Eugene Daneshvar's journey into neurotech IP began at birth. Born with missing fingers on one hand, and a cardiologist as a father, he grew up curious about bioelectrics and brain-machine interfaces. He studied electrical and biomedical engineering at the University of Michigan, then did a PhD whose thesis answered, "How do you get electrodes to their final destination with minimal damage to surrounding tissue?"
Electrodes that unfold themselves
Silicon electrodes kept failing. They broke, or something went wrong on the way in, and once they were seated the tissue closed around them.
Michigan's design put recording sites all along a single shank. The Utah array was a bed of tiny needles, each with one site at the tip. Utah's was thought to be the more reliable of the two, because each site sat at a tip surrounded by relatively undisturbed tissue. The Michigan shank cut through the networks it was trying to listen to, and ended up sheathed in scar tissue along its length.
Eugene had seen conjugated polymers used for something unrelated, and had a eureka moment. What if you used that backbone of single and double bonds to move the electrodes themselves?
A polymer actuator could let the electrode navigate around a structure on the way down. Instead of sites fixed on a flat substrate, the electrode could go in narrow and splay out into three dimensions once it arrived, putting every site in healthier tissue the way a Utah array does.
It was genius, and he was not the only person who thought so.
The last page of the dissertation
At this point in our conversation Eugene gets up, goes to his library, and comes back with his dissertation. He turns past the science to the very end, into the appendix, where there is an email he wrote at the time, disclosing the idea. It is dated. With it are lab notebook pages from back when people still kept them, signed, dated and witnessed.
He knew next to nothing about intellectual property back in the day, he admits, but somehow managed to build a paper trail anyway.
"My understanding is that I was an inventor, and I contributed an idea, and other people may have misappropriated that idea and filed for a patent application under their own name," Eugene recounts.
"This is back in the day when people had lab notebooks which they signed, dated and witnessed. And I did all of that. That's all in my dissertation, the appendix, the very end. I snuck that in. So, you know, the world can judge for themselves."
The case
In June 2013, Eugene filed a lawsuit against Daryl Kipke, his faculty advisor, and NeuroNexus, the Michigan spinout Kipke had founded in 2004.
The claim was correction of inventorship, an action to have his name added to the patent, alongside three state law claims for fraud, breach of fiduciary duty and unjust enrichment. The fraud allegation that survived an early motion to dismiss was that Kipke had promised NeuroNexus would file a provisional patent on Daneshvar's behalf, when the company had already patented the technology. The defendants denied liability and countersued for a declaration that he was not an inventor at all. Kipke added a counterclaim for defamation. Mediation was attempted, and failed.
Inventorship cases turn on a rule that is simple to state and punishing to satisfy. The inventors named on a US patent are presumed to be correct. To add a name you have to prove, by clear, convincing and corroborated evidence, that you contributed to the conception of something actually claimed in the patent. Your own account of what happened is never enough by itself. The documents have to carry it.
So the court went to the documents. It fixed the relevant window as 13 June 2007, the day Eugene says he conceived the Pivot Probe, to 17 October 2007, the day the application was filed. Inside that window the corroborating evidence available to him was his notebook, the email he sent Kipke on 21 June, and a transcription of a conversation the two men had on 7 July.
The email in the pages at the back of the dissertation was not enough.
The court held that he had not shown, by clear, convincing and corroborated evidence, that he contributed to the joint arrival at a definite and permanent idea in any of the claims of the patent. Summary judgment went against him in July 2017. He appealed, and in November 2018 the Federal Circuit affirmed it without writing an opinion.
"It was a good experience that allowed me to learn all about the intricacies of protecting your ideas and enforcing your rights, working with universities, going against small guys versus big, big companies," he says of the case.
Becoming the person he needed
Learning the intellectual property lesson cost Eugene five years. But instead of seeing it as a setback, he saw the opportunity.
He went back to school for his JD, passed the bar and went into practice, first at a large firm, then out on his own. Black Swan Intellectual Property is a neurotech patent practice. His clients are early and mid-stage companies, the ones with an inventor, an idea, and little experience protecting it.
He remembers being that person.
Starting his own practice bought him something else too. Lawyers do not often get to academic conferences. He goes, keeps up with the machine learning work, and treats the neurotech community as his own. The boutique practice has flourished for it.
I see it as my responsibility to help scientists bring their technologies to people who need them. That's what brings me joy.
The unfolding electrode was never built. He would still like to see it exist. If you want to build it, you would be well advised to get his opinion.
Eugene works with early and mid-stage neurotech companies. If you are an innovator or a founder working in this area, he would love to hear from you.
References
- Visit Black Swan Intellectual Property
- Connect with Eugene Daneshvar on LinkedIn
- Listen to Eugene on the Neural Implant Podcast: navigating neurotech and patents, and navigating neurotech IP with fairer pricing
- Daneshvar v. Kipke, 266 F. Supp. 3d 1031 (E.D. Mich. 2017), No. 2:13-cv-13096, affirmed by the Federal Circuit in 2018