MEMORANDUM DECISION AND ORDER ON DEFENDANTS' MOTION FOR PARTIAL SUMMARY JUDGMENT NO. 5

TED STEWART, District Judge.

This matter is before the Court on Pfizer's Motion For Summary Judgment On Plaintiffs' Claim for Correction of Inventorship (Count IV of the First Amended Complaint).1

I. BACKGROUND

The facts of this case are fully set out in the Court's Order dated March 13, 2012,2 and need not be recited here.

II. STANDARD OF REVIEW

Summary judgment is proper if the moving party can demonstrate that there is no genuine issue of material fact and it is entitled to judgment as a matter of law.3 The party seeking summary judgment bears the initial burden of demonstrating an absence of a genuine issue of material fact.4 "Once the moving party has properly supported its motion for summary judgment, the burden shifts to the nonmoving party to go beyond the pleadings and set forth specific facts showing that there is a genuine issue for trial."5 "An issue is genuine `if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.'"6

III. DISCUSSION

Pfizer moves the Court to dispense with BYU's claim that several of Pfizer's patents on COX-2 related materials should be amended to include Dr. Simmons as a joint inventor. BYU initially requested amendment of more than eighty patents held by Pfizer. However, BYU subsequently indicated that it would restrict its claims to three patents.7 The Court will now determine whether summary judgment for Pfizer is appropriate on those three patents.

As a threshold issue, the parties have disputed whether the Court is required to construe the claims of the disputed patents before determining joint inventorship. The Court will first address that question.

A. CLAIM CONSTRUCTION

At the March 9, 2012, hearing, the Court invited the parties to submit supplemental briefing on whether two Federal Circuit cases—Trovan, Ltd. v. Sokymat SA, Iroro8 and Falana v. Kent State University9 — require the Court to construe the disputed patents' claims before determining whether BYU has contributed to them.

In its supplemental brief, BYU argues (1) that at least one element of each accused patent included celocoxib, a COX-2 inhibitor; (2) that Pfizer does not dispute the presence of celocoxib in the accused patents; and (3) that beause the presence of celocoxib is undisputed, claim construction is not necessary. In response, Pfizer does not dispute that the disputed patent claims incorporate a COX-2 inhibitor. Rather, Pfizer devotes its energy to contending that both Trovan and Falana clearly require claim construction.

In Trovan, the Federal Circuit stated that "an inventorship analysis, like an infringement or invalidity analysis, begins as a first step with a construction of each asserted claim to determine the subject matter encompassed thereby."10 In reviewing the lower court's conclusions on joint inventorship, the Federal Circuit went on to criticize the lower court for making "broad statements as to the scope of the coverage of [the entire patent] which were not directed at any particular claims" instead of conducting an "independent claim construction analysis, which is the first step in determining inventorship."11 The Court then stated "[w]ithout a direct construction of [the claims in dispute] the meaning and scope of the claims and the extent to which [plaintiff] may have contributed to the invention recited in those claims cannot be determined."12

Though this language clearly requires a court to conduct claim construction in the joint inventorship context, the Court would note that this requirement is imposed when there is a need to "determine the subject matter encompassed" of a disputed claim. However, when the subject matter of a claim is undisputed, as it is here, claim construction is redundant.

BYU's argument is that Pfizer relied on Simmons's work to create the COX-2 inhibitors involved in the disputed patents. Pfizer has previously admitted that the patents at issue include COX-2 inhibitors, and has not disputed this fact in its supplemental brief.14 There is therefore no dispute as to the inclusion of COX-2 inhibitors in at least one claim in each patent. The Court therefore agrees with BYU that claim construction is unnecessary.

Falana further supports this conclusion. Though the trial court in that case engaged in claim construction, it did so because the parties disputed whether two claims in a contested patent contained a specific limitation.15 The district court thus construed the claims, found that the limitation was not present, and then, after a bench trial, went on to find that the plaintiff was a joint inventor. Here, however, Pfizer has not contended that the disputed claims do not include COX-2 inhibitors. There is therefore no reason to construe the claims to determine if they do.16

In sum, the Court finds that it is undisputed that a COX-2 inhibitor is incorporated by at least one claim of each accused patent. It follows that the accused patents contain elements that may incorporate Simmons's alleged contribution, and claim construction is not necessary. Accordingly, the Court rejects Pfizer's argument that BYU's joint inventor claims fail because claim construction has not been performed.

B. SIMMONS'S CONTRIBUTION

The Court now turns to a consideration of whether Simmons qualifies as a joint inventor.

