We will be discussing one case involving prior invention and another involving standing to bring a patent case during our weekly SoCal IP Institute meeting on Monday, December 5, 2011. Brief synopses are presented below.

Teva Pharma. Indus. Ltd. v. Astrazeneca Pharma. LP, Case No. 2011-1091 (Fed. Cir. Dec. 1, 2011) (attached).  Teva sued Astrazeneca alleging infringement of a Teva patent by Astrazeneca’s “Crestor” drug.  The patent required a “stabilizing effective amount” of one of a group of a stabilizing components.  At trial, Astrazeneca proved that it had conceived and reduced to practice the drug claimed prior to Teva’s earliest conception date, although it was unclear whether Astrazeneca appreciated which component had the stabilizing effect at the time.  On appeal, Teva essentially argued that because Astrazeneca failed to appreciate what it had done, its conception did not occur for purposes of 35 USC 102(g)(2).

The district court granted Astrazeneca’s summary judgment motion finding that it had conceived of the subject matter of the patent prior to Teva’s earliest date.  The Federal Circuit agreed that because Astrazeneca’s conception and reduction to practice met the claimed limitation of “an effective stabilizing amount” of one of the components, it was a prior invention under 35 USC 102(g)(2).

Gellman v. Telular Corp, Case No. 2011-1196 (Fed. Cir. Nov. 30, 2011 (attached).  Ms. Gellman brought suit on behalf of the Mayer Michael Lebowitz Trust seeking to enforce a patent that named her late husband as co-inventor.  Ms. Gellman claimed that the trust was the sole owner of the patent.  The district court disagreed finding that it was, at best, a joint owner, because a signed assignment document was not available.  The case was dismissed without prejudice for lack of standing.

On appeal Ms. Gellman asserted that it was the owner by assignment or in equity.  The Federal Circuit affirmed the finding that there was no formal assignment because Ms. Gellman was unable to produce a signed assignment document.  The unsigned agreement was not sufficient to convey legal right to the invention and the “hired to invent” doctrine was insufficient to convey legal title to the patent.  Accordingly, the Federal Circuit affirmed the dismissal.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, December 5, 2011 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.