Olusegun Falana v. Kent State University and Alexander J. Seed

United States Court of Appeals
for the Federal Circuit
__________________________
OLUSEGUN FALANA,
Plaintiff-Appellee,
v.
KENT STATE UNIVERSITY
AND ALEXANDER J. SEED,
Defendants-Appellants.
__________________________
2011-1198
__________________________
Appeal from the United States District Court for the
Northern District of Ohio in case no. 08-CV-0720, Senior
Judge David D. Dowd, Jr.
__________________________
Decided: January 23, 2012
__________________________
BRUCE H. WILSON , of Akron, Ohio, argued for plain-
tiff-appellee.
R. ERIC G AUM, Hahn Loeser & Parks, LLP, of Cleve-
land, Ohio, argued for defendants-appellants. With him
on the brief were STEVEN J. M INTZ and SCOTT M. O LDHAM .
__________________________

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FALANA v. KENT STATE UNIV 2
Before LINN , PROST, and REYNA , Circuit Judges.
LINN , Circuit Judge.
Dr. Olusegun Falana (“Falana”) filed a complaint with
the U.S. District Court for the Northern District of Ohio
against Kent State University (“Kent State”) and the
inventors listed on the face of U.S. Patent No. 6,830,789
(“the ’789 Patent”) seeking correction of inventorship
under 35 U.S.C. § 256. Falana alleged that he was an
omitted co-inventor of the ’789 Patent. Following a bench
trial, the district court agreed with Falana and ordered
the United States Patent and Trademark Office
(“USPTO”) to issue a certificate of correction adding
Falana as a named inventor on the ’789 Patent. The
district court, without the benefit of briefing, also found
the case to be exceptional under 35 U.S.C. § 285 and
awarded attorney fees to Falana. Findings of Fact, Con-
clusions of Law, and Order, Falana v. Kent State Univ.,
No. 08-cv-720 (N.D. Ohio Dec. 15, 2010) (“Opinion”). Kent
State appeals. For the reasons explained below, this
court affirms the district court’s judgment as to inventor-
ship and does not address the district court’s exceptional
case determination and attorney fees award, which are
not properly before us.
I. BACKGROUND
Kent Displays, Inc. (“KDI”) is a privately owned cor-
poration that was established in 1993 as a spin-off tech-
nology company from Kent State. KDI designs and
manufactures liquid crystal displays (“LCDs”) used in
electronic devices, such as cell phones, digital cameras,
and e-books. In 1997, KDI started a research program to
develop chiral additives. Chiral additives are chemical
compounds that can be used to improve the performance
characteristics of LCDs, such as the display’s color, con-
trast, and brightness. One of the goals of the project was
to develop a proprietary chiral additive so that KDI could

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FALANA v. KENT STATE UNIV 3
obtain its own patents and avoid having to obtain licenses
to other patents in the field.
Dr. Joseph Doane (“Doane”), Chief Science Officer of
KDI, hired Dr. Alexander Seed (“Seed”), an Associate
Professor at Kent State, to work on this project for KDI.
Seed was hired to synthesize and develop chiral additives
for KDI. Doane and Seed sought to develop a tempera-
ture independent, high helical twisting power chiral
additive. Temperature independence is an important
characteristic for portable LCDs, which must be operable
over a wide range of temperatures.
Due to other constraints on his time, Seed quickly
found that he was personally unable to pursue the labora-
tory research required by the KDI project. In September
1997, Seed placed an advertisement in a trade magazine
seeking a post-doctoral researcher to synthesize chiral
organic molecules for the KDI research project. Seed
selected Falana, who had received his Ph.D. in chemistry
from Brandeis University, to start the advertised position
on January 1, 1998. Both Seed and Falana were listed as
“Co-Research Institution Investigators” on grant applica-
tions filed with the National Science Foundation.
Seed expected Falana to work independently and to
have ideas of his own while working on the KDI project.
Seed, Falana, and Doane were physically located in Kent,
Ohio and regularly interacted with each other during the
course of the project. Falana synthesized numerous
compounds while working on the KDI project. In doing
so, Falana synthesized compounds “of his own accord” and
those suggested by Seed. These compounds were then
tested by Dr. Asad Khan (“Khan”) at KDI to determine
their helical twisting power, solubility in a commercial
liquid host material, and performance over a range of
temperatures. In due course, Khan reported the outcomes
of these tests to Seed, Falana, and Doane and the out-

