Who Invented Nobel Winner’s Cancer Patents Divides Fed. Cir.

A three-judge panel of the Federal Circuit appeared split at oral argument on Dana-Farber Cancer Institute’s claims that a Nobel Prize winner’s fellow researchers should be named on his cancer immunotherapy patents.

Japan-based Ono Pharmaceuticals Co., which owns the six patents, and patent licensee Bristol-Myers Squibb Co. appealed after a lower court ruled that the researchers—Gordon Freeman and Clive R. Wood—should be listed as co-inventors with Tasuku Honjo.

U.S. Court of Appeals for the Federal Circuit Judges Alan D. Lourie and Kara F. Stoll had hard questions for the drug companies.

“The district court found that all three doctors had a simultaneous focus on this pathway and using it to treat cancer. Doesn’t that defeat your argument?” Stoll asked Ono’s attorney.

“Honjo in his Nobel lecture seemed to give quite a bit of credit to Drs. Freeman and Wood,” Lourie said. “They clearly worked together on what was claimed, right?”

But Judge Pauline Newman seemed to side with Ono, saying Honjo’s statement reflects the “culture” of accepting a Nobel Prize and giving “credit to everybody who had anything to do with getting you where you are.”

The patents relate to methods of cancer immunotherapy that stimulate the immune system to attack tumor cells.

“It does seem that the idea of curing cancer did originate with Dr. Honjo,” she said.

Dana-Farber sued to have Freeman and Wood added to the patents as Honjo’s co-inventors. The U.S. District Court for the District of Massachusetts agreed, and ordered the Patent and Trademark Office to correct the patents.

The drug companies argued on appeal that the lower court got it wrong.

The question for the court isn’t whether Freeman and Wood collaborated with Honjo and made valuable scientific discoveries, said Seth P. Waxman of Wilmer Cutler Pickering Hale and Dorr LLP in Washington.

“It’s whether they made significant contributions to the definite and permanent idea of Dr. Honjo’s path-breaking methods for treating cancer,” Waxman said. “The answer is no.”

Dana-Farber’s counsel said Freeman and Wood made significant contributions in the invention that warrant joint-inventorship.

Freeman and Wood weren’t required to be there “at the final moment of the final experiment performed,” Donald R. Ware of Foley Hoag LLP in Boston said.

The case is Dana-Farber Cancer Institute v. Ono Pharm. Co., Fed. Cir., No. 19-2050, argued 5/8/20.