Vanderbilt University v. ICOS CORP.

DYK, Circuit Judge,

concurring in part and dissenting in part.

There is no question that the district court applied the wrong standard for joint inventorship. The majority agrees, and I agree. However, I respectfully dissent from the majority’s conclusion that the district court’s legal error was harmless, because in my view, the findings are either contradictory or infected by the court’s legal error. I would vacate the judgment and remand, requiring the district court to make findings of fact in hght of the correct law.

I

Vanderbilt University (“Vanderbilt”) argues that its scientists — Drs. Jackie D. Corbin, Sharron H. Francis, and Sekhar R. Konjeti (“the Vanderbilt scientists”)— should be added as joint inventors to the patents in suit under two theories: (1) Dr. Richard Labaudiniere (“Labaudiniere”) at Glaxo, Inc. (“Glaxo”) used the Vanderbilt scientists’ disclosure of 8-(4-hydroxy phenylthio)-IBMX to identify the compound GR30040x, which was in turn used by Dr. Alain Daugan (“Daugan”), the sole inventor listed on the patents in suit, and (2) Daugan used the Vanderbilt scientists’ disclosure of 8-(4-hydroxy phenylthio)-IBMX to modify GR30040x and create the patented compounds. ICOS Corporation (“ICOS”)1 responds that the Vanderbilt *1309scientists’ disclosure played no role in Glaxo’s identification of GR30040x or the patented compounds. I agree with the majority that the district court’s findings with respect to the second theory are not clearly erroneous. The court found that Daugan did not himself directly utilize the Vanderbilt scientists’ contributions; this finding was supported by Daugan’s testimony that he was not aware of the contributions and Labaudiniere’s testimony that he did not forward the Vanderbilt scientists’ work to Daugan.

However, the findings with respect to the first theory were either tainted by the district court’s legal error or are contradictory on their face. The district court found that the Vanderbilt scientists did in fact make contributions to Glaxo’s work, a point the majority ignores. After incorrectly explaining that the Vanderbilt scientists could not be joint inventors because there was no evidence that they had ever conceived the complete patented compound, the district court went on to state:

This is not to say that Corbin, Francis and Konjeti did not make contributions to Daugan’s inventive process; only that, under the applicable law, these contnbutions fall more into the category of “prosaic” contributions because they did not conceive the invention as claimed.

Vanderbilt Univ. v. ICOS Corp., 594 F.Supp.2d 482, 505 (D.Del.2009) (quoting Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1358-59 (Fed.Cir.2004)) (emphases added). The district court also found that ICOS’s position that Glaxo made no use of the Vanderbilt scientists’ disclosures was “untenable.” Id. at 505-06. It further stated that ICOS “loses credibility in the court’s view for failing to acknowledge that Glaxo made any use of plaintiffs disclosure.” Id. at 506. The court even cited a number of factors supporting its finding that Glaxo relied on the Vanderbilt scientists’ work in Glaxo’s research: the disclosed potency of 8-(4-hydroxy phenylthio)-IBMX, the common structure of the compounds, and the short time between the Vanderbilt disclosure and Glaxo’s identification of GR30040x. Id. at 505-06.

At the same time, the district court found that ICOS’s theory as to how Labaudiniere identified GR30040x was unsupported. Prior to trial, ICOS asserted that Labaudiniere identified GR30040x by following up on research reported in two journal articles. Id. at 496. But after it was shown that one of those articles was not published until after GR30040x had been tested, ICOS offered a different story at trial. ICOS claimed that Labaudiniere arrived at GR30040x by performing substructure searches based on the tetrahydro beta-carboline fragment of GR35273, a compound discovered in a separate Glaxo program. See id. at 497-98. However, the district court noted that “nowhere in its papers did [ICOS] articulate why Labaudiniere selected tetrahydro beta-carbolines (more specifically, the tetrahydro beta-carboline fragment of GR35273) for his substructure searches.” Id. at 506.

