## Facts

- Joany Chou, a graduate student and later post-doctoral researcher at the University of Chicago, worked in Bernard Roizman’s laboratory on an attenuated herpes simplex virus vaccine project.
- The University maintained a royalty-sharing policy under which inventors allegedly receive 25% of gross royalties and certain upfront licensing payments, plus 25% of equity in new companies based on the invention.
- Chou alleged that she informed Roizman her discoveries should be patented, that he discouraged patenting by stating they were not patentable, and that he nonetheless filed patent applications listing himself as an inventor.
- Patents and related applications issued and were assigned to the University; the rights were licensed (including to Aviron), and royalties were paid under the University’s policy.
- Chou alleged she was excluded from the lab in 1996 and then discovered the patents and licensing arrangements, claiming concealment of her inventorship and deprivation of royalty/equity benefits and professional credit.
- Chou sued the University, its technology-transfer entity (Arch), Roizman, and Aviron, asserting a federal claim for correction of inventorship under 35 U.S.C. § 256 and multiple Illinois state-law theories (including fraud, breach of fiduciary duty, unjust enrichment, and contract-based claims).
- The district court dismissed the § 256 claim for lack of standing, dismissed most state-law claims (and struck “academic theft and fraud” allegations), and dismissed all claims against Aviron.

## Issues

1. Whether a putative inventor who has assigned away patent ownership can nonetheless have Article III standing to seek correction of inventorship under 35 U.S.C. § 256 based on alleged royalty-related and reputational interests.
2. Whether the complaint plausibly stated Illinois state-law claims (including fraud, breach of fiduciary duty, unjust enrichment, and implied contract) against Roizman and related claims against the University and Arch.
3. Whether dismissal of all claims against the licensee (Aviron), striking “academic theft and fraud” allegations, and denying reassignment on remand were proper.

## Decision

- Affirmed in part, reversed in part, and remanded.
- Reversed the standing dismissal and held Chou had Article III standing to pursue correction of inventorship under § 256.
- Reversed dismissal of most state-law claims against Roizman and directed reinstatement of certain parallel claims against the University.
- Affirmed dismissal of Chou’s breach of express contract claim against Roizman.
- Affirmed dismissal of all remaining claims against Aviron.
- Affirmed the order striking allegations labeled “academic theft and fraud.”
- Denied the request to reassign the case to a different district judge.

## Legal Principles

- A putative inventor may have standing to sue for correction of inventorship under 35 U.S.C. § 256 without owning the patent, if the plaintiff pleads a concrete injury (economic and/or reputational), traceable to the alleged misattribution, and redressable by correction.
- Alleged contractual entitlement to royalty-sharing or related financial benefits tied to inventorship can constitute a sufficient economic interest for Article III standing in a § 256 action.
- Reputational harm from omission as an inventor may constitute an injury supporting standing in an inventorship-correction claim.
- At the pleading stage, allegations that an academic supervisor misrepresented or concealed patenting activity to appropriate credit and financial returns may support fraud-based, fiduciary-duty, and unjust-enrichment claims under state law.
- A claim framed as an express contract requires allegations of a sufficiently definite promise; conclusory assertions of a personal contractual obligation may be dismissed.
- A licensee’s ordinary participation as a patent rights licensee, absent a pleaded duty or actionable misconduct toward the claimant, may not support state-law liability.
- A court may strike redundant or scandalous allegations under Rule 12(f) when not necessary to the elements of the pleaded claims.

## Conclusion

The Federal Circuit held that Chou plausibly alleged economic and reputational injuries sufficient for standing to seek correction of inventorship under § 256 despite lacking patent ownership, reinstated several state-law claims against Roizman and related claims against the University, but left intact dismissal of the express-contract claim against Roizman, all claims against the licensee, and the order striking scandalous allegations.


Chou v. Univ. of Chi., 254 F.3d 1347 (Fed. Cir. 2001)