35 U.S.C. § 116 Does Not Provide a Private Right of Action to Challenge Inventorship of a Pending Patent Application

HIF Bio, Inc. v. Yung Shin Pharms. Indus. Co., Ltd., No. 2006-1522 (Fed. Cir. Mar. 31, 2010).

Holding:

35 U.S.C. § 116 does not provide a private right of action to challenge inventorship of a pending patent application, but 35 U.S.C. § 256 provides a private right of action to challenge inventorship under § 1338(a) for an issued patent. Slip op. at 9.

Relevant Facts:

Two scientist began investigating the effect of a chemical, YC-1, on a protein complex known as HIF-1, and filed and assigned a patent application to the plaintiffs. During the research, they discussed their hypothesis with another scientist who allegedly filed a separate application on the same idea and assigned it to another company. The plaintiffs sued the defendant in a state court, and the defendant removed the case to a federal district court. After dismissing the RICO claim, the district court declined to exercise supplemental jurisdiction and remanded the case to the state court. The defendant appealed, and the Federal Circuit initially held that the Federal Circuit lacked appellate jurisdiction to review a district court’s remand order that was based upon the district court’s decision not to exercise supplemental jurisdiction. The Supreme Court subsequently reversed the Federal Circuit’s decision. On remand, the Federal Circuit held that the district court did abuse its discretion because two of the remanded causes of action “arise under” 28 U.S.C. 1338(a), but the district court should have dismissed these purported causes of action for failure to state a claim for which relief can be granted.