Brigham Young University et al v. Pfizer et al

Filing 911

MEMORANDUM DECISION denying 734 Motion for Partial Summary Judgment No. 5. Signed by Judge Ted Stewart on 03/22/2012. (tls)

IN THE UNITED STATES COURT FOR THE DISTRICT OF UTAH
CENTRAL DIVISION

BRIGHAM YOUNG UNIVERSITY, and
DR. DANIEL L. SIMMONS,
Plaintiffs,

MEMORANDUM DECISION AND
ORDER ON DEFENDANTS’
MOTION FOR PARTIAL
SUMMARY JUDGMENT NO. 5

vs.

PFIZER, INC., et al.,

Case No. 2:06-CV-890 TS

Defendants.

This matter is before the Court on Pfizer’s Motion For Summary Judgment On Plaintiffs’
Claim for Correction of Inventorship (Count IV of the First Amended Complaint).1
I. BACKGROUND
The facts of this case are fully set out in the Court’s Order dated March 13, 2012,2 and
need not be recited here.

1

Docket No. 734.

2

Docket No. 896.
1

II. STANDARD OF REVIEW
Summary judgment is proper if the moving party can demonstrate that there is no genuine
issue of material fact and it is entitled to judgment as a matter of law.3 The party seeking
summary judgment bears the initial burden of demonstrating an absence of a genuine issue of
material fact.4 “Once the moving party has properly supported its motion for summary judgment,
the burden shifts to the nonmoving party to go beyond the pleadings and set forth specific facts
showing that there is a genuine issue for trial.”5 “An issue is genuine ‘if the evidence is such that
a reasonable jury could return a verdict for the nonmoving party.’”6
III. DISCUSSION
Pfizer moves the Court to dispense with BYU’s claim that several of Pfizer’s patents on
COX-2 related materials should be amended to include Dr. Simmons as a joint inventor. BYU
initially requested amendment of more than eighty patents held by Pfizer. However, BYU
subsequently indicated that it would restrict its claims to three patents.7 The Court will now
determine whether summary judgment for Pfizer is appropriate on those three patents.

3

See Fed.R.Civ.P. 56(a).

4

Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).

5

Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964, 971 (10th Cir. 2002).

6

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).

7

Docket No. 884.
2

As a threshold issue, the parties have disputed whether the Court is required to construe
the claims of the disputed patents before determining joint inventorship. The Court will first
address that question.
A.

CLAIM CONSTRUCTION
At the March 9, 2012, hearing, the Court invited the parties to submit supplemental

briefing on whether two Federal Circuit cases—Trovan, Ltd. v. Sokymat SA, Iroro8 and Falana v.
Kent State University9—require the Court to construe the disputed patents’ claims before
determining whether BYU has contributed to them.
In its supplemental brief, BYU argues (1) that at least one element of each accused patent
included celocoxib, a COX-2 inhibitor; (2) that Pfizer does not dispute the presence of celocoxib
in the accused patents; and (3) that beause the presence of celocoxib is undisputed, claim
construction is not necessary. In response, Pfizer does not dispute that the disputed patent claims
incorporate a COX-2 inhibitor. Rather, Pfizer devotes its energy to contending that both Trovan
and Falana clearly require claim construction.
In Trovan, the Federal Circuit stated that “an inventorship analysis, like an infringement
or invalidity analysis, begins as a first step with a construction of each asserted claim to
determine the subject matter encompassed thereby.”10 In reviewing the lower court’s conclusions
on joint inventorship, the Federal Circuit went on to criticize the lower court for making “broad

8

299 F.3d 1292, 1302 (Fed. Cir. 2002).

9

2012 WL 171550 (Fed. Cir. Jan. 23, 2012)

10

299 F.3d at 1301.
3

statements as to the scope of the coverage of [the entire patent] which were not directed at any
particular claims” instead of conducting an “independent claim construction analysis, which is
the first step in determining inventorship.”11 The Court then stated “[w]ithout a direct
construction of [the claims in dispute] the meaning and scope of the claims and the extent to
which [plaintiff] may have contributed to the invention recited in those claims cannot be
determined.”12
Though this language clearly requires a court to conduct claim construction in the joint
inventorship context, the Court would note that this requirement is imposed when there is a need
to “determine the subject matter encompassed” of a disputed claim. However, when the subject
matter of a claim is undisputed, as it is here, claim construction is redundant.
The Markman decisions do not hold that the trial judge must repeat or restate
every claim term in order to comply with the ruling that claim construction is for
the court. Claim construction is a matter of resolution of disputed meanings and
technical scope, to clarify and when necessary to explain what the patentee
covered by the claims, for use in the determination of infringement. It is not an
obligatory exercise in redundancy.13
BYU’s argument is that Pfizer relied on Simmons’s work to create the COX-2 inhibitors
involved in the disputed patents. Pfizer has previously admitted that the patents at issue include
COX-2 inhibitors, and has not disputed this fact in its supplemental brief.14 There is therefore no
11

Id. at 1305.

12

Id. at 1306.

