INTRODUCTION In Rubin v. General Hospital Corp., 523 Fed. Appx. 719 (Fed. Cir. 2013) (non-precedential) (opinion by Circuit Judge Newman for a panel that also consisted of Senior Circuit Judge Bryson and District Judge Fogel, sitting by designation) [an enhanced version of this opinion is available to lexis.com subscribers], the court affirmed the dismissal on summary judgment of a 35 USC 256 action on the ground that "the district court correctly ruled that the independent relationship between...[two competing] teams of scientists, and the nature of...[the indirect] communication of information [from one of the two teams to the other of the two teams], do not support joint invention in accordance with § 116, or warrant change or substitution of inventorship under § 256." The problem seemed to be that the two competing teams of scientists were not friends. But does that mean that they can't have been joint inventors? RUBIN V. GENERAL HOSPITAL CORP. Judge Newman's opinion in Rubin v. General Hospital Corp. concludes that: On the record provided, we agree with the district court that resolution of the entirety of the dispute as set forth in the counts under § 256 and § 102(f) devolves to a question of priority of invention. The district court proposed that priority should be resolved in accordance with the "interference" procedure in the Patent and Trademark Office, the court having ascertained that such procedure remains available to these disputants. We conclude that the district court acted within its authority in directing the parties to the PTO for this purpose. On this basis the judgment of dismissal is affirmed, without prejudice to the right of the parties to return to the district court for any further legal or equitable consideration that may be warranted. This was another case involving the alleged viewing of an academic manuscript by a competitive scientist as a part of the process of peer-review. A team of scientists consisting of Drs. Rubin and Anderson working at Fordham University had submitted an academic manuscript to the American Journal of Human Genetics (hereinafter referred to as "the Journal") with a specific request that another team of scientists consisting of Dr. Gusella and his colleagues working at a hospital owned by the General Hospital Corporation (referred to by the court as "MGH"--short for Massachusetts General Hospital) not receive the manuscript for peer-review "because they were working competitively on the same problem." Nevertheless, the editor of the Journal testified that he had sent the abstract of the manuscript to Dr. Gusella. It is unclear from Judge Newman's opinion whether the editor of the Journal sent Dr. Gusella the entire manuscript or only the abstract of the manuscript. In any event, Dr. Gusella declined to be a peer reviewer of the Rubin/Anderson manuscript, and he and his colleague Dr. Slaugenhaupt submitted their own manuscript to the same journal shortly after Dr. Gusella had received at least the abstract of the manuscript. [footnotes omitted]
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