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FALANA v. KENT STATE UNIV 4
comes were used to direct future experiments. Dr. Seed
described the interaction between Seed, Falana, and
Doane as “very much a team process.”
In March 1999, while conducting research for the KDI
project, Falana developed a synthesis protocol (“Synthesis
Protocol”) for making a novel class, or “genus,” of chemical
compounds: naphthyl substituted TADDOLs. Naphthyl
substituted TADDOLs differ from the general class of
TADDOLs in that they include a substituted naphthyl
aryl group, rather than a phenyl, substituted phenyl, or
naphthyl aryl group. Using this protocol, Falana synthe-
sized a compound within this genus that was designated
“Compound 7.” Compound 7 was an “SS” enantiomer.
“SS” and “RR” enantiomers are chemical compounds with
molecular structures having mirror-image relationships to
one another; RR and SS enantiomers are identical except
for the direction of the molecule’s helical twist. Falana’s
Synthesis Protocol could be used, and was used, to syn-
thesize both RR and SS enantiomers. After testing,
Compound 7 was found to exhibit substantial tempera-
ture independence between -20 and +30 degrees Celsius,
but did not exhibit temperature independence outside of
that range. Thus, for purposes of the research project,
Compound 7 was a “great improvement” and represented
“significant progress,” but did not completely satisfy the
goals of the project.
In April 1999, Doane authored a letter to the Immi-
gration and Naturalization Service in support of Falana’s
immigration status. In this letter, Doane described
Falana as “the sole organic chemist responsible for the
synthesis of the chiral materials” and stated that “his
outstanding performance led to a patent we are currently
preparing and a proposal we have submitted to [the
National Science Foundation].” In September 1999,
Falana resigned from KDI and Kent State to take another
position.

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FALANA v. KENT STATE UNIV 5
In early 2000, Seed synthesized a compound desig-
nated Compound 9. Like Compound 7, Compound 9 was
a naphthyl substituted TADDOL synthesized using
Falana’s Synthesis Protocol. Unlike Compound 7, how-
ever, Compound 9 was an RR enantiomer. Additionally,
Compound 9 exhibited substantial temperature inde-
pendence between -20 and +70 degrees Celsius and,
therefore, satisfied the goals of the project.
On June 9, 2000, KDI and Kent State filed the provi-
sional application that led to the ’789 Patent. The inven-
tors listed on the face of the ’789 Patent include Doane,
Khan, and Seed. Afterwards, Doane, Khan, Seed, and
Falana jointly authored a publication entitled “High
Twisting Power Chiral Materials for Cholesteric Displays”
which describes the research project and includes a dis-
cussion of the Synthesis Protocol, Compound 7, and
Compound 9. The ’789 Patent issued on December 14,
2001. Claim 1 of the ’789 Patent recites:
1. An optically active compound of the formula:
where the R2 and R3 groups are a lower alkyl
group or an aryl or biaryl unit while the R1
groups independently each are a hydroxyl,
alkoxyl, aryloxy, or arylalkoxy group, the R
groups each represent a group as follows:
A1 —[—Z—]q—A2 —

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FALANA v. KENT STATE UNIV 6
where A1 is an aromatic group, an acyclic aliphatic
group, or an alicyclic group, and A1 can be a
substituted or unsubstituted, Z is a group se-
lected from —O—, —OCO—, or —S—, and the
coefficient q is 0 or 1 or Z is (CH 2 )nO where the
coefficient n is 0 to 5 and the coefficient q is 1,
and A2 is a bivalent radical of a naphthalene
group, and the cyclic structure of A2 , or A1 if it
is cyclic, can be heterocyclic.
The patent specification discloses the Synthesis Protocol
developed by Falana as the protocol utilized to synthesize
the claimed class of chiral compounds.
After the ’789 Patent issued, Falana learned that he
was not listed as an inventor and asked Doane why he
was not included. After receiving an unsatisfactory
response from Doane, Falana filed the present § 256
action against Kent State, KDI, Seed, Doane, and Khan to
correct the inventorship of the ’789 Patent. On June 23,
2008, Doane and Khan filed signed statements with the
court that “[they] have no disagreement with the addition
of Olusegun Falana as a named co-inventor of the [’789
Patent]” and that “this statement may be filed with the
USPTO to request correction of inventorship of [the ’789
Patent] to add Olusegun Falana as a co-inventor.” At
trial, Doane and Khan explained that they signed the
statement not because they thought, as scientists, that
Dr. Falana actually had been a joint inventor, but instead
because they wanted out of the lawsuit. Accordingly,
Doane, Khan, and KDI moved to dismiss themselves from
the case, and the district court granted their motion.
Thus, the only remaining defendants were Kent State and
Seed (collectively, “the Defendants”).
The Defendants urged the district court to construe
each claim of the ’789 Patent to require an RR enantiomer
that provides a substantially temperature independent

