The opinion of the court was delivered by: Chesler, U.S.D.J.
(consolidated with 07-4539 for all purposes)
This matter comes before the Court on the motion for summary judgment, pursuant to Federal Rule of Civil Procedure 56, by Plaintiff Hoffman-La Roche Inc. ("Roche") against Defendants Cobalt Pharmaceuticals Inc. and Cobalt Laboratories, Inc. (collectively, "Cobalt.") For the reasons stated below, the motion will be granted.
The background to this Hatch-Waxman action for patent infringement has been presented in previous Opinions and will not be repeated here. This motion concerns Roche's U.S. Patent No. 4,927,814 (the "'814 patent.") As an affirmative defense, Cobalt has asserted that the '814 patent is invalid for improper inventorship under 35 U.S.C. § 102(f). Roche has moved for summary judgment on Cobalt's improper inventorship defense.
Cobalt contends that the '814 patent is invalid for improper inventorship on two grounds:
1) one named inventor, Dr. Bosies, is not properly an inventor; and 2) "Dr. Fleisch and others" were not named as inventors, but contributed to the conception of the invention, and should be named as inventors. (Cobalt's Opp. Br. 24.)
Roche makes a number of arguments in support of its motion, but the one that readily succeeds relies on a patentee's ability to correct inventorship under 35 U.S.C. § 256, which states:
Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.
The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.
Roche argues that, even if Cobalt might prove any error in inventorship of the '814 patent, § 256 expressly states that this will not invalidate the '814 patent if the error can be corrected under the terms of that statute.
To interpret the terms of § 256, Roche cites the Federal Circuit's decision in Stark v. Advanced Magnetics, 119 F.3d 1551, 1555 (Fed. Cir. 1997):
[S]section 256 allows deletion of a misjoined inventor whether that error occurred by deception or by innocent mistake. As well, the section allows addition of an unnamed actual inventor, but this error of non-joinder cannot betray any deceptive intent by that inventor. In other words, the statute allows correction in all misjoinder cases featuring an error and in those non-joinder cases where the unnamed inventor is free of deceptive intent.
The practical effect of this interpretation is that it renders Cobalt's misjoinder argument -- that Dr. Bosies is not properly an inventor -- impotent to effect invalidation of the patent, since Roche has the unconditional statutory right to correct errors of misjoinder. Thus, Cobalt's argument that Dr. Bosies has been misjoined, and should not be named as inventor, if proven, cannot invalidate the patent. Cobalt argues, incorrectly, that such an error may only be corrected in the absence of deceptive ...