## Facts

- Eli Lilly owned a patent covering the insulin analog lispro (Humalog) and employed scientists including Dr. Richard DiMarchi.
- Aradigm owned a patent claiming methods for aerosol (inhaled) administration of insulin, including use of lispro to achieve rapid uptake.
- The companies held several meetings in 1995–1996 to explore a collaboration in which Lilly would contribute insulin expertise and Aradigm would contribute aerosol-delivery technology.
- Lilly alleged its scientists disclosed to Aradigm the advantages of using lispro for pulmonary delivery and that Aradigm then claimed that concept in its patent.
- Lilly sued to (1) correct inventorship under 35 U.S.C. § 256 to add Lilly scientists as joint inventors and (2) obtain state-law relief for contract and unjust enrichment.
- A jury found DiMarchi was a joint inventor of one claim but not another; it found a second Lilly scientist was not a joint inventor.
- The district court ordered correction of inventorship to add DiMarchi, entered judgment for Aradigm on unjust enrichment, and entered judgment for Lilly on contract liability but awarded only nominal damages.

## Issues

1. What burden of proof applies to correction of inventorship of an issued patent under 35 U.S.C. § 256.
2. Whether the evidence (including corroboration) was sufficient to prove DiMarchi’s joint inventorship of the relevant claim(s).
3. Whether Lilly could recover on unjust enrichment given the parties’ dealings.
4. Whether Lilly was entitled to more than nominal damages for breach of contract.

## Decision

- The court reversed the judgment correcting inventorship, holding the evidence was insufficient to prove joint inventorship under the applicable burden.
- The court applied a clear-and-convincing evidence standard to the § 256 inventorship claim and required corroboration of inventor testimony.
- The court affirmed the denial of unjust enrichment.
- The court affirmed the award of only nominal contract damages.
- A concurring judge agreed the evidence was insufficient but would have applied a preponderance-of-the-evidence standard to the inventorship claim.

## Legal Principles

- Joint inventorship requires a significant contribution to the conception of the claimed invention and communication of that contribution to the named inventors before their conception.
- In a § 256 action to correct inventorship of an issued patent, the claimant must prove entitlement by clear and convincing evidence (majority view in this decision).
- Testimony by an alleged omitted inventor about his own contribution must be corroborated by independent evidence; uncorroborated recollection is inadequate.
- Where a contractual framework governs the parties’ relationship, unjust-enrichment recovery may be unavailable absent proof of an extra-contractual benefit unjustly retained.
- A plaintiff who establishes breach of contract but fails to prove actual, compensable damages is limited to nominal damages.

## Conclusion

The Federal Circuit set aside the correction of inventorship because Lilly failed to present clear, corroborated proof that its scientist contributed to and communicated conception of the claimed aerosol-delivery invention, while leaving intact the district court’s rejection of unjust enrichment and its limitation of contract recovery to nominal damages.


Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352 (Fed. Cir. 2004)