Standing Requires Full Ownership or Cooperation of Joint Inventors

Case: Israel Bio-Engineering Project v. Amgen, Inc., No. 06-1218 (Fed Cir. January 29, 2007)

The One Sentence Summary: A plaintiff must demonstrate full ownership of a patent, or obtain co-inventor’s cooperation, to satisfy the standing requirements to sue for alleged patent infringement.

What They Were Fighting About: Plaintiff Israel Bio-Engineering Project (“IBEP”) brought suit against several pharmaceutical companies claiming patent infringement. Yeda Research and Development Company, Ltd. (“Yeda”) successfully intervened in the suit and brought summary judgment motions questioning the standing of IBEP to bring the suit, as Yeda claimed IBEP did not have full ownership in the patent. Yeda and IBEP had entered into numerous research agreements in the early 1980s. Although these agreements allowed for the assignment of patent rights to IBEP, the research period was a defined time period, ending in December 1987. The patent at issue in this case, the ‘701 patent, included two claims involving inventions arising out of research done after December 1987. IBEP argued that the contracts provided that any inventions or patents “resulting from the R&D Programs” would be assigned to IBEP. IBEP’s claimed ownership rights in the result of any research continuing after December 1987 that was associated with research done pre-1987.

Federal Circuit Holdings:

• In its decision, the Federal Circuit was guided by the fundamental principle that an invention belongs to the inventor, and where multiple inventors appear on a patent, each presumptively owns a pro rata, undivided interest in the patent. Moreover, one co-owner can limit another’s right to pursue legal actionto enforce patent rights merely by refusing to join the suit. The court then reviewed the relevant contracts, extrinsic evidence, and employment relationships to determine ownership.
• Following Israeli law, it examined not only the language of the contracts between Yeda and IBEP, but also all extrinsic evidence to determine the parties’ intentions. It concluded that the parties intended to put time constraints on the R&D programs affected by these agreements, and had agreed to a December 1987 cut-off -- any products of research done after this date were no longer governed by their agreements.
• The court then found that at the very least, Yeda owns a pro rata undivided ownership interest in the whole ‘701 patent through the assignment by one of the inventors. As a result, Yeda must voluntarily join in the suit with IBEP to satisfy the standing requirements to sue for patent infringement.
• Given that the record further showed that Yeda wanted nothing to do with this litigation, the Federal Circuit concluded that IBEP lacked standing to proceed on its own, and affirmed the grant of summary judgment for defendant.