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BROWN v. REGENTS OF THE UNIV. OF CALIFORNIA

May 16, 1994

MARLO BROWN, Plaintiff (s),
v.
REGENTS OF THE UNIVERSITY OF CALIFORNIA, Defendant (s).



The opinion of the court was delivered by: FERN M. SMITH

 ISSUE

 Defendants have filed a motion for summary judgment as to plaintiff's sole remaining cause of action, for correction of inventorship under 35 U.S.C. § 256. See 35 U.S.C. § 256 (West 1984). The motion requires the Court to decide whether plaintiff has shown that she made sufficient contributions to the conception of United States Patents 5,037,753 ("the '753 patent") and 5,118,602 ("the '602 patent") to warrant a trial on the issue of whether plaintiff should be named as a joint inventor thereon. Because the Court finds that plaintiff has not satisfied her burden, it grants defendants' motion.

 BACKGROUND

 Plaintiff is an animal health technician and former veterinary hospital manager who maintains a shelter for sick, stray and abandoned cats. In the early 1980's, plaintiff was sheltering between forty and fifty cats at her home in Petaluma, California. During that time, plaintiff observed that several of her cats were exhibiting immunodeficiency symptoms. She had her veterinarian, Dr. Titchenal, perform tests on the cats for a wide variety of diseases and conditions. All of the tests, including the test for feline leukemia virus ("FeLV"), were negative. At the time, FeLV was the only feline virus known to cause AIDS-like symptoms in cats.

 At Dr. Titchenal's suggestion, on July 2, 1986, plaintiff took her sick cats to Dr. Neils C. Pedersen, a well-known animal virologist at the U.C. Davis School of Veterinary Medicine. Ms. Brown brought with her detailed observations and records that she had kept of her cats' illnesses. *fn1" She told Dr. Pedersen that she believed that her cats were infected with a virus similar to the human AIDS virus. She further claims that she told Dr. Pedersen that she believed that the virus was a new, "slow-acting" lentivirus. Dr. Pedersen examined the cats, questioned Ms. Brown about the cats' histories, and drew blood samples from the cats.

 During 1986 and 1987, Dr. Pedersen and a colleague, Dr. Janet K. Yamamoto, performed extensive laboratory work which culminated in the development of methods for isolating a new virus, feline T-lymphotropic virus ("FTLV," "FIV" *fn2" ), in a substantially pure, nonnaturally occurring, form. Drs. Pedersen and Yamamoto also developed methods for detecting the presence of FIV in cats, as well as methods for vaccinating them against the virus. On August 26, 1987, they filed a patent application on these inventions. The '753 patent issued on August 6, 1991, and the '602 patent issued on June 2, 1992. The doctors assigned both patents to the University of California. *fn3"

 The '753 patent claims FIV, a biologically active composition of matter ("biochemical compound") that has been isolated from cells grown in an in vitro culture. (See Amended Complaint, Ex. 1.) The '602 patent claims methods for diagnosing an FIV infection by detecting in a clinical sample the presence of the virus itself or antibodies to the virus. (See Amended Complaint, Ex. 2.) The claimed novelty of the '602 patent is based on the isolation and purification of the new biochemical product covered by the '753 patent. Neither patent claims mere discovery of FIV.

 While Dr. Pedersen widely and publicly credited Ms. Brown for her role in the discovery of FIV, it is undisputed that Ms. Brown played no role in the laboratory work required to isolate and purify the virus, and to develop methods for diagnosing it. (See, e.g., Reply 2-4.) Ms. Brown's central contention is essentially that she supplied the critical inventive contribution to the patents through her role in discovering the virus, and that the work of Drs. Pedersen and Yamamoto in isolating and purifying the virus was unoriginal.

 DISCUSSION

 I. The Summary Judgment Standard

 In order to withstand a motion for summary judgment, the opposing party must set forth specific facts showing that there is a genuine issue of material fact in dispute. Fed. R. Civ. P. 56(e) (West 1992). A dispute about a material fact is genuine "if the evidence is such that a reasonable [trier of fact] could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986). In the absence of such facts, "the moving party is entitled to a judgment as a matter of law." Celotex Corp. v. Catrett, 477 U.S. 317, 323, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986).

 II. Section 256

 Plaintiff's suit is for correction of inventorship under 35 U.S.C. § 256 (West 1984). Section 256 provides, in pertinent part:

 
Whenever . . . through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Commissioner may, on application of all the parties and assignees . . . issue a certificate correcting such error.
 
. . . The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Commissioner shall issue a certificate accordingly.

 35 U.S.C. § 256. The Federal Circuit has held *fn4" that section 256 provides for district court jurisdiction over inventorship disputes. *fn5" See ...


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