Guenevere Perry v. Georgia State University Research Foundation

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Guenevere Perry, PhD (Florida)
  • Defendant: Georgia State University Research Foundation (Georgia)
  • Plaintiff’s Counsel: Pro Se
• Case Identification: 1:19-cv-03048, N.D. Ga., 07/08/2019
• Venue Allegations: The complaint does not contain explicit venue allegations, but Defendant is located in Atlanta, Georgia, within the Northern District of Georgia.
• Core Dispute: Plaintiff, a former doctoral candidate, alleges that Defendant, her former university's research foundation, improperly filed and obtained patents on her discoveries related to inhibiting fungal growth using bacteria, and seeks to be named as a co-inventor.
• Technical Context: The technology involves using specific microbiological compositions and enzymes to prevent or reduce fungal growth on agricultural products and other materials, a significant issue in food preservation and safety.
• Key Procedural History: The complaint alleges that in 2016, Defendant acknowledged patenting technology derived from Plaintiff's research but claimed she was not the lawful inventor. This is supported by an affidavit from a prior court case (1:16-cv-0746) attached as an exhibit.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,004,237 - “Inhibiting or Reducing Fungal Growth”

The Invention Explained

• Problem Addressed: The patent addresses the detrimental effects of fungi, such as mold and mildew, which can cause material degradation, contamination, and spoilage of fruits and vegetables. The background notes that many fungi respond to ethylene, suggesting that targeting this mechanism could be an effective control strategy (’237 Patent, col. 1:16-33).
• The Patented Solution: The invention provides methods and compositions for inhibiting fungal growth by exposing a location to certain bacteria (e.g., Rhodococcus), enzymes produced by those bacteria, or an extract from them. The specification describes inducing the bacteria with agents like urea and cobalt to produce enzymes, such as ACC deaminase, that can interfere with ethylene-related pathways and thereby inhibit fungal spore germination and growth (’237 Patent, col. 1:36-49; col. 29:31-36).
• Technical Importance: This approach provides a biological alternative to chemical fungicides for controlling spoilage and contamination in agriculture and other industries (’237 Patent, col. 1:16-24).

Key Claims at a Glance

• The complaint does not assert specific claims, but its allegations implicate the core subject matter of the patents. Independent claim 1 of the ’237 Patent is representative:
  • A method for inhibiting or reducing fungal growth at a location containing a fungus or susceptible to fungal growth,
  • comprising placing a composition comprising one or more bacteria in the proximity of, but not directly on, the location,
  • wherein the one or more bacteria are selected from the group consisting of Rhodococcus rhodochrous DAP 96253, Rhodococcus rhodochrous DAP 96622, Rhodococcus erythropolis, and combinations thereof,
  • wherein the location does not comprise a plant or plant part, and
  • wherein the one or more bacteria are provided in a quantity sufficient to inhibit or reduce fungal growth at the location.
• The complaint does not explicitly reserve the right to assert dependent claims.

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U.S. Patent No. 10,244,765 - “Inhibiting or Reducing Fungal Growth”

The Invention Explained

• Problem Addressed: As a divisional of the application leading to the ’237 Patent, this patent addresses the same problem of fungal contamination and spoilage, with a specific focus on grain (’765 Patent, Abstract; Claim 1).
• The Patented Solution: The solution is materially the same as that described in the ’237 Patent: using specific bacteria or their enzymatic products, induced by particular agents, to inhibit fungal growth (’765 Patent, col. 1:38-51).
• Technical Importance: The invention provides a biological method for protecting stored grain from fungal spoilage, which is a major cause of post-harvest loss (’765 Patent, col. 1:18-24).