Simmons claims that Pfizer relied on his method for discovering a COX-2 inhibitor when developing the COX-2 inhibitors that are contained in the disputed patents. If this is the case, then the disputed patents may incorporate a significant contribution from Dr. Simmons and would thus be subject to amendment of inventorship. The facts of Falana are instructive here.

Dr. Falana was hired by a company—KDI—to assist in synthesizing compounds. The goal was to develop a temperature independent, high helical twisting power chiral additive—a compound that KDI wanted to aid in the development of LCD technology. While still employed by KDI, Falana "developed a synthesis protocol for making a novel class, or genus, of chemical compounds: naphthyl substituted TADDOLs."18 Falana then synthesized a compound within the novel class, which was denoted "Compound 7." Compound 7 achieved a degree of temperature independence. However, KDI determined that while Compound 7 represented "significant progress," it did not "completely satisfy the goals of the project" because it did not obtain the requisite level of temperature independence.19

About a year later, another researcher working on the same project used Falana's synthesis protocol to make Compound 9. Compound 9 obtained the requisite temperature independence and therefore satisfied the goals of the project. KDI then applied for a patent. Falana was not named as an inventor and Falana subsequently sued for correction of inventorship.

On appeal, defendants argued that Falana could not be a joint inventor because, inter alia, the patent covered "chemical compositions and not methods."20 According to defendant, Falana's supposed contribution of a method was "legally irrelevant" to whether he was a joint inventor on a patent that did not claim any method of making its compounds. The court then proceeded to determine "whether a putative inventor who envisioned the structure of a novel chemical compound and contributed to the method of making that compound is a joint inventor of a claim covering that compound."21

The court held:

This language makes clear that a patent claiming compounds need not claim a method for making those compounds in order for the inventor of such a method to be a joint inventor. Rather, the Court takes Falana to mean that an inventor of a method may be entitled to joint inventorship on a patent that discloses only compounds if (1) the plaintiff conceived of a method; (2) that is outside the exercise of ordinary skill; and (3) is in fact used to create the compounds in the patent.

The Court finds that BYU has put forward evidence (1) that Simmons discovered COX-2 and conceived of a method for determining whether a compound was COX-2 selective23; (2) that Simmons's contribution was greater than the exercise of ordinary skill24; and (3) that Pfizer used Simmons's method in developing its own COX-2 inhibitor.25 The Court therefore finds that there are disputed issues of material fact and will therefore deny summary judgment on the issue of joint inventorship.

Pfizer further contends that there was not sufficient collaboration between Simmons and the named inventors of the patent to warrant joint inventorship. "Joint inventorship arises only `when collaboration or concerted effort occurs—that is, when the inventors have some open line of communication during or in temporal proximity to their inventive efforts.'"26 However, "[p]eople may be joint inventors even though they do not physically work on the invention together or at the same time, and even though each does not make the same type or amount of contribution."27 Pfizer suggests that BYU has presented no facts that show that "an alleged `significant contribution' from Dr. Simmons was ever shared with a Pfizer representative other than Drs. Seibert and Masferrer."28 In response, BYU cites to evidence showing that (1) before the collaboration with BYU, Pfizer was not pursuing a COX-2 selective NSAID and Simmons's COX-2 information was not available anywhere else; (2) Simmons gave COX-2 research material to Pfizer; and (3) Pfizer developed a COX-2 selective NSAID and its scientists were given awards for their work on COX-2. The Court finds that a reasonable juror could infer from this information that the inventors of the disputed patents built off Simmons's work and will therefore reject Pfizer's argument on this point.

Finally, Pfizer has argued that Simmons's contribution was prior art and thus could not qualify Simmons for joint inventorship. The Court noted at the March 9, 2012, hearing that it found this argument unpersuasive, and will here reject it. As noted above, the question before the Court is whether Simmons's method was outside the exercise of ordinary skill, and not whether Simmons's alleged contribution was prior art under 35 U.S.C. § 102. This is illustrated by the statement in Falana that "[o]nce the method of making the novel genus of compounds becomes public knowledge, it is then assimilated into the storehouse of knowledge that comprises ordinary skill in the art."29 However, before the time that the method becomes public, if it "requires more than the exercise of ordinary skill," the method can be grounds for joint inventorship.30 Accordingly, the Court will reject this argument.

IV. CONCLUSION

In light of the foregoing, it is therefore

ORDERED that Pfizer's Motion For Summary Judgment On Plaintiffs' Claim for Correction of Inventorship (Count IV of the First Amended Complaint) (Docket No. 734) is DENIED.