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FALANA v. KENT STATE UNIV 7
helical twisting power (“HTP”), wherein “substantially
temperature independent HTP” is further defined as
having a maximum change in peak reflection of 30 mm or
less across a temperature range of +10°C to +50°C.
Opinion at 34. The district court noted that, while the
patent contains thirty claims, the parties only focused on
claims 1 and 25. Id. While the district court construed
claims 1 and 25 to require an RR enantiomer, the district
court refused to read limitations into claims 1 and 25
concerning a substantially temperature independent
HTP. Id. at 35-36.
After a bench trial, the district court concluded that
Falana contributed to the conception of the claimed
invention by, inter alia, the development of the Synthesis
Protocol. Opinion at 37. Additionally, and without brief-
ing from either party, the district court ruled the case to
be exceptional and awarded attorney fees. Opinion at 40-
44. The district court’s determination that the case was
exceptional was premised upon findings that the Defen-
dants engaged in inequitable conduct, that the defense
was objectively baseless, and that the “testimony of
defendants’ witnesses was not credible and of question-
able veracity.” Opinion at 41-42. The court then awarded
attorney fees, but did not determine the amount. Id. at
44. The Defendants timely appealed and this court has
jurisdiction under 28 U.S.C. § 1295(a)(1).
II. D ISCUSSION
On appeal, the Defendants contend that the district
court erred in its claim construction. They also contend
that the district court abused its discretion in excluding
certain exhibits. Additionally, the Defendants argue that
the district court erred in concluding that Falana was an
omitted joint-inventor on the ’789 Patent. Finally, the
Defendants argue that the district court erred in finding

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FALANA v. KENT STATE UNIV 8
the case exceptional and awarding attorney fees to Fa-
lana. Each issue is addressed in turn.
A. Claim Construction
A district court’s claim construction is reviewed de
novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,
1454-56 (Fed. Cir. 1998) (en banc).
The Defendants argue on appeal that the district
court erred by not limiting the claims to an optically
active compound “having a substantially temperature
independent [HTP].” According to the Defendants, “the
district court held that because the claims did not include
terms regarding temperature independent [HTP], the
claims did not include the limitation.” Quoting this
court’s decision in Alloc, Inc. v. International Trade Com-
mission, 342 F.3d 1361, 1370 (Fed. Cir. 2003), the Defen-
dants assert that when “the specification makes clear at
various points that the claimed invention is narrower
than the claim language might imply, it is entirely per-
missible and proper to limit the claims.” The Defendants
contend that the specification describes the inventive
compounds as possessing a HTP that is substantially
independent of temperature and that, without this limita-
tion, the claimed compounds “would be commercially
worthless.”
Falana responds that the plain language of the claims
nowhere suggests a limitation regarding temperature
independent HTP, let alone a temperature independent
HTP across the specific range of +10°C to +50°C. Further,
Falana references portions of the specification which
suggest that HTP relative to temperature is simply a
modifiable characteristic of the inventive class of com-
pounds. Finally, Falana contends that, although the
preferred embodiment may exhibit a temperature inde-
pendent HTP, the only reasonable conclusion is that the

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FALANA v. KENT STATE UNIV 9
patentee meant to claim the entire class of compounds
covered by the plain language of the claims.
This court agrees with Falana. “[I]t is the claims, not
the written description, which define the scope of the
patent right.” Laitram Corp. v. NEC Corp., 163 F.3d
1342, 1347 (Fed. Cir. 1998) (“[A] court may not import
limitations from the written description into the claims.”).
The claims here do not contain express limitations con-
cerning a HTP that is substantially independent of tem-
perature. Moreover, this court has “cautioned against
limiting the claimed invention to preferred embodiments
or specific examples in the specification.” See Teleflex,
Inc. v. Focosa N. Am. Corp., 299 F.3d 1313, 1327-28 (Fed.
Cir. 2002). Here, there is no suggestion in the intrinsic
record that the applicant intended the claims to have the
limited scope suggested by the Defendants. “Absent such
clear statements of scope, we are constrained to follow the
language of the claims, rather than that of the written
description.” Id. at 1328.
Alloc, relied upon by the Defendants, is distinguish-
able. In Alloc, this court concluded that, despite the plain
language of the claims, each claim contained a limitation
of “play” because the specification as a whole “[led] to the
inescapable conclusion that the claimed invention must
include play in every embodiment.” Alloc, 342 F.3d at
1370. Unlike in Alloc, where the specification defined the
invention as requiring “play” and the applicant empha-
sized the criticality of “play” during prosecution and
distinguished the prior art on that basis, the specification
here suggests that the temperature dependence of the
HTP is a modifiable characteristic of the claimed com-
pounds and the prosecution history is silent. See, e.g.,
’789 Patent col.3 ll.52-57 (“In some cases it would be
desirable if the temperature dependence of the cholesteric
display could be tailored by the addition of a second
additive . . . .” (emphasis added)); id. col.4 ll.18-21 (“The

