By
Donald Zuhn —

On
March 28, the Federal Circuit in Rubin v.
General Hospital Corp. affirmed judgment by the District Court for the
District of Massachusetts dismissing the suit brought by Drs. Berish Rubin and Sylvia Anderson
against The General Hospital Corporation requesting correction of U.S. Patent
Nos. 7,388,093 and 7,407,756, which are assigned to General Hospital.  The '093 and '756 patents are directed to genetic
mutations that cause the inherited disease Familial Dysautonomia (FD), also
known as Riley-Day Syndrome, and methods for detecting FD.

Drs.
Rubin and Anderson at the Department of Biological Sciences of Fordham
University, and Drs. Slaugenhaupt and Gusella at Massachusetts General
Hospital, had been independently conducting research to determine the genetic
mutations disclosed in the '093 and '756 patents.  Drs. Rubin and Anderson identified two
mutations in the gene encoding IkB kinase complex-associated protein that cause
FD, and on December 20, 2000, submitted a paper describing these mutations to the
American Journal of Human Genetics.  When submitting the paper, Dr. Rubin asked
the Editor of the journal to not send the paper to Dr. Gusella and his
colleagues at Mass General for peer-review. 
On December 22, 2000, the Editor sent the abstract for the paper to Dr.
Gusella.  Dr. Gusella declined to review
the full paper, and on December 28, 2000, Drs. Gusella and Slaugenhaupt
submitted their own paper identifying the same two mutations to the same
journal (as of October 2000, Dr. Gusella had noted that his group had identified
184 candidate mutations, and as of December 12, 2000, further noted that the
responsible mutations had not yet been identified).  Both papers were published in the January 22,
2001 issue of the journal.

On
January 6, 2001, Drs. Gusella and Slaugenhaupt filed a provisional application
describing the two mutations and claiming their diagnostic use.  On January 17, 2001, Drs. Rubin and Anderson
filed their own provisional application describing the two mutations and
claiming their diagnostic use.  The
application filed by Drs. Gusella and Slaugenhaupt eventually resulted in the
issuance of the '093 and '756 patents. 
During prosecution of their application, Drs. Rubin and Anderson decided
not to initiate an interference in the U.S. Patent and Trademark Office, despite
the examiner's suggestion that they do so.

Rather
than initiate an interference, Drs. Rubin and Anderson filed suit against Mass
General seeking correction of inventorship of the '093 and '756 patents under
35 U.S.C. § 256.  They argued that Dr.
Gusella's receipt of their abstract permitted Dr. Gusella's group to
select and confirm the identity of the FD mutations and file their provisional
patent application, and Drs. Rubin and Anderson asked to be substituted as the inventors of the '093
and '756 patents, or added as joint inventors. 
Granting Mas General's motion for summary judgment, the District Court held
that the inventorship could not be changed under § 256 because there was no
"collaboration" between the two teams of scientists, and that Drs.
Rubin and Anderson could not be added as joint inventors because they did not
meet the requirements of § 116 for joint invention.  With respect to the correction of
inventorship, the District Court also held that the complete substitution of
inventorship is not a matter for § 256, but rather, is a claim for priority of
invention of the subject matter, and priority should be resolved in an
interference, not under § 256.

On
appeal, the Federal Circuit determined that "the district court correctly
ruled that the independent relationship between these teams of scientists, and
the nature of this communication of information, do not support joint invention
in accordance with §116, or warrant change or substitution of inventorship
under §256."  The panel added that:

We agree with the district court that,
whatever actions were taken after the Rubin/Anderson Abstract appeared
uninvited on Dr. Gusella's desk, ultimately the dispute is of priority of
invention; that is, which team was the first to conclusively identify the
operative mutations.  The district court
recognized that even if Drs. Gusella and Slaugenhaupt had completed this
identification before they saw the Rubin/Anderson identification, it would
still be necessary to determine priority of invention in order to resolve the
patent rights.

The
panel, therefore, concluded that the District Court acted within its authority
in directing the parties to the USPTO to determine priority of invention, and affirmed
the District Court's judgment of dismissal.

Rubin v. General Hospital
Corp.
(Fed. Cir. 2013)
Nonprecedential
disposition
Panel:
Circuit Judges Newman and Bryson and District Judge Fogel
Opinion
by Circuit Judge Newman