vanderbilt University V. ICOS Corporation, the issue was whether three research scientists at Vanderbilt University were co-inventors on two patents (the patents where for compounds used to treat erectile dysfunction) where the research scientists had been consultant to a company but the name inventors and patents had worked independently from the research scientists.  The CAFC held that a group of co-inventors must collaborate and work together to collectively have a definite and permanent idea of the complete invention, and, that Vanderbilt failed to demonstrate by clear and convincing evidence that its scientists contributed to the claimed invention.  This CAFC decision provides an example of an inventorship contest, a fairly common quandary for patent owners.

In Yorkey v. Diab, an opinion that relates to an appeal from a decision in an interference, (as such, if the present patent reform is adopted, interferences would be if the US adopts the first to file system, a thing of the past), a good view is provided of what is necessary to establish reduction to practice (which also can have tax consequences-maybe we’ll do a post on that sometime).  Beside interferences, in the present patent statute, establishing the date of reduction to practice can be important in “swearing behind a reference” (although swearing is usually not good, “swearing behind” is the establishing that a reference was published or issued after the critical date with respect to the date of invention).

Finally, in Bid for Position, Llc. v. AOL, an opinion that relates to a decision on a claim of infringement against AOL and Google, in which the alleged infringing product was the Google Internet advertising system (what would be a day without Google?  However, we can do without the ads).  The lower court held that Google did not infringe and the CAFC upheld the lower court’s decision.  The opinion relates to the interpretation (claim construction) of the claims of the asserted patent.


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