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FALANA v. KENT STATE UNIV 10
R, R1 , R2 , and R3 substitutions on the molecule of general
formula I control the temperature dependence of the
twisting power in the nematic host mixture . . . .” (empha-
sis added)); cf. Alloc, 342 F.3d at 1370-73.
For these reasons, this court concludes that the dis-
trict court did not err in construing the language of the
claims.
B. Exclusion of Evidence
The admission of evidence is a procedural question
that is controlled by regional circuit law. Micro Chem.,
Inc. v. Lextron, Inc., 317 F.3d 1387, 1390-91 (Fed. Cir.
2003). In the Sixth Circuit, a district court’s decision to
admit or exclude evidence is reviewed for abuse of discre-
tion. United States v. Geisen, 612 F.3d 471, 495 (6th Cir.
2010). A district court abuses its discretion in this regard
when it bases its decision on errors of law or clearly
erroneous factual determinations. Id. Moreover,
even if the lower court’s decision amounts to an
abuse of discretion, it will not be disturbed on ap-
peal if it did not result in a substantial injustice,
as no error in the admission or exclusion of evi-
dence is ground for reversal or granting a new
trial unless refusal to take such action appears to
the court to be inconsistent with substantial jus-
tice.
Zamlen v. City of Cleveland, 906 F.2d 209, 216 (6th Cir.
1990) (quotation omitted).
Here, the district court sustained Falana’s objection to
the admission of the Defendants’ exhibits CCCC and
DDDD. Exhibit CCCC was a United Kingdom patent
application (“U.K. Patent”) filed in 1991 by Seed and
others. Exhibit DDDD was a scientific article published
in 2000 by Dr. Seed and others. The Defendants offered

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FALANA v. KENT STATE UNIV 11
these documents to allegedly show that the Synthesis
Protocol was in the prior art and was in fact known to
Seed prior to his work with Falana. Despite not admit-
ting these exhibits into evidence, the district court did
permit Seed to comment on them, explain how they
represented his earlier work, and note that the U.K.
Patent disclosed the method for preparing the first re-
agent material used by Seed in preparing Compound 9.
The Defendants argue that the district court errone-
ously excluded exhibits CCCC and DDDD and that had
this evidence been considered, it would have shown that
Falana’s Synthesis Protocol was already known in the art.
Appellant’s Br. 31-39. Falana responds that the Defen-
dants have failed to establish that the district court
abused its discretion in excluding these exhibits. More-
over, Falana contends that Seed never testified that these
exhibits mentioned TADDOLs let alone the complete
Synthesis Protocol developed by Falana. Appellee’s Br.
24. Thus, Falana asserts that even if the district court
abused its discretion, any error was harmless. Id. at 26-
27.
This court finds no basis to upset the district court’s
evidentiary ruling. Although the district court may have
erred in excluding these exhibits without providing any
explanation, any such error in this case was harmless.
The Defendants sought to admit these exhibits not to
demonstrate that the entire Synthesis Protocol was
known in the art, but only to show that certain portions of
the Synthesis Protocol were known. The district court did
permit Seed the opportunity to explain the portions of the
Synthesis Protocol that were known in the art and thus
these exhibits would have been cumulative of his testi-
mony. Accordingly, this court is unable to conclude that
the error in the exclusion of exhibits CCCC and DDDD
resulted in substantial injustice. Zamlen, 906 F.2d at
216.