13

See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)

14

See Docket No. 897, at vi-ix. Pfizer objects to BYU’s reference to Pfizer’s past
statements about the contents of the disputed patent because they are, according to Pfizer, offered
for the first time in Plaintiffs’ supplemental brief. BYU responds that its factual statement is
4

dispute as to the inclusion of COX-2 inhibitors in at least one claim in each patent. The Court
therefore agrees with BYU that claim construction is unnecessary.
Falana further supports this conclusion. Though the trial court in that case engaged in
claim construction, it did so because the parties disputed whether two claims in a contested
patent contained a specific limitation.15 The district court thus construed the claims, found that
the limitation was not present, and then, after a bench trial, went on to find that the plaintiff was a
joint inventor. Here, however, Pfizer has not contended that the disputed claims do not include
COX-2 inhibitors. There is therefore no reason to construe the claims to determine if they do.16
In sum, the Court finds that it is undisputed that a COX-2 inhibitor is incorporated by at
least one claim of each accused patent. It follows that the accused patents contain elements that
may incorporate Simmons’s alleged contribution, and claim construction is not necessary.
Accordingly, the Court rejects Pfizer’s argument that BYU’s joint inventor claims fail because
claim construction has not been performed.

simply a concentration of information contained in the existing record. The Court notes that,
though Pfizer may have a legitimate complaint on this point, Pfizer’s own admission that the
patents contain a COX-2 inhibitor is nevertheless inescapable. Accordingly, the Court will
proceed on that premise.
15

Falana, 2012 WL 171550, at *4.

16

See also Falana v. Kent State Univ., 2010 WL 5178838, at *12 (N.D. Ohio Dec. 15,
2010) (“The inventorship analysis, like an infringement or invalidity analysis, starts with a
construction of each disputed claim to determine the subject matter encompassed thereby. . . .
However, if neither party has requested the Court to construe any of the terms in the claim at
issue, or ever offered a construction of the claim at issue, then the right to request construction of
the claim is waived and the parties have implicitly conceded that the meaning of the terms of the
claim are clear and not in need of construction.”) (citing Eli Lilly & Co. v. Aradigm Corp. 376
F.3d 1352, 160 (Fed. Cir. 2004) (internal quotation marks and citations omitted)).
5

B.

SIMMONS’S CONTRIBUTION
The Court now turns to a consideration of whether Simmons qualifies as a joint inventor.
A joint invention is the product of a collaboration between two or more persons
working together to solve the problem addressed. People may be joint inventors
even though they do not physically work on the invention together or at the same
time, and even though each does not make the same type or amount of
contribution.
Thus, the critical question for joint conception is who conceived, as that
term is used in the patent law, the subject matter of the claims at issue. A
contribution to one claim is enough. The statute does not set forth the minimum
quality or quantity of contribution required for joint inventorship. Each joint
inventor, however, must contribute in some significant manner to the conception
of the invention. Conception of a chemical compound requires knowledge of both
the specific chemical structure of the compound and an operative method of
making it.17
Simmons claims that Pfizer relied on his method for discovering a COX-2 inhibitor when

developing the COX-2 inhibitors that are contained in the disputed patents. If this is the case,
then the disputed patents may incorporate a significant contribution from Dr. Simmons and
would thus be subject to amendment of inventorship. The facts of Falana are instructive here.
Dr. Falana was hired by a company—KDI—to assist in synthesizing compounds. The
goal was to develop a temperature independent, high helical twisting power chiral additive—a
compound that KDI wanted to aid in the development of LCD technology. While still employed
by KDI, Falana “developed a synthesis protocol for making a novel class, or genus, of chemical
compounds: naphthyl substituted TADDOLs.”18 Falana then synthesized a compound within the
novel class, which was denoted “Compound 7.” Compound 7 achieved a degree of temperature

17

Falana, 2012 WL 171550, at *6 (internal quotation marks and citations omitted).

18

Id. at *2.
6

independence. However, KDI determined that while Compound 7 represented “significant
progress,” it did not “completely satisfy the goals of the project” because it did not obtain the
requisite level of temperature independence.19
About a year later, another researcher working on the same project used Falana’s
synthesis protocol to make Compound 9. Compound 9 obtained the requisite temperature
independence and therefore satisfied the goals of the project. KDI then applied for a patent.
Falana was not named as an inventor and Falana subsequently sued for correction of
inventorship.
On appeal, defendants argued that Falana could not be a joint inventor because, inter alia,
the patent covered “chemical compositions and not methods.”20 According to defendant,
Falana’s supposed contribution of a method was “legally irrelevant” to whether he was a joint
inventor on a patent that did not claim any method of making its compounds. The court then
proceeded to determine “whether a putative inventor who envisioned the structure of a novel
chemical compound and contributed to the method of making that compound is a joint inventor
of a claim covering that compound.”21
The court held:
[T]he conception of a chemical compound necessarily requires knowledge of a
method for making that compound. In some circumstances, the method of making
a compound will require nothing more than the use of ordinary skill in the art. In
those circumstances, the contribution of that method would simply be “[t]he basic
19

Id.

