The case of Trans Ova Genetics, LC v. XY, LLC, No. 2019-2312 (Fed. Cir. Sept. 8, 2020) Rule 36 affirmance of IPR2018-00250 Is a lesson in determination of coauthorship and coinventorship. Here, the patentee came out winning simply because the IPR petitioner failed to carry its burden to prove that a prior art article was “of another” for failure to name one Green as a coauthor. Of interest, PTAB also found persuasive that Green was not a named coinventor as support for its conclusion that the petitioner failed to prove that Green should have been named as a coauthor on the prior art article. But the Federal Circuit, in oral hearing, pointed out that effectively the patentee, like the petitioner also put its head in the sand and failed to investigate exactly what Green did. The case could have come out differently, suggesting that if a patentee is going to draw on an article for support in the patent specification, it may, depending on all circumstances, be better for the patentee to find out what a person like Green actually did.
For more detailed analysis of this case, please see on Finnegan's AIA Blog.
Originally published by Finnegan, September 2020
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