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FALANA v. KENT STATE UNIV 12
C. Joint Inventorship
“Inventorship is a question of law that we review
without deference.” Vanderbilt Univ. v. ICOS Corp., 601
F.3d 1297, 1303 (Fed. Cir. 2010). “We review the [district
court’s] underlying findings of fact for clear error.” Id.
“Because the issuance of a patent creates a presumption
that the named inventors are the true and only inventors,
the burden of showing misjoinder or nonjoinder of inven-
tors is a heavy one and must be proved by clear and
convincing evidence.” Bd. of Educ. v. Am. BioSci., Inc.,
333 F.3d 1330, 1337 (Fed. Cir. 2003) (citations ommited).
“A joint invention is the product of a collaboration be-
tween two or more persons working together to solve the
problem addressed.” Burroughs Wellcome Co. v. Barr
Labs., Inc., 40 F.3d 1223, 1227 (Fed. Cir. 1994). People
may be joint inventors even though they do not physically
work on the invention together or at the same time, and
even though each does not make the same type or amount
of contribution. 35 U.S.C. § 116.
“Thus, the critical question for joint conception is who
conceived, as that term is used in the patent law, the
subject matter of the claims at issue.” Ethicon, Inc. v.
U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998).
“A contribution to one claim is enough.” Id. “The statute
does not set forth the minimum quality or quantity of
contribution required for joint inventorship.” Burroughs,
40 F.3d at 1227. Each joint inventor, however, “must
contribute in some significant manner to the conception of
the invention.” Fina Oil & Chem. Co. v. Ewen, 123 F.3d
1466, 1473 (Fed. Cir. 1997). Conception of a chemical
compound “requires knowledge of both the specific chemi-
cal structure of the compound and an operative method of
making it.” Id.

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FALANA v. KENT STATE UNIV 13
The district court issued extensive findings of fact and
concluded that Falana’s contribution of the Synthesis
Protocol was sufficient contribution to the conception of
the claimed invention as to render him a joint inventor on
the patent.
The Defendants do not challenge any of the district
court’s findings of fact, but instead, only challenge the
district court’s legal determination that Falana was a
joint inventor. Specifically, the Defendants contend that
even if Falana contributed the Synthesis Protocol method,
that contribution is insufficient to make him a co-inventor
of the claims of the ’789 Patent, which are all directed to
chemical compositions and not methods. The Defendants
also contend that Falana synthesized Compound 7, not
Compound 9, and that Compound 7 does not fall within
the scope of the claims.
Falana responds that he was the one who developed
the Synthesis Protocol, which made it possible to make a
previously-unknown genus of compounds, to wit, naphthyl
substituted TADDOLs. This was the method used by
Falana to synthesize Compound 7, the method used by
Seed to synthesize Compound 9, and the only method
disclosed in the ’789 Patent for making the claimed com-
pounds. Finally, Falana contends that because he con-
tributed the method of making the novel class of
compounds claimed in the ’789 Patent, his contribution to
conception was sufficient to make him a joint inventor.
The question before this court is whether a putative
inventor who envisioned the structure of a novel chemical
compound and contributed to the method of making that
compound is a joint inventor of a claim covering that
compound.
The Defendants assert that American BioScience
compels the answer “no” to the question before us. The

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FALANA v. KENT STATE UNIV 14
Defendants contend that American Bioscience held that a
putative inventor’s contribution of a method for making
chemical compounds is legally irrelevant to whether he is
a joint inventor on a patent that “does not claim any
method of making those compounds.” Appellant’s Br. 28
(quoting Am. BioSci., 333 F.3d at 1341). This reading of
American Bioscience is erroneous and the facts of this
case are manifestly distinct. See Fina, 123 F.3d at 1473
(“The determination of whether a person is a joint inven-
tor is fact specific and no bright-line standard will suffice
in every case.”).
In American Bioscience, the court was faced with
choosing between two competing groups of inventors. Am.
BioSci., 333 F.3d at 1340; see also Vanderbilt University,
601 F.3d at 1306. The passage quoted by the Defendants
concerns whether Nadizadeh, a putative co-inventor and
scientist for FSU, was a joint inventor on the patent when
Tao, named co-inventor and a scientist for ABI, allegedly
used Nadizadeh’s “secret” method to make the claimed
compounds. Am. BioSci., 333 F.3d at 1341. There was no
indication, however, that Nadizadeh’s secret method
actually made any of the claimed compounds and thus he
did not directly contribute to the conception of any of the
claimed compounds. Id. Even if Nadizadeh developed a
method of making similar compounds, it was of no conse-
quence because neither that method nor those similar
compounds themselves were claimed in the patent. Id. at
1342. Indeed, “Nadizadeh neither made the claimed
compounds nor attempted to make them, and he did not
have a firm and definite idea of the claimed combination
as a whole.” Id. (emphasis added). Thus, the court con-
cluded that simply “teaching skills or general methods
that somehow facilitate a later invention, without more,
does not render one a co[-]inventor.” Id. (emphasis
added).

