Berish Rubin and Sylvia L. Anderson v. the General Hospital Corporation

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
BERISH RUBIN AND SYLVIA L. ANDERSON,
Plaintiffs-Appellants,
v.
THE GENERAL HOSPITAL CORPORATION,
Defendant-Appellee.
______________________
2011-1439
______________________
Appeal from the United States District Court for the
District of Massachusetts in No. 09-CV-10040, Judge
Denise J. Casper.
______________________
Decided: March 28, 2013
______________________
P ETER I. BERNSTEIN, Scully Scott Murphy & Presser,
PC, of Garden City, New York, argued for plaintiffs-
appellants. With him on the brief was RICHARD L.
CATANIA .
BRIAN M. G AFF , Edwards Wildman Palmer, LLP, of
Boston, Massachusetts, argued for defendant-appellee.
With him on the brief were P ETER J. CUOMO and MELISSA

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RUBIN v. GENERAL HOSPITAL CORP 2
HUNTER-E NSOR. Of counsel on the brief was P AUL G.
CUSHING, Partners Healthcare of Boston, Massachusetts.
______________________
Before N EWMAN, BRYSON, Circuit Judges,* and F OGEL ,
District Judge.**
N EWMAN, Circuit Judge.
This appeal is from the summary judgment of the
United States District Court for the District of Massachu-
setts. The plaintiffs, Dr. Berish Y. Rubin and Dr. Sylvia
L. Anderson, brought suit against The General Hospital
Corporation (herein MGH), requesting correction of
inventorship under 35 U.S.C. §256 of two patents as-
signed to MGH, or alternatively to invalidate the patents
under 35 U.S.C. §102(f). The dispute arose from the
allegedly improper communication to the named MGH
inventors, Dr. James F. Gusella and Dr. Susan A.
Slaugenhaupt, of a manuscript or the abstract thereof of a
scientific article that Drs. Rubin and Anderson had sub-
mitted to the American Journal of Human Genetics for
publication. The complaint states that the named inven-
tors used this still confidential scientific information to
complete the inventions described and claimed in the
MGH patents. The district court granted summary
judgment that remedy under §256 is not available, rea-
soning that these separate teams of scientists did not
have a collaborative relationship and therefore could not
* Circuit Judge Bryson assumed senior status
on January 7, 2013.
** Honorable Jeremy Fogel, United States Dis-
trict Court for the Northern District of California, by
designation.

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RUBIN v. GENERAL HOSPITAL CORP 3
be joint or substitute inventors of the MGH patents.1 The
district court previously dismissed the count under §102(f)
as “duplicative” of the §256 counts.
On the record provided, we agree with the district
court that resolution of the entirety of the dispute as set
forth in the counts under §256 and §102(f) devolves to a
question of priority of invention. The district court pro-
posed that priority should be resolved in accordance with
the “interference” procedure in the Patent and Trademark
Office, the court having ascertained that such procedure
remains available to these disputants. We conclude that
the district court acted within its authority in directing
the parties to the PTO for this purpose. On this basis the
judgment of dismissal is affirmed, without prejudice to
the right of the parties to return to the district court for
any further legal or equitable considerations that may be
warranted.
D ISCUSSION
Drs. Rubin and Anderson at the Department of Bio-
logical Sciences of Fordham University, and Drs.
Slaugenhaupt and Gusella at the Massachusetts General
Hospital, had been conducting research to determine the
genetic mutations that cause the inherited disease Famil-
ial Dysautonomia (FD), also known as Riley-Day Syn-
drome. FD is an autosomal disorder that affects the
development and survival of sensor and sympathetic
neurons, and is manifested in severe afflictions including
cardiovascular instability, gastrointestinal dysfunction,
recurrent pneumonias, vomiting crises, and decreased
sensitivity to pain and temperature. There is no known
cure. Identifying the genetic cause can enable detection of
carriers and prenatal diagnosis, and aid in the develop-
1 Rubin v. General Hosp. Corp., No. 09-cv-
10040, 2011 U.S. Dist. LEXIS 45859 (D. Mass. Apr. 28,
2011) (“S.J. Op.”).

