Olusegun Falana v. Kent State University and Alexander J. Seed

"A putative inventor who envisions the structure of a novel genus of chemical compounds and contributes the method of making that genus contributes to the conception of that genus."

Dr. Olusegun Falana (“Falana”) sought correction of inventorship (under 35 U.S.C. §256) of U.S. Patent No. 6,830,789 (“’789 Patent”) issued to Dr. Joseph Doane, Dr. Alexander Seed (“Seed”), and Dr. Asad Khan. The U.S. District Court for the Northern District of Ohio ordered the United States Patent and Trademark Office “to issue a certificate of correction adding Falana as a named inventor on the ’789 Patent.” Further the district court found the case exceptional against Kent State University and Seed under 35 U.S.C. §285, and awarded undetermined attorney fees to Falana. As part of a team of researchers at Kent Displays, Inc. (“KDI”), “Falana developed a synthesis protocol for making a novel class, or ‘genus,’ of chemical compounds: napthyl substituted TADDOLs.” Further, the ’789 Patent specification “discloses the Synthesis Protocol developed by Falana as the protocol used to synthesize the claimed class of chiral compounds.” The Court of Appeals for the Federal Circuit AFFIRMED the district court’s claim construction. Additionally, when the method of making a chemical compound is unknown or requires more than ordinary skill, “the discovery of that method is as much a contribution to the compound as the discovery of the compound itself.” Thus, “a putative inventor who envisioned the structure of a novel genus of chemical compounds and contributes the method of making that genus contributes to the conception of that genus.” Falana was entitled to be listed as a joint inventor of the ’789 Patent. Costs awarded to Falana.