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FALANA v. KENT STATE UNIV 15
American Bioscience did not hold that a putative in-
ventor’s contribution of the method for making a novel
genus of claimed compounds is irrelevant on the question
of inventorship of the patent. As explained above, the
conception of a chemical compound necessarily requires
knowledge of a method for making that compound. Fina,
123 F.3d at 1473. In some circumstances, the method of
making a compound will require nothing more than the
use of ordinary skill in the art. In those circumstances,
the contribution of that method would simply be “[t]he
basic exercise of the normal skill expected of one skilled in
the art” and would not normally be a sufficient contribu-
tion to amount to an act of joint inventorship. Id. (citing
Sewall v. Walters, 21 F.3d 441, 416 (Fed. Cir. 1994)); cf.
Oka v. Youssefyeh, 849 F.2d 581, 583 (Fed. Cir. 1988)
(stating in the interference context that “[w]hen . . . a
method of making a compound with conventional tech-
niques is a matter of routine knowledge among those
skilled in the art, a compound has been deemed to have
been conceived when it was described, and the question of
whether the conceiver was in possession of a method of
making it is simply not raised”).
Where the method requires more than the exercise of
ordinary skill, however, the discovery of that method is as
much a contribution to the compound as the discovery of
the compound itself. This case is simply the application of
the well-known principle that conception of a compound
requires knowledge of both the chemical structure of the
compound and an operative method of making it. Accord-
ingly, this court holds that a putative inventor who envi-
sioned the structure of a novel genus of chemical
compounds and contributes the method of making that
genus contributes to the conception of that genus. This
holding does not mean that such an inventor necessarily
has a right to claim inventorship of all species within that
genus which are discovered in the future. Once the
method of making the novel genus of compounds becomes

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FALANA v. KENT STATE UNIV 16
public knowledge, it is then assimilated into the store-
house of knowledge that comprises ordinary skill in the
art. Additionally, joint inventorship arises only “when
collaboration or concerted effort occurs—that is, when the
inventors have some open line of communication during
or in temporal proximity to their inventive efforts.” Eli
Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1359 (Fed.
Cir. 2004).
Here, the district court concluded that Falana’s con-
tribution was greater than the exercise of ordinary skill.
The district court made such a determination based on
the documentary evidence before the court and the testi-
mony of the named inventors themselves. [JA36-37] The
district court was not persuaded by Seed’s testimony that
Falana’s Synthesis Protocol was nothing more than the
basic exercise of ordinary skill because it was simply “old
chemistry.” Instead, the district court “conclude[d] that
the named inventors’ post-lawsuit characterization of the
meaning and accuracy of the contemporaneous physical
evidence against Falana’s joint inventorship [was] not
credible.” Opinion at 37 n.22. The district court found
that Falana developed the Synthesis Protocol to synthe-
size Compound 7, an SS enantiomer. The district court
also found that, contrary to Seed’s testimony, Falana did
not develop the Synthesis Protocol by simply following the
teachings of others. Opinion at 37. Compound 7 is a
species within the genus of naphthyl substituted TAD-
DOLs—a previously unknown genus of chemical com-
pounds. KDI regarded Compound 7, within that genus,
as a “great improvement” because it represented “signifi-
cant progress.” Once Falana left the team, the team
continued researching specific compounds within this
novel genus. Using Falana’s Synthesis Protocol, Seed
synthesized Compound 9, an RR enantiomer within that
genus. Compound 9 was similar to Compound 7, but
exhibited greater temperature independence than that of
Compound 7.

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FALANA v. KENT STATE UNIV 17
Although the Defendants argue that Falana did not
contribute to the conception of Compound 9 because
Compound 9 was first synthesized after Falana left the
team, this argument is inapposite. The claims of the ’789
Patent are not limited to Compound 9. Instead, they
claim a subset of the entire genus of naphthyl substituted
TADDOLs—those which are RR enantiomers. Falana
contributed to the conception of this genus by providing
the team of which he was a part with the method for
making these novel compounds. Falana’s lack of contri-
bution to the discovery of Compound 9 itself does not
negate his contribution of the method used by the other
inventors to make the genus of compounds covered by the
claims at issue.
The district court did not err in concluding that Fa-
lana’s contribution of the method used by the team of
which he was a part for making the claimed compounds
was enough of a contribution to conception to pass the
threshold required for joint inventorship. We therefore
affirm the district court’s determination.
D. Exceptional Case
The district court found this case to be exceptional on
three grounds: “[1] that defendants engaged in inequita-
ble conduct, [2] that they took an untenable position in
defending this case, and [3] that their continued defense
of this case in the face of testimony that lacked credibility
and veracity was frivolous and bordered on bad faith.”
Opinion at 42. The district court then awarded unquanti-
fied attorney fees against the Defendants, leaving the
amount to be determined in further proceedings, which
have yet to be conducted. Order, Falana v. Kent State
Univ., No. 08-cv-720 (N.D. Ohio June 2, 2011), ECF No.
107 (“[T]he Court will defer ruling on plaintiff’s applica-
tion for attorney fees and costs until such time as the

