By Linda O’Brien, J.D., LL.M.
In an action by a former University of Michigan graduate student against a university professor for correction of inventorship, the student failed to show that he contributed in a significant manner in any of the claims in a neural probe technology patent, the federal district court in Detroit has held. Thus, the professor’s motion for summary judgment, declaring that the former student was not a joint inventor, was granted (Daneshvar v. Kipke, July 19, 2017, Murphy, S.).
In 2007, Eugene Daneshvar was a student at the University of Michigan and worked as a graduate research assistant in the Neural Engineering Lab. Daryl Kipke, a professor at the university’s Department of Engineering, served as Daneshvar’s faculty advisor. In June 2017, Daneshvar had an idea for a neural probe technology, which he described in a notebook, along with some drawings. He discussed the idea with Kipke and stated that he wanted to develop the idea as part of his graduate studies.
In October 2008, Daneshvar, Kipke, and another researcher submitted an invention disclosure to the university’s Office of Technology Transfer (OTT), which administers the policy for governing ownership of patents. Kipke advised Daneshvar that an attorney for NeuroNexus Technologies, Inc., a company formed by Kipke to commercialize neural probe technologies development in the Engineering Department, would draft a provisional patent for his pivot probe invention. However, the OTT declined to pursue a patent for Daneshvar’s pivot probe invention or for his pivot electrode concept.
While researching prior art in August 2011, Daneshvar discovered NeuroNexus’ October 2007 filing of provisional patent application 60/980,657, that led to the issuance of U.S. Patent No. 8,565,894 ("the ’894 patent"). Daneshvar believed the application and patent contained his ideas. Subsequently, Daneshvar brought suit against Kipke and NeuroNexus for correction of inventorship. The defendants raised a counterclaim, seeking declaratory judgment that Daneshvar was not the inventor of the disputed patent. Before the court was the defendants’ motion for summary judgment.
Correction of inventorship. The court determined that Daneshvar did not show by clear and convincing evidence that he contributed to the joint arrival of a definite, permanent idea of any of the claims in the ’894 patent and, therefore, failed to overcome the presumption that the patent’s named inventors—Kipke and two NeuroNexus employees—were correct.
The invention contained in the ’894 patent is medical device to facilitate deep brain stimulation and is described as a "three dimensional system of electrode leads." The diagram included in the patent depicts three prongs, called "subsystems" that are connected by "guiding elements" to allow a user to move and manipulate each subsystem. A guiding element is one of two variations: several connections that a user can manipulate using a system of cables or robotics and a particular, fixed shape made of material with shape memory or high elasticity.
In determining what evidence was corroborative that Daneshvar contributed to a claim in the ’894 patent, the only relevant time frame was June 13, 2007—the date Daneshvar claimed to have conceived his pivot probe idea—and October 17, 2007—when the application that led to the ’894 patent was filed. The court noted that the only corroborating evidence of what Daneshvar disclosed to Kipke was his notebook, an email sent to Kipke on June 21, and the transcription of his conversation with Kipke on July 7. The disclosures made in that evidence were limited and only contained the idea of the "bending of a neural probe using a conductive polymer actuator."
Of the 41 total claims of the ’894 patent, Daneshvar alleged that he contributed to claims 1, 2, 5-7, 14-18, and 41. Claim 1 is a three dimensional supporting member to which an electrode array is attached and described the electrodes as on a rigid cylinder portion. According to the court, Daneshvar’s notes, which describe an arrangement in which the electrodes are on a bendable portion, are at odds with the claim’s description. Daneshvar’s notes also depict a probe with electrodes on only one side, whereas the patent specifications make clear that the electrode array surrounds the cylindrical carrier. Claim 1 details the circumferential arrangement of the electrodes on the carrier. However, Daneshvar’s notes do not provide for the specific number or placement of the electrodes. Thus, Daneshvar’s notes preclude the three dimensional array described in claim 1.
Daneshvar’s contention that he contributed to claims 2, 5-7, and 14-18 was rejected. The court noted that those claims were subsidiary to claim 1. Each of the claims merely emphasizes a particularity of the underlying claim and none touches on a technology or method mentioned in Daneshvar’s corroborating evidence.
Daneshvar’s assertion that he was a co-inventor of claim 41 also was rejected. The claim was almost identical to claim 1, describing an "electrode lead for implantation into body tissue" and consisted of five subparts which track the language of claim 1. Daneshvar did not show corroborating evidence to support his argument that he contributed to the joint arrival of a definite, permanent idea in claim 41, the court concluded.
The case is No. 2:13-cv-13096-SJM-APP.
Attorneys: James M. Pelland (Fausone Bohn, LLP) for Eugene D. Daneshvar. James R. Muldoon (Harris Beach PLLC) for Daryl R. Kipke and NeuroNexus Technologies, Inc.
Companies: NeuroNexus Technologies, Inc.
MainStory: TopStory Patent MichiganNews
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