SCOTUS denies review of patent dispute over groundbreaking cancer treatment

The United States Supreme Court during a rain storm on Capitol Hill in Washington, U.S., December 14, 2020. REUTERS/Tom Brenner - RC22NK9MXNPK
  • Nobel Prize winner collaborated with researchers on patents
  • Mass. court, Fed. Cir. ruled researchers were co-inventors
  • Courts rejected argument that contributions were obvious

(Reuters) - The U.S. Supreme Court on Monday declined to review a federal appeals court decision adding a Dana-Farber Cancer Institute Inc researcher and another scientist as inventors on groundbreaking Ono Pharmaceutical Co Ltd cancer-treatment patents, for which immunologist Tasuku Honjo received a Nobel Prize in 2018.

Ono lost its bid to have the high court hear its appeal of a U.S. Court of Appeals for the Federal Circuit ruling that the contributions of Dana-Farber's Gordon Freeman and collaborator Clive Wood, formerly of the Genetics Institute, were significant enough to justify listing them as co-inventors of the patents, which relate to stimulating a person's immune system to attack cancer cells.

The Japanese pharmaceutical company had argued that Freeman and Wood's research was already known in the prior art, and didn't add anything novel to the patent and that letting the July 2020 Federal Circuit opinion stand would "undermine collaboration and create windfalls for individuals who contributed only ideas that are already covered by prior art."

Ono and its lead attorney Seth Waxman of Wilmer Cutler Pickering Hale and Dorr didn't immediately respond to a request for comment. New York-based Bristol Myers Squibb Co, which licensed the patents to develop the cancer drug Opdivo and was also a defendant, declined to comment.

"From the day Dana-Farber filed suit in 2015, we never doubted that Dr. Freeman was wrongly omitted from the patents," Dana-Farber said in a statement.

Boston-based Dana-Farber sued Osaka, Japan-based Ono and Bristol Myers Squibb in Boston federal court in 2015 asking that the court add Freeman and Wood to the six patents, which relate to treating cancer by administering antibodies that target specific parts of T cells.

Honjo began his research on the relevant T-cell receptor in the early 1990s, and began collaborating later that decade with Wood and Freeman, who provided relevant research on molecule-binding ligands, among other things.

U.S. District Judge Patti Saris found in 2019 that the researchers made significant contributions to the Ono patents that justified their co-inventorship. U.S. Circuit Judge Alan Lourie, joined by Circuit Judges Pauline Newman and Kara Farnandez Stoll, affirmed Saris' decision in 2020, citing several key pieces of research from Freeman and Wood including the discovery of an important ligand and the finding that binding the ligand – which is often found in tumors – to the receptor inhibits the immune response.

The appeals court also noted that Honjo credited Freeman as a "major collaborator" in his Nobel Prize acceptance speech.

Lourie rejected Ono's argument that, among other things, the researchers' discoveries were already known in the prior art before Honjo conceived the invention. Lourie said Ono asked the court to "adopt an unnecessarily heightened inventorship standard."

Ono told the Supreme Court in a March petition that the Federal Circuit was wrong to hold that whether a person "contributes to what makes an invention inventive (i.e., patentable) is not relevant in determining whether an individual is an inventor."

Dana-Farber responded in April that Ono's argument wrongly conflates inventorship and patentability standards.

The Supreme Court said in its denial that Justice Stephen Breyer, who has been a Dana-Farber trustee and whose wife was a child psychologist at the hospital, didn't take part in the cert decision.

The case is Ono Pharmaceutical Co Ltd v. Dana-Farber Cancer Institute Inc, U.S. Supreme Court, No. 20-1258.

For Ono: Seth Waxman of Wilmer Cutler Pickering Hale and Dorr; and Dianne Elderkin of Akin Gump Strauss Hauer & Feld

For Dana-Farber: Don Ware of Foley Hoag

Read more:

Bristol-Myers Squibb loses inventorship fight with Boston cancer institute

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Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at