601 F.3d 1297 (Fed. Cir. 2010), 2009-1258, Vanderbilt University v. ICOS Corp.

• Citation: 601 F.3d 1297
• Opinion Judge: CLEVENGER, Circuit Judge.
• Party Name: VANDERBILT UNIVERSITY, Plaintiff-Appellant, v. ICOS CORPORATION, Defendant-Appellee.
• Attorney: Robert S. Brennen, Miles & Stockbridge P.C., of Baltimore, MD, argued for plaintiff-appellant. With him on the brief were Donald E. English, Jr.; Kurt C. Rommel and James T. Carmichael, of McLean, VA. Of counsel were Leona Marx and David Williams, II, Vanderbilt University, of Nashville, TN. Kevi...
• Judge Panel: Before MICHEL, Chief Judge, CLEVENGER and DYK, Circuit Judges. Opinion concurring in part and dissenting in part filed by Circuit Judge DYK.DYK, Circuit Judge, concurring in part and dissenting in part.
• Case Date: April 07, 2010
• Court: United States Courts of Appeals, U.S. Court of Appeals — Federal Circuit

Page 1297

601 F.3d 1297 (Fed. Cir. 2010)

VANDERBILT UNIVERSITY, Plaintiff-Appellant,

v.

ICOS CORPORATION, Defendant-Appellee.

No. 2009-1258.

United States Court of Appeals, Federal Circuit.

April 7, 2010

Page 1298

Robert S. Brennen, Miles & Stockbridge P.C., of Baltimore, MD, argued for plaintiff-appellant. With him on the brief were Donald E. English, Jr.; Kurt C. Rommel and James T. Carmichael, of McLean, VA. Of counsel were Leona Marx and David Williams, II, Vanderbilt University, of Nashville, TN.

Kevin M. Flowers, Marshall, Gerstein & Borun LLP, of Chicago, IL, argued for defendant-appellee. With him on the brief were Thomas I. Ross and Matthew C. Nielsen. Of counsel on the brief were Paul R. Cantrell, Donald L. Corneglio and Dan L. Wood, Eli Lilly and Company, of Indianapolis, IN.

Before MICHEL, Chief Judge, CLEVENGER and DYK, Circuit Judges.

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CLEVENGER, Circuit Judge.

This is an appeal from the United States District Court for the District of Delaware in a patent action that Vanderbilt University (" Vanderbilt" ) brought against ICOS Corporation (" ICOS" ) on July 20, 2005. Vanderbilt filed suit under 35 U.S.C. § 256 alleging that Vanderbilt scientists Jackie D. Corbin (" Dr. Corbin" ), Sharron H. Francis (" Dr. Francis" ), and Sekhar R. Konjeti (" Dr. Konjeti" ) (collectively the " Vanderbilt Scientists" ) should be added as joint inventors on U.S. Patent Nos. 5,859,006 (" the '006 patent" ) and 6,140,329 (" the '329 patent" ). The district court rendered its findings of fact and conclusions of law in a January 27, 2009 opinion. Vanderbilt Univ. v. ICOS Corp., 594 F.Supp.2d 482 (D.Del.2009). The district court entered final judgment on January 29, 2009, concluding that Vanderbilt failed to prove that the Vanderbilt Scientists are joint inventors of the '006 and ' 329 patents. Vanderbilt appeals the district court's final judgment. For the reasons stated below, we affirm.

I

This case involves compounds and methods for treating erectile dysfunction, including the compound known as tadalafil, a PDE5 inhibitor and the active ingredient in the drug Cialis® . PDE5 is a phosphodiesterase enzyme found in smooth muscle cells that binds to and hydrolyzes or breaks down cGMP, a cyclic nucleotide found in smooth muscle tissues. In normal function, cGMP binds with and activates a cGMP-dependent protein kinase which results in relaxation and dilation of the smooth muscle cell. PDE5 inhibitors bind to PDE5 and prevent it from binding with and breaking down cGMP.

Drs. Corbin and Francis are employed by Vanderbilt University and were among the first to discover PDE5 in the late 1970s. Since that time, Drs. Corbin and Francis have worked on both the development of cGMP analogs and PDE5 related research.

In December 1988, Dr. Corbin submitted a research proposal to Glaxo Inc. (" Glaxo" ) ¹ requesting it sponsor his research to develop cGMP analogs. The proposal listed new cGMP analogs that Dr. Corbin hoped would activate cGMP-dependent protein kinase.

In June 1989, Glaxo entered into an agreement with Dr. Corbin through Glaxo's " Cardiovascular Discovery Grant" program to underwrite the Vanderbilt Scientists' research of cGMP analogs. Under the agreement, the University retained ownership of intellectual property, but Glaxo was granted a license agreement to any discoveries. During the three years of the program, Drs. Corbin, Francis, and Konjeti submitted numerous presentations and progress reports to Glaxo.

In November 1990, Dr. Corbin sent an abstract to Glaxo U.K. disclosing his discovery that the potency of cGMP analogs is enhanced by adding a phenyl ring at the 8-position. Meanwhile, the Vanderbilt Scientists continued to work on improving potency with new cGMP analogs. In May 1991, however, Glaxo indicated to Dr. Corbin its concern that cGMP analogs do not work well as orally-administered drugs and encouraged the Vanderbilt Scientists to shift their future focus to PDE5 inhibitors.

