Who’s your daddy? The world of academic research sometimes seems like a soap opera — with researchers regularly forming, pursuing and ending relationships with various schools and projects. A recent case, University of Pittsburgh v. Hedrick, shows how researchers’ interactions, like those in a soap opera, can lead to questions about conception. A matter of biology University of Pittsburgh researchers Adam Katz and Ramone Llull studied fat tissue. In 1997, they began exploring the idea that mature fat cells could be converted into bone, cartilage and muscle. They recorded their observations in laboratory notebooks, a January 1997 invention disclosure and a February 1997 document titled “What’s So Great About Fat?” Marc Hedrick joined the lab in July 1997 for a yearlong fellowship. While Hedrick was at the lab, Katz submitted a grant proposal. In the proposal other researchers were listed but Hedrick wasn’t. Hedrick also was not listed in Katz’s lab notebook — even though other researchers were. After his fellowship ended, Hedrick returned to the University of California–Los Angeles (UCLA) and worked with two colleagues on the same type of fat-derived stem cells being studied by Katz and Llull. Following applications by the University of Pittsburgh, a patent was issued for a method of converting stem cells derived from fat into bone, fat, cartilage and muscle. The listed inventors included Katz and Llull as well as Hedrick and his colleagues. In October 2004, the University filed an action seeking removal of all inventors except Katz and Llull, arguing that Katz and Llull had completed conception of the invention before the other researchers contributed their efforts. The conception question The U.S. Court of Appeals for the Federal Circuit explained that the inventors named in a patent are presumed correct. A party seeking the removal of inventors must show that those inventors did not contribute to the invention of any of the patent claims. Conception is the “touchstone” of invention. The court defined conception as “the formation in the mind of the inventor of a definite and permanent idea of the complete operative invention, as it is hereafter to be applied in practice.” The test for conception is whether the inventor’s idea was definite and permanent enough that one skilled in the art could understand the invention. An inventor must establish his or her conception by corroborating evidence, preferably in the form of contemporaneous disclosures. The court emphasized that, to accomplish conception, an inventor isn’t required to know that his or her invention will work. It is sufficient that the inventor has the complete mental picture and could describe it with particularity. An ill-conceived argument The UCLA researchers argued that Katz and Llull’s research was inconclusive until they added their efforts. They asserted that Katz and Llull were required to know that the invention contained every limitation of each patent claim at the time of conception. The court disagreed. It concluded that Katz and Llull conceived each patent claim through contemporaneous corroboration before Hedrick arrived in Pittsburgh in July 1997. Specifically, the court stated, “[B]ecause … Katz and Llull had formed a definite and permanent idea of the cells’ inventive qualities, and had in fact observed them, it is immaterial that their knowledge was not scientifically certain and that the [UCLA] researchers helped them gain such scientific certainty.” All contributions aren’t equal The court’s decision makes clear that not every contribution to an invention is equal. Therefore, not |