IBEP v. Amgen et al.

In a complex patent rights ownership case, Israel Bio-Engineering Project (IBEP) sued Amgen et al. claiming Amgen’s drug Enbrel infringed claim 1 of U.S. Pat. No. 5,981,701 (“the ’701 patent”) covering “A protein capable of inhibiting the binding of TNF [Tumor Necrosis Factor] to cells . . . .” The CAFC affirmed the district court’s grant of a motion for summary judgment that IBEP lacked standing to sue because it did not have sole ownership of the patent.

Under a funding agreement with Inter-Yeda, a joint venture between Yeda and Inter-Pharm, IBEP had funded several research and development projects, one of which produced the technology embodied in claim 1 of the ‘701 patent. Under the terms of the agreement, the results of such work were assigned to IBEP. After the funding agreement ended, work continued which resulted in the advances embodied in claims 2 and 3 of the ‘701 patent. Rights to this work were assigned to Yeda.  Thus, Yeda became at least a part owner of the ‘701 patent along with IBEP and Yeda’s unwillingness to join the IBEP suit deprived IBEP of standing to sue Amgen.