Wednesday, August 5, 2009

University of Pittsburgh v. Hedrick

This case centers around a dispute over the inventorship of an adipose-derived stem cell that can differentiate into other cells. The dispute was not between competing groups but among different researchers in the same lab. The researchers who wished to be included as inventors had arrived after some of the work on the claimed invention had been completed but they argued that their contributions were essential. The Federal Circuit spent three pages construing the claims at issue (pp. 7-9.) Interestingly, the researchers who sought to be included as inventors argued for a narrower construction, not broader. In fact, they argued that the broader construction would include prior art. (p. 8.)

At first glance one might assume that those arguing to be additional inventors (not prior sole inventors) would not be arguing for a narrower scope of invention. But here they were claiming that the actual, patentable invention occurred later in time, after their arrival and their contribution. Since the broader possible scope was clearly conceived before that time, they presumably had to seek a construction for a narrower invention that could not be shown to have been invented earlier.

Another aspect of this case that is of some interest is that the Federal Circuit had to construe the claims before a determination of inventorship could be made. Although inventorship has always been based on the scope of the claims, this seems to make this determination less certain.