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RUBIN v. GENERAL HOSPITAL CORP 4
ment of therapeutic approaches.
Drs. Rubin and Anderson identified the two genetic
mutations causative of FD, called the “major” and “minor”
mutations. The record states that on December 20, 2000
they submitted the manuscript of an article entitled
“Familial Dysautonomia Is Caused By Mutations of the
IKAP Gene” to the Editor of the American Journal of
Human Genetics. The article identified the operative
mutations and their location in the region of the IKAP
gene encoding a protein called IkB kinase complex-
associated protein. Dr. Rubin wrote to Dr. Stephen
Warren, the Editor of the Journal, and identified four
scientists whom the authors believed to be qualified to
peer-review the article; the scientists were at Cornell
University, the University of California, Baylor Universi-
ty, and Sloan Kettering Institute. Dr. Rubin asked that
Dr. Gusella and his colleagues at MGH not receive the
article for peer-review because they were working compet-
itively on the same problem. Letter dated Dec. 20, 2000
(“[W]e ask that our manuscript not be sent to these indi-
viduals for review.”). On December 22, 2000, Dr. Warren
sent the Abstract to Dr. Gusella. Dr. Warren testified:
Plaintiff’s counsel: So in the face of Dr. Rubin’s—
let me understand this. In the face of Dr. Rubin’s
request that you not share his information with
Dr. Gusella, in particular, you sent him the ab-
stract in the first instance on the same day as you
sent it to all the other reviewers, and then subse-
quently shared information about his paper with
Dr. Gusella; is that correct?
Defendant’s counsel: Objection.
Dr. Warren: Correct.
Warren Depo. Tr. 109, ll.7-16.
Dr. Gusella declined to review the Rubin/Anderson ar-
ticle. On December 28, 2000, a manuscript authored by

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RUBIN v. GENERAL HOSPITAL CORP 5
Drs. Gusella and Slaugenhaupt was sent to Dr. Warren,
identifying the same major and minor FD mutations.
Both the Rubin/Anderson and the Gusella/Slaugenhaupt
articles were published in the January 22, 2001 edition of
the American Journal of Human Genetics.
On January 6, 2001, Drs. Gusella and Slaugenhaupt
filed Provisional Patent Application No. 60/260,080 de-
scribing these FD mutations and claiming their diagnostic
use. On January 17, 2001, Drs. Rubin and Anderson
(with a third inventor) filed Provisional Patent Applica-
tion No. 60/262,284 describing these FD mutations and
claiming their diagnostic use. The patents in suit issued
to Drs. Gusella and Slaugenhaupt, assigned to MGH: U.S.
Patent No. 7,388,093 entitled “Gene For Identifying
Individuals with Familial Dysautonomia” issued June 17,
2008; and divisional Patent No. 7,407,756 entitled “Meth-
ods for Detecting Mutations Associated With Familial
Dysautonomia,” issued August 5, 2008. The record states
that Drs. Rubin and Anderson declined to take the steps
to initiate an interference in the Patent and Trademark
Office, although the patent examiner so suggested.
The plaintiffs argue that Dr. Gusella’s receipt of their
abstract permitted the MGH scientists to select and
confirm the identity of the FD mutations and file the
MGH provisional patent application. Invoking 35 U.S.C.
§256, Drs. Rubin and Anderson request that they be
substituted as the inventors of the patents in suit (Count
I of the complaint), or added as joint inventors (Count II
of the complaint).
§256 Correction of named inventor. Whenever
through error a person is named in an issued pa-
tent as the inventor, or through error an inventor
is not named in an issued patent and such error
arose without any deceptive intent on his part, the
Director may, on application of all the parties and
assignees, with proof of the facts and such other