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FALANA v. KENT STATE UNIV 18
Federal Circuit renders its decision in the pending ap-
peal.”).
Falana argues that the district court’s exceptional
case determination is not final because the amount of the
attorney fee award is yet unresolved and is therefore not
reviewable on appeal. Appellee’s Br. 27 (citing Special
Devices, Inc. v. OEA, Inc., 269 F.3d 1340, 1345 (Fed. Cir.
2001)). The Defendants respond that this court has
jurisdiction to review the district court’s exceptional case
finding and that Special Devices is limited to the situation
where the sole issue on appeal is the award of an unquan-
tified amount of attorney fees.
“By its express terms, § 1295(a)(1) requires that the
decision of the district court be ‘final.’” Special Devices,
269 F.3d at 1343. A decision to award attorney fees under
35 U.S.C. § 285 is not final and appealable before the
award has been quantified. Id. This rule “prevents
piecemeal appeals involving 35 U.S.C. § 285—a first
appeal to contest the exceptional finding per se, and a
second appeal to contest the amount of the attorney fees.”
Id.
Here, the district court issued one order—concluding:
(1) that Falana was a joint inventor on the patent; (2) that
the case was exceptional; and (3) that an award of attor-
ney fees was justified. The district court’s decision on the
merits, i.e. its decision on joint inventorship, is final and
reviewable by this court. Budinich v. Becton Dickinson &
Co., 486 U.S. 196, 202-03 (1988) (“[A] decision on the
merits is a ‘final decision’ . . . whether or not there re-
mains for adjudication a request for attorney’s fees at-
tributable to the case.”). But the district court’s
exceptional case determination is a separately appealable
judgment which itself must be final. See White v. N. H.
Dep’t of Emp’t Sec., 455 U.S. 445, 452 (1982) (“Unlike
other judicial relief, . . . attorney’s fees . . . are not com-

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FALANA v. KENT STATE UNIV 19
pensation for the injury giving rise to an action. Their
award is uniquely separable from the cause of action to be
proved at trial.”); McCarter v. Ret. Plan for Dist. Manag-
ers, 540 F.3d 649, 652 (7th Cir. 2008) (“[T]he upshot of
White’s approach is that decisions on the merits and
decisions about attorneys’ fees are treated as separate
final decisions, which must be covered by separate notices
of appeal—each filed after the subject has independently
become ‘final.’”). The district court’s decision finding the
case exceptional and awarding attorney fees that remain
as of yet unquantified is not final and thus, not appeal-
able. Special Devices, 269 F.3d at 1345 (“[A] decision to
award unquantified attorney fees in an exceptional case
under 35 U.S.C. § 285 is not final.”). A non-final decision
does not become final simply because it is issued in the
same order as a final decision.
The Defendants urge this court to exercise pendent
appellate jurisdiction over their appeal of this issue.
Under this theory, a court of appeals, with jurisdiction
over one ruling can review related rulings that are not
themselves appealable. The Defendants argue that this
court should, in the interest of judicial economy, exercise
such jurisdiction in this case. Appellant’s Reply Br. 21-
25.
The Supreme Court, in Swint v. County Chambers
Commission, 514 U.S. 35 (1995), “threw cold water on
pendent appellate jurisdiction.” McCarter, 540 F.3d at
653. In Swint, the Court concluded that pendent appel-
late jurisdiction was incompatible with 28 U.S.C. § 1291,
which limits appeals to “final decisions,” and unnecessary
because Congress has authorized the judiciary to pre-
scribe rules to provide for interlocutory appeals. Swint,
514 U.S. at 48.1 Although the Court did not completely
1 While the decision in Swint was decided in the con-
text of pendent party jurisdiction, the rationale is equally