20

Id. at *7.

21

Id.
7

exercise of the normal skill expected of one skilled in the art” and would not
normally be a sufficient contribution to amount to an act of joint inventorship.
Where the method requires more than the exercise of ordinary skill,
however, the discovery of that method is as much a contribution to the compound
as the discovery of the compound itself. This case is simply the application of the
well-known principle that conception of a compound requires knowledge of both
the chemical structure of the compound and an operative method of making it.
Accordingly, this court holds that 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.22
This language makes clear that a patent claiming compounds need not claim a method for
making those compounds in order for the inventor of such a method to be a joint inventor.
Rather, the Court takes Falana to mean that an inventor of a method may be entitled to joint
inventorship on a patent that discloses only compounds if (1) the plaintiff conceived of a method;
(2) that is outside the exercise of ordinary skill; and (3) is in fact used to create the compounds in
the patent.
The Court finds that BYU has put forward evidence (1) that Simmons discovered COX-2
and conceived of a method for determining whether a compound was COX-2 selective23; (2) that
Simmons’s contribution was greater than the exercise of ordinary skill24; and (3) that Pfizer used
22

Id. at *8.

23

Docket No. 800, at iv-v, xii-xv. Pfizer characterizes Simmons’s contribution as a
method for testing existent compounds for COX-2 selectivity rather than a method for
synthesizing a compound, and argues that this makes Simmons’s would-be contribution
materially distinct from Falana’s. The Court disagrees. Regardless of whether Simmons
synthesized a new compound that could inhibit COX-2, or simply discovered that COX-2 existed
and that an existent compound could inhibit it, his contribution would have the same effect in the
end: providing the capability to develop COX-2 selective NSAIDs. Accordingly, the Court
rejects this argument.
24

See Docket No. 908, at 9 (noting that “BYU has presented testimony that during the
time BYU was sharing information and materials with Pfizer no other research group, either
8

Simmons’s method in developing its own COX-2 inhibitor.25 The Court therefore finds that
there are disputed issues of material fact and will therefore deny summary judgment on the issue
of joint inventorship.
Pfizer further contends that there was not sufficient collaboration between Simmons and
the named inventors of the patent to warrant joint inventorship. “Joint inventorship arises only
‘when collaboration or concerted effort occurs—that is, when the inventors have some open line
of communication during or in temporal proximity to their inventive efforts.’”26 However,
“[p]eople may be joint inventors even though they do not physically work on the invention
together or at the same time, and even though each does not make the same type or amount of
contribution.”27 Pfizer suggests that BYU has presented no facts that show that “an alleged
‘significant contribution’ from Dr. Simmons was ever shared with a Pfizer representative other
than Drs. Seibert and Masferrer.”28 In response, BYU cites to evidence showing that (1) before
the collaboration with BYU, Pfizer was not pursuing a COX-2 selective NSAID and Simmons’s
COX-2 information was not available anywhere else; (2) Simmons gave COX-2 research

academic or industrial, had access to the unique combination of Dr. Simmons[’s] clones,
antibodies, research data, expert advice and project”) (internal quotation marks and footnote
omitted)).
25

See Docket No. 899, at 7 (noting that “BYU has put forth extensive evidence—based on
expert testimony, deposition testimony from Pfizer scientists, and inter-Pfizer
communications—that Pfizer used confidential information” in its independent pursuit of a
COX-2 selective NSAID).
26

Falana, 2012 WL 171550, at *8 (quoting Eli Lilly & Co., 376 F.3d at 1359).

27

Id. at *6.

28

Docket No. 851, at 9.
9

material to Pfizer; and (3) Pfizer developed a COX-2 selective NSAID and its scientists were
given awards for their work on COX-2. The Court finds that a reasonable juror could infer from
this information that the inventors of the disputed patents built off Simmons’s work and will
therefore reject Pfizer’s argument on this point.
Finally, Pfizer has argued that Simmons’s contribution was prior art and thus could not
qualify Simmons for joint inventorship. The Court noted at the March 9, 2012, hearing that it
found this argument unpersuasive, and will here reject it. As noted above, the question before
the Court is whether Simmons’s method was outside the exercise of ordinary skill, and not
whether Simmons’s alleged contribution was prior art under 35 U.S.C. § 102. This is illustrated
by the statement in Falana that “[o]nce the method of making the novel genus of compounds
becomes public knowledge, it is then assimilated into the storehouse of knowledge that comprises
ordinary skill in the art.”29 However, before the time that the method becomes public, if it
“requires more than the exercise of ordinary skill,” the method can be grounds for joint
inventorship.30 Accordingly, the Court will reject this argument.
IV. CONCLUSION
In light of the foregoing, it is therefore
ORDERED that Pfizer’s Motion For Summary Judgment On Plaintiffs’ Claim for
Correction of Inventorship (Count IV of the First Amended Complaint) (Docket No. 734) is
DENIED.

29

2012 WL 171550 at *8 (emphasis added).

30

Id.
10

DATED March 22, 2012
BY THE COURT:

_____________________________________
TED STEWART
United States District Judge

11