## Facts

- American Cyanamid Co., through its Lederle Laboratories division, sold a prenatal vitamin/mineral supplement known as Materna and later marketed a reformulated version intended to improve iron absorption.
- Cyanamid obtained U.S. Patent No. 4,431,634 on the reformulation and listed Leon Ellenbogen, a Cyanamid chemist, as the sole inventor.
- Dr. Robert H. Allen and Dr. Paul A. Seligman, affiliated with the University of Colorado, performed clinical research related to the reformulated product and iron absorption.
- The University of Colorado Foundation and related University entities, together with the doctors, asserted that the doctors’ contributions warranted inventorship recognition and that Cyanamid concealed the patent application and inventorship designation.
- After a bench trial, the district court found Cyanamid liable for fraudulent nondisclosure and unjust enrichment, awarded compensatory damages and $1,000,000 in punitive damages to the doctors, declined to correct inventorship or award equitable title to the University, and denied relief on a copyright claim tied to a journal article.
- Cyanamid appealed the liability and damages rulings; the University and doctors cross-appealed on inventorship and copyright-related rulings.

## Issues

1. Whether the district court used the correct federal patent-law standard for determining inventorship of the ’634 patent, including conception and joint inventorship.
2. Whether judgments for fraud, unjust enrichment, punitive damages, and related rulings could stand where they depended on an inventorship determination reached under an incorrect legal standard.

## Decision

- The Federal Circuit held that the district court applied an incorrect legal standard for inventorship by relying on state common-law concepts rather than federal patent law.
- The court vacated the liability judgments against Cyanamid and other rulings that depended on the flawed inventorship determination.
- The case was remanded for reconsideration under the correct federal standard for conception and inventorship, and for reevaluation of claims and remedies tied to inventorship.

## Legal Principles

- Inventorship of a U.S. patent is governed exclusively by federal patent law, not state common-law theories such as unjust enrichment or generalized notions of contribution.
- Conception is the touchstone of inventorship; an inventor must form (or contribute to) a definite and permanent idea of the complete and operative invention reflected in the patent claims.
- Contributions limited to testing, data collection, verification, or reduction to practice do not establish inventorship absent contribution to conception of the claimed subject matter.
- State law may affect contractual or equitable interests in patent rights, but it cannot redefine who qualifies as an inventor under federal law.
- Where state-law liability theories and remedies are predicated on an erroneous inventorship determination, those dependent judgments must be vacated.

## Conclusion

The Federal Circuit vacated the district court’s fraud, unjust enrichment, and related judgments because inventorship must be determined under federal patent-law conception standards, and remanded for a proper inventorship analysis and reconsideration of dependent claims and remedies.


Univ. of Colo. Found., Inc. v. Am. Cyanamid Co., 196 F.3d 1366 (Fed. Cir. 1999)