Foley Hoag Secures Court of Appeals Win for Dana Farber Cancer Institute on Inventorship of Groundbreaking Cancer Immunotherapy Patents

July 16, 2020

The U.S. Court of Appeals for the Federal Circuit has unanimously affirmed on July 14, 2020 the ruling of U.S. District Judge Patti B. Saris that Dana-Farber scientist Gordon Freeman, Ph.D. and a collaborator jointly invented novel methods of treating cancer using PD-1 or PD-L1 antibody therapeutics.  The decision makes Dana-Farber a co-owner of the patents and enables it to license the technology to additional companies seeking to develop PD-1 and PD-L1 therapies for a wide range of cancers.

2018 Nobel Prize winner Tasuku Honjo, one of the original named inventors on the patents, and his licensees Ono Pharmaceutical Co., and Bristol-Myers Squibb Co. appealed after Judge Saris entered judgment for Dana-Farber following a nine-day bench trial in February 2019. 

In its decision, the Federal Circuit agreed that Dana-Farber’s Dr. Freeman and Genetics Institute’s Dr. Clive Wood made significant contributions to the claimed treatment methods.  The decision noted that, among other contributions, Dr. Freeman shared with his collaborators his discovery that the PD-L1 protein was expressed in a variety of human tumor cells, leading to his hypothesis that “tumors may use PD-L1 to inhibit an antitumor response.”  This concept was one of the “significant building blocks” upon which all six patents are built.  

“On behalf of Dana-Farber, we couldn’t be more pleased with the Federal Circuit's unanimous affirmance in this important case,” said Foley Hoag partner Donald R. Ware, who led the Foley Hoag team.  "The district court's inventorship findings were thorough and meticulous, and, as the Federal Circuit's opinion confirms, its decision scrupulously followed the legal standards applicable to joint inventorship."

Foley Hoag attorneys Donald R. Ware, Barbara A. Fiacco, Sarah S. Burg, Brendan T. Jones, DeAnn Smith, Michael B. Hoven, Emma S. Winer, and Urszula Nowak represented Dana-Farber at trial and on appeal.