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Outside of the Glaxo program, the Vanderbilt Scientists continued to work on other research interests. In November 1991, the Vanderbilt Scientists applied the results of their cGMP analog research to synthesize a new PDE5 inhibitor. The Vanderbilt Scientists used a 3-isobutyl-1-methylxanthine (" IBMX" ) compound because it was a cheap and readily available PDE5 inhibitor that is easily substituted at the 8-position. Building upon their earlier research, the Vanderbilt Scientists attached a phenyl ring to the 8-position of the compound and attached an electron-donating hydroxyl group at the 4 position of the phenyl ring. By applying the results of their cGMP research to IBMX, the Vanderbilt Scientists created a PDE5 inhibitor they thought was 160 times more potent in inhibiting PDE5 than the original IBMX molecule. Dr. Corbin drafted a letter to Vanderbilt's general counsel disclosing possible therapeutic uses for the new IBMX analogs, including the treatment of male impotence.

In December 1991, during discussions regarding a new research agreement, Dr. Corbin mentioned Vanderbilt's work on PDE5 inhibitors to Dr. Barry Ross, a scientist at Glaxo U.K. On January 3, 1992, Dr. Corbin sent a research proposal to Glaxo U.K. detailing the test results of the cGMP analogs developed under the first research agreement. In the proposal, Dr. Corbin also described the Vanderbilt Scientists' IBMX analog that was 160-fold more potent as a PDE5 inhibitor than the original IBMX molecule. Dr. Corbin explained the Vanderbilt Scientists' overall strategy that " the potencies of existing inhibitors ... could be enhanced by appending groups that would allow the inhibitors to more closely resemble the entire cyclic GMP molecule." Dr. Corbin proposed that Glaxo fund the Vanderbilt Scientists' work on PDE5 inhibitors going forward. Dr. Corbin also noted in the January letter that " the cG kinase has important disease-related functions other than the induction of vascular smooth muscle relaxation." Male impotence was listed as an area of interest, though Glaxo was not researching male impotence at the time.

On February 3, 1992, Drs. Corbin and Francis met with Dr. Ross regarding the January proposal. Later that month, on February 24, Dr. Corbin sent a more detailed research proposal to Dr. Ross which disclosed the exact design of the Vanderbilt IBMX analog. The detailed research proposal also identified a table of IBMX and zaprinast ² analogs that Vanderbilt proposed for further testing. Many of the listed compounds contain what Vanderbilt now refers to as the " Vanderbilt Structural Features" of Vanderbilt's IBMX analog.

On March 11 and 12, 1992, Glaxo France tested 26 compounds for PDE5 inhibition, including a compound it designated GR35273x.

On April 8, 1992, Dr. Ross forwarded copies of Vanderbilt's February 24, 1992 proposal to six Glaxo scientists, including Dr. Richard Labaudiniere, the head of chemistry and leader of the PDE5 project at Glaxo France.

On April 23, 1992, Glaxo France tested 29 compounds for PDE5 inhibition, including a beta-carboline compound designated GR30040x. Vanderbilt claims all of the tested compounds make some use of the Vanderbilt Structural Features with 11 of the 29 compounds containing nearly all of the Vanderbilt Structural Features. Based on the PDE5 inhibition test results,

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Dr. Labaudiniere identified GR30040x as a lead compound for further research on PDE5 inhibition. Dr. Labaudiniere assigned the further GR30040x research to Dr. Alain Claude-Marie Daugan, the named inventor on the patents at issue, as a separate study. In the course of testing various modifications to the GR30040x compound between June 1992 and January 1994, Dr. Daugan discovered tadalafil, the claimed compound at issue in this case.

II

In 1991, Glaxo assigned to ICOS the rights, title, and interest in the compounds covered by the patents at issue. Vanderbilt brought this suit under 35 U.S.C. § 256 against ICOS to correct inventorship of the '006 and '329 patents. Vanderbilt asserts that the Vanderbilt Scientists should be added as joint inventors. According to Vanderbilt, the GR30040x compound could not have been identified by Dr. Labaudiniere as the lead compound without his use of the Vanderbilt Structural Features. Nor could tadalafil have been identified by Dr. Daugan without his reliance on Vanderbilt's work. The district court held a bench trial and found in favor of ICOS.

In its analysis, the district court noted that 35 U.S.C. § 116, the applicable section for joint inventorship, sets " no explicit lower limit on the quantum or quality of inventive contribution required for a person to qualify as a joint inventor." Vanderbilt Univ. v. ICOS Corp., 594 F.Supp.2d 482, 504 (D.Del.2009) (quoting Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed.Cir.1997)). The district court further noted that " a person is a joint inventor ‘ only if he contributes to the conception of the claimed invention.’ " Id. (quoting Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1358-59 (Fed.Cir.2004)). After a summary of the law regarding conception of chemical compounds, the district court concluded that " conception of a chemical substance includes knowledge of both the specific chemical structure of the compound and an operative method of making it" and " does not occur unless one has a mental picture of the structure of the chemical." Id. (quoting Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1230 (Fed.Cir.1994) and Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1206 (Fed.Cir.1991)). The district court determined that the Vanderbilt Scientists could not be co-inventors because they never " conceived the specific chemical structure of the compound claimed or the compound with all of its components." Id. at 505 (citations omitted).

To guide its analysis, the district court reviewed our decision in American BioScience and concluded the case...