Federal Circuit Rules that the Invention of a Method of Making Chemical Compounds May Be Sufficient Contribution to Qualify for Joint Inventorship of the Compounds

By Charles Pierce

In Falana v. Kent State Univ., 101 USPQ2d 1414 (Fed. Cir. 2012), the Federal Circuit affirmed the district court’s order that Dr. Olusegun Falana (Falana) be added as an inventor to U.S. Patent No. 6,830,789 (the ‘789 patent), and did not address the district court’s award of attorney’s fees to Falana.

Kent Displays, Inc., a private spinoff of Kent State University (collectively, KDI) was attempting to develop proprietary chiral additives with high, temperature independent helical twisting power (HTP) for use in liquid crystal displays.  They hired Dr. Alexander Seed (Seed), who in turn hired Falana.  While working for KDI, Falana developed a synthesis protocol for making naphthyl substituted TADDOLs.  He used his synthesis protocol to create such a TADDOL, which was designated Compound 7.  Compound 7 was found to be significantly temperature independent, and represented significant progress for the project.  Falana left KDI soon after this development. Continue reading

Federal Circuit Rules that the Invention of a Method of Making Chemical Compounds May Be Sufficient Contribution to Qualify for Joint Inventorship of the Compounds

By Charles Pierce

In Falana v. Kent State Univ., 101 USPQ2d 1414 (Fed. Cir. 2012), the Federal Circuit affirmed the district court’s order that Dr. Olusegun Falana (Falana) be added as an inventor to U.S. Patent No. 6,830,789 (the ‘789 patent), and did not address the district court’s award of attorney’s fees to Falana.

Kent Displays, Inc., a private spinoff of Kent State University (collectively, KDI) was attempting to develop proprietary chiral additives with high, temperature independent helical twisting power (HTP) for use in liquid crystal displays.  They hired Dr. Alexander Seed (Seed), who in turn hired Falana.  While working for KDI, Falana developed a synthesis protocol for making naphthyl substituted TADDOLs.  He used his synthesis protocol to create such a TADDOL, which was designated Compound 7.  Compound 7 was found to be significantly temperature independent, and represented significant progress for the project.  Falana left KDI soon after this development. Continue reading