Mark Davies, partner in the Supreme Court and appellate practice at Orrick, Herrington & Sutcliffe, admits he is “very selective” about filing amicus briefs. 

But when longtime friend and former colleague Roy Englert asked him if he had an interest in filing one in Englert’s latest Supreme Court case, the offer was irresistible. “It was a cert stage amicus brief, which is particularly useful,” recalled Davies. “It was in the patent law area where I do a lot of work. But the real enticement was who the brief was for. If you’re into patent law, Diamond v. Chakrabarty was a huge case about patentable subject matter.”

In that 1980 case, the Supreme Court confirmed that genetically engineered life forms can be patented. It was a victory for acclaimed research microbiologist, Dr. Ananda Chakrabarty of the University of Illinois at Chicago College of Medicine. He is named as an inventor on 12 U.S. patents covering the fields of microbiology, immunology and cancer treatment, including the patent covering a genetically-modified strain of bacterium at the center of the seminal ruling in the case with his name.

A cert stage petition, in patent law, with Dr. Chakrabarty as the client, “Roy got me,” chuckled Davies.

Englert of Washington’s Robbins, Russell, Englert, Orseck, Untereiner & Sauber, filed the petition in W.L. Gore & Associates v. C.R. Bard Inc. The petition basically challenges how the U.S. Court of Appeals for the Federal Circuit determines who is a co-inventor.

Patent law requires patent applicants to list all of their co-inventors. If the patent excludes any joint inventor, it is invalid. Englert’s petition on behalf of W.L. Gore & Associates stems from a long-running legal battle over who conceived the invention underlying Patent No. 6,436,135 (“the ’135 Patent”), which covers prosthetic vascular grafts that are fabricated from highly expanded polytetrafluoroethylene (ePTFE) – a substance better known as “Gore-Tex.” Prosthetic vascular grafts bypass or replace blood vessels to ensure sufficient blood flow to various parts of the body.

W.L. Gore contends that the invention had its roots in research by Peter Cooper, who was plant manager of Gore’s Flagstaff, Arizona, facility, and who was investigating possible uses of Gore-Tex, which is best known for its use in waterproof and breathable outerwear, as a vascular graft. Cooper, according to the petition, sent a number of Gore-Tex tubes to scientists around the country to get animal test data. One of those scientists was Dr. David Goldfarb who, using the tubes and information supplied by Cooper, found one that produced the best results. Both Cooper and Goldfarb later claimed credit for being the inventor of the vascular prosthesis described in the claims of the ’135 patent.

C.R. Bard later sued W.L. Gore for patent infringement. Gore argued the patent was invalid because it failed to list Cooper as a co-inventor. A jury found the patent to be infringed; Bard was awarded more than $185 million in combined lost profits and reasonable royalties.

The Federal Circuit, in a 2-1 ruling, affirmed. It ruled that to be a joint inventor, one must communicate a key requirement of a particular patent claim. Cooper, it said, had not communicated to Goldfarb “that the intermodal distance was the key to creating successful grafts.”

“Dr. Chakrabarty was very adamant about this issue,” recalled Davies, and argued that a colleague who merely tests samples is not an inventor.

The amicus brief describes Chakrabarty’s discovery of and experience with azurin, a new protein which demonstrated important and novel potent anticancer activity. His research subsequently showed that azurin might be effective on the HIV/AIDS virus and the parasite causing malaria. Although his lab could test the anti-cancer activity, it did not have the ability to experiment with azurin and the HIV virus so Chakrabarty looked for outside collaborators at other universities who could do the experimentation on that aspect. They quickly confirmed that azurin had an inhibiting property against the virus as well as against malaria.

“The key point is this: Dr. Chakrabarty’s outside experimenters were not co-inventors of azurin as an inhibitor of the HIV-1 virus,” writes Davies in the amicus brief. “The outside experimenters recognized that they were properly not named as co-inventors in a later patent application that was filed and which covered such treatment, even as they also were named as co- authors in journal articles describing the patented treatment.”

Chakrabarty’s experience was similar to Cooper’s experience and he believed the court’s result in Cooper’s case was wrong, said Davies.

The Federal Circuit’s test for co-inventors, “not only ignores the key ingenuity of the original developer, but, even worse, leads to the anomalous result that the experimenter can later assert the patent against its co-inventor in infringement litigation,” writes Davies. “The rule applied by the Federal Circuit ignores the realities of academic investigation and commercial research and development, each of which relies upon more informal forms of collaboration and communication between colleagues that are dictated by their different roles.”

The only amicus briefs worth filing, according to Davies, are the ones that give the Supreme Court a perspective that it would not otherwise get from the main briefs. Chakrabarty, three decades after his own Supreme Court victory, provides a “real world experience” with research and collaborative experimentation by an internationally recognized scientist, he said.

“Dr. Chakrabarty’s experience as a scientist, an academic and an entrepreneur, confirms that whoever first actually conceives of a new idea or solution is who the scientific, engineering and research communities believe should receive credit for such discovery,” argues Davies.

Marcia Coyle can be contacted at mcoyle@alm.com.