United States Court of Appeals for the Federal Circuit
05-1291
FREDRIC A. STERN,
Plaintiff-Appellant,
v.
THE TRUSTEES OF COLUMBIA UNIVERSITY
IN THE CITY OF NEW YORK
and LASZLO Z. BITO,
Defendants-Appellees.
Donald W. Niles, Patterson, Thuente, Skaar & Christensen, P.A., of Minneapolis,
Minnesota. With him on the brief was Norman M. Abramson.
John P. White, Cooper & Dunham LLP, of New York, New York, argued for
defendants-appellees. With him on the brief were Peter D. Murray and Robert T.
Maldonado. Of counsel on the brief were George A. Davidson and John Fellas, Hughes
Hubbard & Reed LLP, of New York, New York.
Appealed from: United States District Court for the Southern District of New York
Judge Richard Conway Casey
United States Court of Appeals for the Federal Circuit
05-1291
FREDRIC A. STERN,
Plaintiff-Appellant,
v.
THE TRUSTEES OF COLUMBIA UNIVERSITY
IN THE CITY OF NEW YORK
and LASZLO Z. BITO,
Defendants-Appellees.
__________________________
DECIDED: January 17, 2006
__________________________
Before MAYER, RADER, and LINN, Circuit Judges.
MAYER, Circuit Judge.
Frederic A. Stern appeals the judgment of the United States District Court for the
Southern District of New York granting the Trustees of Columbia University in the City of
New York’s and Laszlo Z. Bito’s (collectively “Columbia’s”) motion for summary
judgment that Stern failed to present sufficient evidence to be added as co-inventor of
United States Patent No. 4,599,353 (“the ’353 patent”). Stern v. Trs. of Columbia Univ.,
No. 01-CV-10086 (S.D.N.Y. Feb 17, 2005). We affirm.
Background
Columbia University is the owner of the ’353 patent, which is directed towards the
use of prostaglandins in treating glaucoma. Lazlo Z. Bito is the named inventor of the
’353 patent, and was a long-time faculty member at Columbia University. In 1980, while
Stern was a medical student at Columbia University, he approached Bito about doing a
one semester ophthalmology research elective in his laboratory. Bito agreed and
directed Stern to begin his project by reviewing Bito’s papers on prostaglandins and
intraocular pressure (“IOP”). At that point, Bito had published numerous papers on the
effects of prostaglandins on the IOP in various animals, notably rabbits and owl
monkeys, and had concluded that rhesus monkeys would be good subjects for further
studies on the effects of prostaglandins on IOP. Experiments Stern conducted while
working in Bito’s laboratory showed that topical application of a single dose of
prostaglandin reduced IOP in rhesus monkeys and cats. Stern’s experiments did not
prove whether tachyphylaxis would develop in primates, the absence of which is
required for successful glaucoma treatment. After Stern’s departure from Columbia,
Bito conceived the ’353 patent while studying the effects of repeated prostaglandin
application on the IOP in rhesus monkeys. Bito applied for the patent in 1982 and, in
1986, it was issued. Claim 1 states:
[a] method for treating hypertension or glaucoma in a primate subject’s
eye comprising periodically contacting the surface of the eye with an
amount of an eicosanoid or an eicosanoid derivative effective to reduce
intraocular pressure in the eye without any substantial initial increase in
said pressure and to maintain reduced intraocular pressure.
’353 col.16, ll.5-11.
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When Stern found out about the ’353 patent, he brought suit seeking to be added
to the patent as a co-inventor of the patent’s independent claim one and dependent
claims 3, 5, and 9 through 12. Stern also asserted state law claims for fraudulent
concealment, breach of fiduciary duty, and unjust enrichment.
In determining inventorship, the trial court first construed the claims of the ’353
patent. The only disputed phrase was the meaning of “to maintain reduced intraocular
pressure” in claim 1. The trial court found that Columbia’s proposed construction of the
phrase to mean “maintenance of reduced intraocular pressure throughout the course of
treatment without development of tachyphylaxis, i.e., throughout the period of time that
the claimed method is being used to treat glaucoma” was correct. Using that
construction, the trial court determined that Stern failed to present clear and convincing
evidence of inventorship, as required to be added as a co-inventor to a published
patent. Eli Lilly & Co. v. Aradigm Corp.,
376 F.3d 1352, 1358 (Fed. Cir. 2004).
Accordingly, the trial court granted Columbia’s motion for summary judgment. Because
the state law claims for fraudulent concealment, breach of fiduciary duty, and unjust
enrichment depended on the addition of Stern as a co-inventor of the ’353 patent, the
trial court also granted summary judgment to Columbia on those claims. We have
jurisdiction pursuant to
28 U.S.C. § 1295(a).
Discussion
We review the district court’s grant of summary judgment de novo. See
Caterpillar Inc. v. Sturman Indus.,
387 F.3d 1358, 1373 (Fed. Cir. 2004). Summary
judgment is appropriate “if the pleadings, depositions, answers to interrogatories, and
admissions on file, together with the affidavits, if any, show that there is no genuine
05-1291 3
issue as to any material fact and that the moving party is entitled to a judgment as a
matter of law.” Fed. R. Civ. P. 56(c). Because a patent carries a statutory presumption
of validity,
35 U.S.C. § 282, Stern had the burden of showing by clear and convincing
evidence, after all reasonable inferences were drawn in his favor, that he was an
inventor of the ’353 patent.
Because “[c]onception is the touchstone of inventorship,” each joint inventor must
generally contribute to the conception of the invention. Burroughs Wellcome Co. v. Barr
Labs., Inc.,
40 F.3d 1223, 1227-28 (Fed. Cir. 1994). Additionally, courts require
corroborating evidence of conception.
Id. at 1228. However, contribution to one claim
is sufficient to be a co-inventor. Ethicon, Inc. v. U.S. Surgical Corp.,
135 F.3d 1456,
1460 (Fed. Cir. 1998). 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) (citation omitted). Conception is complete when
“the idea is so clearly defined in the inventor’s mind that only ordinary skill would be
necessary to reduce the invention to practice, without extensive research or
experimentation.” Burroughs Wellcome,
40 F.3d at 1228.
Here, Stern did not have an understanding of the claimed invention, did not
discover that prostaglandins have an effect on IOP, did not discover that repetitive
application of prostaglandins to the eyes of primates can maintain reduced IOP, and did
not conceive of the idea of the use of prostaglandins to reduce IOP in primates.
Furthermore, there was no collaboration between Stern and Bito in developing a
glaucoma treatment. Stern simply carried out an experiment previously done by Bito on
05-1291 4
different animals—animals that Bito had already determined would be good models for
prostaglandins research. Stern’s contribution is insufficient to support a claim of co-
inventorship.
Stern also argues that material in his laboratory notebooks would have proved
his claim of co-inventorship, but that they were destroyed by Bito. However, regardless
of the contents of the notebooks, unwitnessed laboratory notebooks on their own are
insufficient to support his claim of co-inventorship. See Hybritech, 802 F.3d at 1378.
Thus, the evidence Stern presented was insufficient to corroborate his claim of co-
inventorship.
Conclusion
Accordingly, the judgment of the United States District Court for the Southern
District of New York is affirmed.
AFFIRMED
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