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January 10, 1994



The opinion of the court was delivered by: GORDON THOMPSON, JR.

On December 20, 1993 Defendant's Synbiotics Corporation ("Synbiotics") Motion for Leave to Amend its First Amended Answer to add the affirmative defense of license came on for hearing before the Court. Additionally, Plaintiffs, the Regents of the University of California and IDEXX Laboratories, Inc. ("UC IDEXX") Motion for Partial Summary Judgment came on for hearing before the Court. The Court has fully considered this matter, including review of the moving papers, the opposition, the reply, the authorities cited therein, and the arguments presented.


 Synbiotics claimed in its opposition to UC/IDEXX's Motion for Preliminary Injunction that Brown was a co-discoverer of the FIV virus and therefore a co-inventor for the methods for diagnosing FIV infection. According to Synbiotics, this makes Brown a co-inventor of the '753 and the '602 patents *fn1" because she contributed the idea that her cats, that she brought to Dr. Pedersen at UC Davis, were infected with a virus other than FeLV (feline leukemia) and that this virus was similar to the virus that causes AIDS in humans.

 UC/IDEXX now move for partial summary judgment asserting that Brown is not a co-discoverer FIV virus or co-inventor of the '602 patent. UC/IDEXX assert that two other rulings follow from a ruling that Brown is not a co-inventor. First, if Brown is not a co-inventor, Brown cannot confer any rights to the '602 patent by "license" to Synbiotics and her purported "license" of the '602 patent to Synbiotics is a nullity. Second, since Brown is not a co-inventor, summary judgment should be granted on Synbiotics' defense of patent unenforceability that is based on incorrect inventorship.


 A. Summary Judgment Standard

 A moving party is entitled to summary judgment whenever the court is satisfied that there exists "no genuine issue of material fact and that the moving party is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c).

 A moving plaintiff must do two things in order to meet its burden at the summary judgment stage. First, it must adduce "admissible evidence on all matters as to which [it] bears the burden of proof." Tashima, Federal Civil Practice Before Trial (1991). Having thereby established its prima facie case, it then need only allege that the defendant against whom the motion is directed will be unable to prove one or more elements of its defense at trial Celotex Corp. v. Catrett, 477 U.S. 317, 323-327, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986).

 In order to rebut this showing, the non-movant must adduce affidavits, depositions, answers to interrogatories, or admissions sufficient to place the challenged element(s) genuinely in dispute. See id. In considering the merits of the motion, "the evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986). Accordingly, the non-movant must provide the court with evidence which, when interpreted in the light most favorable to the non-movant, is sufficient to place each of the allegedly insufficient elements genuinely in dispute.

 B. Marlo Brown is not a Co-Inventor of the '602 Patent

 Conception of an invention is the threshold issue in determining who are the inventors of a patent. Unless a person contributes to the conception of the invention, he is not an inventor. In re Hardee, 223 U.S.P.Q. 1122, 1123 (Comm'r Pat & Trademarks 1984) (citing Mueller Brass Co. v. Reading Indus., 352 F. Supp. 1357 (E.D. Pa. 1972), aff'd 487 F.2d 1395 (3d Cir. 1973)).

 Conception is defined as the "formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice." Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986) (citing 1 Robinson on Patents 532 (1890)). Actual reduction to practice requires that the claimed invention work for its intended purposes. Id. Accordingly, conception requires both the idea of the invention's structure and possession of an operative method of making it. Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1206 (Fed Cir. 1991).

 In some instances, such as the discovery of genes or chemicals, an inventor is unable to establish a conception until he has reduced the invention to practice through a successful experiment. Id. This situation results in what is termed "simultaneous conception and reduction to practice." Id. In Amgen, the Court held that, with respect to the discovery of a gene which is considered a chemical compound, conception ...

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