Key Claims at a Glance

• Independent claim 1 of the ’765 Patent is representative:
  • A method for inhibiting or reducing fungal growth in grain,
  • comprising exposing the grain to a composition comprising one or more bacteria,
  • wherein the one or more bacteria are selected from the group consisting of Rhodococcus rhodochrous DAP 96253, Rhodococcus rhodochrous DAP 96622, Rhodococcus erythropolis, and combinations thereof, and
  • wherein the one or more bacteria are provided in a quantity sufficient to inhibit or reduce fungal growth on the grain.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. Analysis of Inventorship Allegations

The central dispute is Plaintiff's claim to be an uncredited inventor of the technology claimed in the patents-in-suit. The analysis below maps elements of a representative claim to Plaintiff's alleged discoveries as detailed in her 2010 Qualifying Exam, which is attached to the complaint.

U.S. Patent No. 10,004,237 Inventorship Allegations

• Identified Points of Contention:
  • Conception vs. Reduction to Practice: A key question will be whether the 2010 Qualifying Exam demonstrates that Plaintiff conceived of the "definite and permanent idea of the complete and operative invention" as claimed, or if her work constituted a reduction to practice of a concept conceived by the named inventors.
  • Scope of Contribution: The court may need to determine if Plaintiff's alleged discoveries regarding fruit ripening and fungal growth on bananas are sufficient to establish co-inventorship of claims directed to inanimate locations or grain, as claimed in the patents-in-suit.

IV. Key Technical Concepts for Inventorship Analysis

• The Term: "inhibiting or reducing fungal growth"

• Context and Importance: This term defines the core utility of the invention. The dispute will likely focus on whether Plaintiff’s experimental results, particularly those shown in her 2010 Qualifying Exam, represent the conception of this claimed function. Practitioners may focus on the evidence connecting the specific results in the Qualifying Exam to the broader concept of fungal inhibition claimed in the patents.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patents describe the mechanism of inhibition as including the inhibition of spore germination and mycelia development (’237 Patent, col. 24:1-6). This appears to align with the results Plaintiff allegedly produced in her banana experiments, which showed a lack of visible mold growth compared to controls (Compl. p. 12).
  • Evidence for a Narrower Interpretation: The patent claims extend to applications beyond fruit, including inanimate objects and grain silos (’237 Patent, cl. 1; ’765 Patent, cl. 1). Defendant may argue that Plaintiff’s contribution, if any, was limited to the specific context of her experiments and did not amount to conception of these broader applications.

• The Term: "induced" (referring to the bacteria)

• Context and Importance: Plaintiff alleges the specific discovery that "cobalt & urea inducers enabled bacteria to inhibit fungal growth" (Compl. p. 5). The patents claim methods where bacteria are "induced to produce one or more enzymes" (’237 Patent, cl. 2). Establishing that she conceived of this critical process step, not merely executed it, will be central to her inventorship claim.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent specifications repeatedly discuss the use of inducing agents, including urea, cobalt, and asparagine, to stimulate the production of enzymes that inhibit fungal growth (’237 Patent, col. 10:41-51). This language directly corresponds to the specific chemical inducers Plaintiff claims to have discovered as being effective for this purpose (Compl. p. 5, 12).
  • Evidence for a Narrower Interpretation: The specifications disclose a wide range of inducing agents and enzymes (’237 Patent, col. 10:41-51; col. 9:5-14). Defendant may argue that the named inventors conceived of the general principle of induction and that Plaintiff’s work was limited to confirming the efficacy of a subset of potential inducers.

V. Analyst’s Conclusion: Key Questions for the Case

This case appears to turn on fundamental questions of fact and law regarding inventorship, rather than claim interpretation or infringement. The central issues for the court will likely be:

• A core factual question will be one of conception: does the evidence presented in the complaint, particularly the 2010 Qualifying Exam, establish that Plaintiff conceived of a "definite and permanent idea" of using specific bacteria, treated with specific chemical inducers, to inhibit fungal growth in the manner claimed in the patents-in-suit?
• A key legal question will be one of joint inventorship: if the court finds that Plaintiff did contribute to the conception of the claimed invention, it will then need to determine whether that contribution was significant enough to qualify her as a joint inventor under 35 U.S.C. § 116, or if her work constituted the efforts of a skilled assistant carrying out the research plan of the named inventors.