Anticipate This!™ | Patent and Trademark Law Blog

Israel Bio-Engineering Project v. Amgen, Inc., et al.

Posted in Opinion Commentary by Jake Ward on February 5, 2007

A Co-Owner Has a Right to Limit Another Co-Owner’s Ability to Sue Infringers by Refusing to Join Voluntarily in a Suit. 

(Fed. Cir. 2007, 06-1218)

At the CAFC, Israel appealed a motion for summary judgment granted to assignee Yeda, on the basis that Israel lacked standing to bring suit because it did not have sole ownership of the patent.  The technology of the opinion relates to Tumor Necrosis Factor Binding Protein (“TBP”).  TBP is the subject matter of Yeda’s U.S. Patent No. 5,981,701 (the “’701 patent”).  Yeda had earlier negotiated three agreements in which Israel agreed to finance some research in exchange for certain rights to subject matter arising from the research.  The research resulted, at least in part, in the subject matter of the ‘701 patent. 

Israel had originally filed an action alleging that Amgen infringed the ’701 patent with the pharmaceutical Enbrel®, a genetically engineered protein used to treat severe rheumatoid arthritis and psoriasis. Shortly after the filing of the suit, Yeda intervened.  The parties did not dispute that some of the claimed subject matter was discovered prior to the expiration of agreements.  However, some of the claimed subject matter was invented after expiration of the agreements.  The district court held that Israel lacked standing because claims 2 and 3 of the ’701 patent “did not fall within the operation of the agreements, and even if Israel had an ownership interest in claim 1, the subject matter in claim 1 was “at most” a partial interest in the whole patent.

The sole issue on appeal was whether Israel had standing to maintain the patent infringement action against Amgen without the joinder of Yeda, the assignee of the patent?  Specifically, the issue was whether the parties intended only to assign to Israel title to patents for matter developed during the agreement period, or whether they intended to give Israel the right to the assignment of all patents, patent applications, or inventions resulting from the Yeda research programs?

It is a bedrock tenet of patent law that “an invention presumptively belongs to its creator.”  All that is required of a joint inventor is that he or she (1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.  Still, issues of patent ownership are distinct from questions of inventorship. Each co-owner of a patent presumptively owns a pro-rata undivided interest in the entire patent, no matter what their respective contributions.

Standing to sue for infringement stems from the Patent Act, which provides: “[a] patentee shall have remedy by civil action for infringement of his patent.”  A “patentee” includes not only the patentee to whom the patent was
issued but also “the successors in title to the patentee.”  However, one co-owner has the right to limit the other co-owner’s ability to sue infringers by refusing to join voluntarily in the patent infringement suit.  Absent the voluntary joinder of all co-owners of a patent,a co-owner acting alone will lack standing.

Upon examining the purpose of the Israel-Yeda agreement (the contract language as well as the extrinsic evidence regarding the circumstances surrounding the contract), the CAFC concluded that Israel was not entitled to assignment of inventions developed after the agreements expired.  Thus, Israel is at best a co-owner of the ‘701 patent and Yeda can limit Israel’s right to sue infringers of the ‘701 patent claims.


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