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RUBIN v. GENERAL HOSPITAL CORP 6
requirements as may be imposed, issue a certifi-
cate correcting such error.
. . . The court before which such matter is called
in question may order correction of the patent . . .
.
The plaintiffs state that the evidence shows that the
Gusella/Slaugenhaupt team had found “a multitude of
mutations” as “hundreds of single nucleotide polymor-
phisms, including a T to C base change in the IKAP gene,”
and that although the multitude included the correct
major and minor mutations, Drs. Gusella and Slaugen-
haupt had not yet identified and confirmed the operative
mutations. The district court summarized the plaintiffs’
position as follows:
Counsel for Drs. Rubin and Anderson argued that
the transmission of the Abstract, standing alone,
amounts to collaboration. Specifically, counsel ar-
gued that Drs. Rubin and Anderson identified the
mutations claimed in the two patents in the Ab-
stract inadvertently transmitted to Dr. Gusella
and that Dr. Gusella was able to identify the mu-
tations only after he reviewed Dr. Rubin’s Ab-
stract which then allowed the MGH scientists to
complete and file their patent application.
S.J. Op., at *19–20.
The district court held, granting MGH’s motion for
summary judgment, that the inventorship could not be
changed under §256 because there was no “collaboration”
between these teams of scientists. The court held that
Drs. Rubin and Anderson could not be added as joint
inventors of these patents, as requested in Count II,
because they did not meet the requirements of §116 for
joint invention. And the court held that the complete
substitution of inventorship, as requested in Count I, is
not a matter of correction of inventorship under §256, but

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RUBIN v. GENERAL HOSPITAL CORP 7
a claim for priority of invention of the subject matter. The
court held that priority cannot be resolved under §256,
but should be resolved by the PTO “interference” proce-
dure of §135.
Drs. Rubin and Anderson argue that joint invention
can arise in a variety of ways other than by direct collabo-
ration. The plaintiffs cite Kimberly-Clark Corp. v. The
Proctor & Gamble Distrib. Co., 973 F.2d 911 (Fed. Cir.
1992), where this court held that joint invention can occur
in situations where there is not direct collaboration or
joint activity, giving the example of “one inventor seeing a
relevant report and building upon it.” Id. at 917. The
plaintiffs argue that the receipt by Drs. Gusella and
Slaugenhaupt of the confidential knowledge of the correct
mutations, although the receipt was inadvertent on their
part, allowed Drs. Gusella and Slaugenhaupt to finally
identify the operative FD mutations from among the
many mutations that they had found in samples of blood
from FD patients. The plaintiffs state that this suffices to
meet the standard for joint invention as set forth in
Kimberly-Clark.
The plaintiffs state that the district court improperly
granted adverse summary judgment by resolving disputed
material facts in favor of the movant MGH, and that the
court incorrectly applied the law. The plaintiffs stress the
several admissions by Drs. Gusella and Slaugenhaupt
that they had not identified the operative mutations. For
example, in the published Abstract for a scientific presen-
tation at a meeting of the American Society of Human
Genetics in Philadelphia on October 3–7, 2000, Dr. Gusel-
la wrote:
To date, 184 DNA sequence differences between
the control and FD sequence have been identified.
We are currently assessing these DNA changes in
FD and control individuals to determine which of
these may be the pathogenic FD mutation.

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RUBIN v. GENERAL HOSPITAL CORP 8
Program Nr: 990 from the 2000 ASHG Annual Meeting.
The record in the district court and on this appeal con-
tains the minutes of monthly meetings of the Dysautono-
mia Foundation reporting statements from the MGH
scientists, as late as December 12, 2000, that the muta-
tions had not yet been found. Although the district court
states in its opinion that the MGH scientists had previ-
ously identified the operative mutations, the contrary
statements by the MGH inventors were not mentioned by
the court in granting summary judgment in favor of
MGH.
We conclude that the district court correctly ruled
that the independent relationship between these teams of
scientists, and the nature of this communication of infor-
mation, do not support joint invention in accordance with
§116, or warrant change or substitution of inventorship
under §256. Although §256 is a general remedial statute,
the district court correctly held that the record does not
support “correcting” the named inventorship of the MGH
patents.
We agree with the district court that, whatever ac-
tions were taken after the Rubin/Anderson Abstract
appeared uninvited on Dr. Gusella’s desk, ultimately the
dispute is of priority of invention; that is, which team was
the first to conclusively identify the operative mutations.
The district court recognized that even if Drs. Gusella and
Slaugenhaupt had completed this identification before
they saw the Rubin/Anderson identification, it would still
be necessary to determine priority of invention in order to
resolve the patent rights. The district court did not err in
ruling that the issue of priority is appropriately deter-
mined by PTO procedures.
The district court’s dismissal, in contemplation of de-
termination by the PTO of priority of invention, is af-
firmed.
AFFIRMED

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