IP Law Daily, PATENT—D. Colo.: Correction of plant growth inventorship claim fails to take root, (Oct 2, 2014)

By Greg Hammond, J.D.

An individual failed to state an adequate “correction of inventorship” claim regarding a patent that covers methods for enhancing plant growth. In granting the patent owners’ motion for summary judgment, the federal district court in Denver, determined that there was no corroborating evidence that demonstrated the plaintiff first conceived of the idea that led to the patented methods (Loken-Flack, LLC v. Novozymes BioAg, Inc., September 30, 2014, Krieger, M.).

Background. Novozymes BioAg, Inc. is the owner of U.S. Patent Number 8,357,631, which covers “compositions and methods for enhancing plant growth and crop yield in legumes and non-legumes.” Specifically, the covered method accelerates the process of “nitrogen fixation” in plants by combining “lipochitooligosaccharides” (LCOs) with various other compounds. The plaintiffs in this case, Lynn Loken and Loken-Flack, LLC, bring a claim for correction of inventorship, contending that Loken should be added as a co-inventor, alongside Drs. Smith and Osburn. According to the plaintiffs, Loken first conceived of the idea of combining Novozymes’ LCO product with an “organically derived colloids” (ODC) product. Novozymes opposed the claim, arguing that Drs. Smith and Osburn first conceived of the patented method in October 2003, and Loken testified in his deposition that he did not know what LCO was, until 2005. The parties filed cross-motions for summary judgment.

Merits. According to the court, the touchstone of inquiry in this case is “conception” of the invention, which “is the notion of combining an LCO product with a chitin product to obtain a synergistic effect.” The court found that the evidence presented by the plaintiffs is not consistent with the narrative they set forth. Specifically, the court determined that Loken could not have initially conceived of the idea of combining an LCO with an ODC, because he did not even know at the time what an LCO was. Further, none of the “corroborating” materials offered by the plaintiffs actually demonstrated that Loken proposed the LCO/ODC combination to Novozymes. Instead, the evidence only demonstrated that the parties agreed to conduct a test involving ODC, and that Novozymes did not expect the combination to show significant results. Nothing, however, provided clear and convincing evidence that Loken was the first to conceive of the idea of combining LCO and a chitin. Consequently, Novozymes’ motion for summary judgment was granted.

The case number is 13-cv-01617-MSK-BNB.

Attorneys: Alan F. Blakley (Blakley Justice LLC) for Loken-Flack, LLC and Lynn Loken. John Joseph Cotter (K&L Gates LLP) for Novozymes BioAg, Inc.

Companies: Loken-Flack, LLC; Novozymes BioAg, Inc.

Cases: Patent ColoradoNews