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MGH Didn't Credit Researchers For Patents, Fed. Circ. Hears

By Christopher Norton

Law360, Washington (February 07, 2012, 6:55 PM ET) -- Two researchers tried to convince the Federal Circuit on Tuesday that they should be listed as inventors of two Massachusetts General Hospital patents relating to genetic mutations that cause a rare birth defect, saying the hospital would not have discovered them without the researchers' work.

Berish Y. Rubin and Sylvia L. Anderson sued MGH in January 2009 under Section 256 of the U.S. Patent Act to correct the inventorship of two MGH patents related to the discovery of genetic mutations that are associated with the disorder familial dysautonomia. The researchers sought to be substituted as the inventors or listed as joint inventors on the patents.

In April, U.S. District Judge Denise Casper granted MGH's motion for summary judgment, finding that Section 256, which permits the revision of the list of inventors on a patent, is not a mechanism to determine which researchers first came up with a patented invention. Even if it were, the plaintiffs had no connection to the hospital and therefore could not prove they were joint inventors, the judge said.

“I'm still trying to understand where the wrongdoing is on the part of the defendants,” U.S. District Judge Jeremy Fogel, sitting on a three-judge panel, said during oral arguments Tuesday.

An attorney for the researchers, Peter I. Bernstein of Scully Scott Murphy & Presser PC, told the court that once MGH had access to the researchers' confidential information, which the hospital allegedly got via an abstract of an article the researchers were planning to publish, the parties were no longer independent of one another and could be considered to have collaborated.

Judge Fogel asked Bernstein what evidence there is that MGH ever in fact did see the work the researchers did, or that MGH knew it wasn't supposed to see the abstract in the first place. While there may be conflict on those points, that at least creates a genuine issue of material fact, Bernstein responded.

U.S. Circuit Judge William C. Bryson asked if it would make a difference if the researchers had just published a paper and MGH had looked at that. Such a public disclosure would be distinct from the current situation, where the information in the abstract was confidential at the time, Bernstein said.

The researchers are pushing the envelope by claiming two parties can be said to have collaborated when one simply got access to the other's confidential information, Judge Fogel said.

“Your rule is leading to a rather dramatic expansion of 256,” he said.

MGH attorney Brian M. Gaff of Edwards Wildman Palmer LLP, on the other hand, said the researchers completely misunderstand Section 256. The section is crafted to correct inventorship on an issued patent to preserve the patent's validity, he said.

“All we have here is what amounts to an interference action,” he said.

Section 256 always involves some degree of joint behavior, which clearly did not occur in this case, according to Gaff. The researchers are trying to rely on the wrong statute at the wrong time, he said.

The transmission of the abstract took place months after the MGH scientists conceived of and had proof of their invention, according to Gaff.

He admitted, though, when asked by Judge Bryson, that the MGH scientists didn't pronounce their discoveries in any public way at the time, and in fact made pronouncements to the contrary.

“If this were a criminal case, that would be enough to convict you,” Judge Bryson said.

Judges Pauline Newman and William C. Bryson sat on the panel for the Federal Circuit, with U.S. District Judge Jeremy Fogel sitting by designation.

The researchers are represented by Peter I. Bernstein of Scully Scott Murphy & Presser PC.

MGH is represented by Brian M. Gaff of Edwards Wildman Palmer LLP.

The case is Rubin v. General Hospital Corp., case number 2011-1439, in the U.S. Court of Appeals for the Federal Circuit.

--Additional reporting by Abigail Rubenstein. Editing by Lindsay Naylor.