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claimed compounds and an operative method of making those compounds.238 Although the court acknowledged that conception of an invention requires disclosure of the method of making it, it held that the inventor of the method could not be a coinventor of the compounds made by his method unless he “conceive[d] of the claimed compounds” himself. 239 The American Bioscience court’s focus on the “claimed compounds” and discounting of the (unclaimed) method of making them is symptomatic of claims fixation. Whether FSU scientists conceived of an entire claimed compound is not the pertinent question; the patented compounds were conceived by at least some of the inventors. The FSU scientists need only have contributed to the conception of the invention in some way; conception of the entire compound by any specific inventor is entirely irrelevant, as long as the research team collectively conceived the claimed compounds. A proper analysis of inventorship would have acknowledged that the contribution of necessary background biological knowledge, useful suggestions for functional groups of the claimed compounds, and techniques for making the compounds, could all qualify the contributors as coinventors if the contributors had collaborated with the VivoRx team and satisfied the three Pannu conditions of coinventorship. Under this analysis, it is possible that some of the FSU scientists would not have qualified as joint inventors. It is also possible that some would have qualified. The court’s repeated distortion of the law of inventorship in the case did considerable mischief on the facts before it, where FSU scientists who may have contributed substantially to the VivoRx inventions were excluded from consideration as joint inventors. In effect, the Federal Circuit sanctioned what may have been the misappropriation of a university’s valuable research, gathered over the course of many years, by a private company that promptly commercialized it for its own benefit and the preemption of any benefit by the university scientists. More troubling still, the decision has had a predictably perverse effect on the development of joint inventorship doctrine. For example, it misled the district court in Vanderbilt University v. ICOS Corp. into concluding that failure of any
238 239
Id. at 1342. Id.