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FALANA v. KENT STATE UNIV 20
rule out all possibility of pendent appellate jurisdiction, it
did make clear that only the most extraordinary circum-
stances could justify the use of pendent appellate jurisdic-
tion. See id. at 50-51 (“We need not definitively or
preemptively settle here whether or when it may be
proper for a court of appeals, with jurisdiction over one
ruling, to review, conjunctively, related rulings that are
not themselves independently appealable.”). These ex-
traordinary circumstances may be present when the
nonappealable decision is “inextricably intertwined” with
the appealable decision or when review of the nonappeal-
able decision is “necessary to ensure meaningful review”
of the appealable decision. Id. at 51; Gilda Marx, Inc. v.
Wildwood Exercise, Inc., 85 F.3d 675 (D.C. Cir. 1996)
(refusing, post-Swint, “to create a blanket rule absolutely
barring pendent appellate jurisdiction over non-final
attorney’s fee liability orders” but noting that “as a gen-
eral matter,” the review of such orders “will be rare excep-
tions”). Swint held that the Eleventh Circuit erred in
invoking pendent appellate jurisdiction because “judicial
economy” is no warrant for disregarding the statutory
final-decision rule. Swint, 514 U.S. at 43-44, 51.
The Defendants do not, nor from the record could
they, argue that the exceptional case determination and
award of attorney fees are inextricably intertwined with
the determination on the merits or that the exceptional
case determination and award of attorney fees must be
reviewed in order to properly review the decision on the
merits. Were this court to conclude otherwise, every
appeal of a non-final award of attorney fees would neces-
sarily be subject to pendent appellate jurisdiction. See
Gilda Marx, 85 F.3d at 679 (“Early review of attorney’s
fees liability is not likely to terminate the case or obviate
as persuasive to pendent jurisdiction generally. Addi-
tionally, the finality requirement of § 1291 is identical to
that in § 1295.

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FALANA v. KENT STATE UNIV 21
further proceedings either here or in the district court.”).
Even if it was clear in a particular case that a district
court erred, and thus early review would obviate further
proceedings, such conclusion as to this court’s jurisdiction
could not be based upon a post-hoc analysis of the cor-
rectness of the district court’s decision. That result would
be contrary to our precedent and that of our sister cir-
cuits. See Special Devices, 269 F.3d at 1345; see, e.g.,
McCarter, 540 F.3d at 654 (stating, before overruling
Seventh Circuit precedent in conflict with Swint, “as far
as we can see, no decision outside this circuit has invoked
pendent appellate jurisdiction since Swint to entertain an
appeal from an un-quantified award of attorneys’ fees”).
Majorette Toys Inc. v. Darda, Inc., 798 F.2d 1390 (Fed.
Cir. 1986) is also distinguishable from this case. The
appeal in Majorette Toys was based on 28 U.S.C. § 1292.
In that appeal, the Appellants raised issues of validity,
infringement, and attorney fees. Although the attorney
fees had not been quantified, this court concluded that
§ 1292(c)(2), which permits interlocutory appeals from a
judgment of patent infringement that is final “except for
an accounting,” permitted the court to exercise jurisdic-
tion over the appeal even if the award of attorney fees had
not yet been ascertained. Majorette Toys, 798 F.2d at
1391 (“If an appeal in a patent case can come to this
Court under § 1292(c)(2) after validity and infringement
are determined but prior to determining damages, it
makes no sense not to allow an appeal after validity,
infringement, and damages are ascertained, and an
award of attorney fees granted, even though the exact
amount of attorney fees (and costs) has not been precisely
ascertained.”). First, Majorette Toys pre-dates the Su-
preme Court’s decision in Swint. Second, because this is
not an appeal from a judgment of patent infringement,
the interlocutory provision of § 1292(c)(2) does not apply.
See Special Devices, 269 F.3d at 1343 n.2. Instead,
§ 1295, with its finality requirement, provides the court’s

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FALANA v. KENT STATE UNIV 22
jurisdiction over this appeal. Finally, Majorette Toys was
decided in the context of a motion to dismiss an appeal as
non-final simply because the amount of attorney fees and
costs were not finally determined. The Supreme Court, a
few years later, instructed that an otherwise final judg-
ment on the merits does not lose finality simply because
an award of attorney fees has not been quantified.
Budinich, 486 U.S. at 202. To the extent this court in
Majorette Toys suggested it could review the unquantified
fee award, such a suggestion was gratuitous to the resolu-
tion of the motion to dismiss the appeal.
Because the district court’s exceptional case finding
and award of attorney fees are not yet final, they are not
properly before us and will not be addressed, except to
note for the benefit of the district court the persuasive
arguments raised by the Defendants in this appeal.
III. CONCLUSION
The district court’s determination that Falana is a
joint inventor of the ’789 Patent is affirmed.
AFFIRMED
COSTS
Costs are awarded to Falana.

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