Thus the district court found that the Vanderbilt scientists did make a contribution to the identification of GR30040x. The district court then went on to find that “[Vanderbilt]’s theory (which is devoid of evidence regarding the alleged substructure searches based on 8-(4-OH-PT)-IMBX [sic]) and [ICOS]’s story (which is devoid of the aforementioned foundation) [are] equally plausible with respect to the identification of GR30040x.” Id. at 506 (emphasis added). As a footnote to this finding, the district court added: “Notably, even if GR30040x were the invention, the balance would not so tip in favor of plaintiff such as to constitute clear and convincing evidence.” Id. at 506 n. 53.

*1310II

There are two possible ways to interpret the district court’s findings, either of which requires a remand. The first is that the district court’s findings are directly contradictory. The court could not have properly found that the Vanderbilt scientists made a contribution to the identification of GR30040x if it were “equally plausible” that they did not make a contribution. In this situation, we must send the case back to the district court so that it can reconsider its findings. Both this circuit and other circuits have uniformly found that judgments based on contradictory findings cannot stand. See, e.g., Essex Electro Eng’rs, Inc. v. Danzig, 224 F.3d 1283, 1295 (Fed. Cir.2000); Mattson v. Dep’t of Treasury, 86 F.3d 211, 215 (Fed.Cir.1996); Lyles v. United States, 759 F.2d 941, 944 (D.C.Cir.1985); Grano v. Dep’t of Dev. of City of Columbus, 637 F.2d 1073, 1081-82 (6th Cir.1980); Legate v. Maloney, 334 F.2d 704, 708 (1st Cir.1964).

The alternative is that the district court found that Vanderbilt did not establish by clear and convincing evidence that the Vanderbilt scientists’ contributions were sufficient to make them joint inventors. The problem with this interpretation of the finding is that it is obviously tainted by the district court’s view that in order to be joint inventors, the Vanderbilt scientists must have “conceived the ‘specific chemical structure of the compound’ claimed or ‘the compound with all of its components,’ or communicated that compound to Glaxo.” Vanderbilt, 594 F.Supp.2d at 505 (citations omitted). In particular, the district court misinterpreted our decision in American Bioscience when it stated that the Vanderbilt scientists could not be joint inventors “even if the court were to find that [their] disclosure of 8-(4-OH-PT)-IMBX [sic] led to the identification of GR30040x and the subsequent discovery of [the patented compounds]” because “the contribution of a molecular scaffold in the context of one molecule ... [could not] render[ ] the disclosing party or parties [joint] inventors of a different family of molecules containing the same scaffold.” Id. at 506-07; see Bd. of Educ. ex rel. Bd. of Trustees of Fla. State Univ. v. Am. BioScience, Inc., 333 F.3d 1330 (Fed.Cir.2003). The majority correctly rejected this legal error. See Majority Op. at 1307-08.

An alleged joint inventor does not have to conceive of the entire claimed invention, as the district court mistakenly required. He merely must contribute to the conception of the claimed invention. Eli Lilly, 376 F.3d at 1359. There is “no explicit lower limit on the quantum or quality of inventive contribution required for a person to qualify as a joint inventor.” Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed.Cir.1997). The law does not require that the joint inventors physically work together or at the same time, or each make the same level of contribution. 35 U.S.C. § 116; see also Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., 973 F.2d 911, 917 (Fed.Cir.1992) (providing “one inventor seeing a relevant report and building upon it” as an example of joint inventive effort). A joint inventor need only “make a contribution to the conception of the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.” Fina Oil, 123 F.3d at 1473. While the district court found that the Vanderbilt scientists made some contribution, it has not told us exactly what that contribution was or why that contribution was not enough to make the Vanderbilt scientists joint inventors under the correct standard. If the Vanderbilt scientists made contributions, as the district court found, the fact that those contributions may not have been “appropriated by Dr. Labaudiniere for his substructure search,” Majority Op. at 1306, does not *1311foreclose the possibility that the Vanderbilt scientists’ contribution was sufficient to make them joint inventors.

Because the district court’s findings were either contradictory or tainted by legal error, I think we must vacate the judgment of the district court and remand in order that the court may make factual findings under the proper law. I dissent from the majority’s decision to affirm what I view as an untenable district court decision.

. In 1991, Glaxo and ICOS entered into a collaboration agreement wherein all rights, title, and interest in the compounds ultimately *1309covered by the patents in suit were assigned to icos.