Medtronic, Inc. v. White
Filed May 15, 2008
Cite as 06-16229

Findings of Trial Court Consisted Prejudicial Error: Reversed

Los Angeles Biomedical Research Institute at Harbor UCLA Medical Center (L.A. Biomed) was a nonprofit medical research institute. Geoffrey White (White) had been using its facilities for five years.

White and L.A. Biomed signed a patent and copyright (P&C) agreement. The parties agreed that all patentable results of White’s research should belong to L.A. Biomed.

White and a colleague invented a surgical aid known as a graft attachment device (GAD).They used L.A. Biomed’s facilities for two months in testing, building and implanting such device into dogs’ miniature versions of the GAD.

When White successfully implanted a GAD-graft into a human, he and his colleague filed and thereafter, issued two patents on the GAD.

As part of the patent process, White filed a declaration with the patent and trademark office (PTO) that illustrates GAD’s development, including its having been created and reduced to practice in the two months of work at L.A. Biomed.

When White was involved in patent infringement litigation, L.A. Biomed intervened. The district court deferred the patent litigation to resolve the ownership issues.

At trial, L.A. Biomed made the following proposals:

• no agency instruction be given


• the instruction on creating an invention should sum up the patent law principle of coinventorship


• invention can be created jointly if each inventor makes a significant contribution to its creation


• reduce-to-practice instruction summarized the similar principle that acts related to reduction to practice performed by a coinventor be considered as though performed by the inventor himself


• any admission against interest by White need not be supported by independent evidence

Instead, L.A. Biomed proposed that, were an agency instruction given, it should be the model instruction. On the other hand, White proposed another instruction that applied agency law.

The district court granted the model agency instruction. Further, it did not contain the proposed coinventor language in conceive and the reduce-to-practice instructions.

The jury returned a special judgment for White. It found that the P&C agreement subsisted between the parties at all times.

However, the jury further found that L.A. Biomed had unsuccessfully proved that White had conceived or reduced to practice the GAD during his use of L.A. Biomed’s facilities. The district court entered judgment on said matter.

L.A. Biomed appealed.

The Ninth U.S. Circuit Court of Appeals reversed the judgment by holding as follows:

• corroboration instruction, without a corresponding admission-against-interest instruction, is injurious error because it misstates the law by requiring corroborating evidence


• P&C agreement used such terms of art from patent and inventorship law as “conceive” and “reduce to practice”


• L.A. Biomed’s P&C policy reflected principles of patent and inventorship law that prompted the parties’ intention that such law would govern interpretation of their agreement, making the agency instruction, and the exclusion of coinventorship language, clear error.


• while corroborating evidence is required of an inventor pursuing a patent to prove the date of his conception or reduction-to-practice of an invention, such evidence is not essential when offered by an adversary party against an inventor as an admission against interest

Due to the foregoing findings, the appeal court reversed the trial court’s judgment.