Carter v. Ozoeneh
| Decision Date | 12 May 2010 |
| Docket Number | No. 3:08cv614-RJC-DSC,3:08cv614-RJC-DSC |
| Citation | 717 F.Supp.2d 507 |
| Court | U.S. District Court — Western District of North Carolina |
| Parties | Ronald CARTER & Revolutionary Concepts, Inc., Plaintiffs, v. Emmanuel OZOENEH & John Does Nos. 1 Through 7, Defendants. |
Glen Andrew Cipriani, James M. Harrington, Russell Bates Niemyer, The Harrington Practice PLLC, Charlotte, NC, for Plaintiffs.
Emmanuel Ozoeneh, Huntersville, NC, pro se.
Matthew J. Ladenheim, Trego, Hines & Ladenheim, PLLC, Cynthia L. Van Horne, E. Fitzgerald Parnell, III, Poyner Spruill, LLP, Edward Theodore Hinson, Jr., James, McElroy & Diehl, Charlotte, NC, Dan Johnson McLamb, Kathrine Elizabeth Fisher, Yates, McLamb & Weyher LLP, Raleigh, NC, for Defendants.
THIS MATTER is before the Court on the plaintiffs' motion for partial summary judgment on inventorship and the related briefs (Doc. Nos. 25, 26, & 27), as well as the attorneys' arguments at the hearing conducted on May 12, 2010. The matter is now ripe for the Court's determination.
The invention at issue is U.S. Patent No. 7,193,644 ("the '644 patent"), on which plaintiff Ronald Carter is named as the sole inventor. The '644 patent involves "an audio-video communication and answering system that synergistically improves communication between an exterior and an interior of a business or residence and a remote location, enables messages to be stored and accessed from both locally and remotely, and enables viewing, listening, and recording from a remote location." (Doc. No. 1-1 at 2). Carter began working on the concept that became the '644 patent as early as 1988. In about 1988, Carter retained Invention Submission Corporation, a self-help invention company, to evaluate his ideas. By May 1998, a document labeled "New Product Idea ..." had been produced that identified a number of the features of the invention that was initially disclosed to the Dougherty & Clements law firm ("the Law Firm") in 2002.
Carter met defendant Emmanuel Ozoeneh in early 2002, when Carter was a customer at the electronics store where Ozoeneh worked. After speaking about Carter's ideas, the two formed Revolutionary Engineering Concepts, Inc. ("REC"), to act as a vehicle to develop and commercialize the invention. Soon after, still in early 2002, they hired the Law Firm to pursue a patent. After subsequent meetings and exchanges between Carter and Ozoeneh (on behalf of REC) and the Law Firm, attorney Jason S. Miller filed a provisional patent application on October 15,2002, listing both Carter and Ozoeneh as co-inventors.
Several months later, Carter and Ozoeneh met to discuss the progress of invention, and Carter told Ozoeneh that the Law Firm had informed him the invention was not patentable.1 Thereafter, Carter and Ozoeneh had little or no contact. Soon after this meeting, Carter and others formed Revolutionary Concepts, Inc. ("RCI"). Then, in October 2003, the Law Firm filed U.S. Patent Application No. 10/682,185 ("the non-provisional application") with the United States Patent and Trademark Office on behalf of Carter and without Ozoeneh's knowledge.2 The non-provisional application eventually matured into the ' 644 patent, which lists the only inventor as Carter.
Some time thereafter, Carter and RCI filed suit against the Law Firm in state court, alleging malpractice in damaging Carter's and RCI's foreign patent rights by negligently failing to file timely foreign patent applications. That action is currently pending in Mecklenburg County Superior Court. Pertinent to this action, Carter claims that at some point after the state-court litigation ensued, Ozoeneh began making public statements asserting that he is the co-inventor or the sole inventor of the counsel of Ozoeneh's intention to sue Carter and RCI on the basis of Ozoeneh's claim of inventorship.
On December 30, 2008, Carter and RCI filed the Complaint in this action against Ozoeneh and seven John Doe defendants seeking declaratory, compensatory, and injunctive relief with respect to the inventorship and ownership of the 3 644 Patent.4
Ozoeneh presents various forms of evidence in support of his claim that he should have been named a co-inventor of the '644 patent.
Ozoeneh offers personal testimony that he is an inventor of the subject matter of the '644 patent. He claims, according to his answer to plaintiffs Interrogatory No. 1, that he is the "sole or joint inventor" of all of the limitations of claims 1, 3, 4, 7, 8, 10, 12-15, 17, 18, 20, 22-24, and 26-30, and of the exterior module in claim 6. (Doc. No. 25-7 at 5-6).
Carter's counsel questioned Ozoeneh at deposition, asking him whether certain features of the '644 patent's invention were his ideas. In response to these questions, Ozoeneh claimed the following features of the invention were his ideas alone: having a computer and software to control the unit, making the device communicable with a mobile phone, a motion sensor, a camera,and a device for keeping a record of visitors. Carter offers a May 1998 document, created at his direction four years before Carter and Ozoeneh met. This document is a revision of an earlier Invention Submission Corporation document, disclosing many of the features Ozoeneh claims were his ideas. Specifically, the May 1998 document discloses that the device (1) keeps a record of visitors, (2) has a video feed that permits remote viewing, (3) features two-way remote audio, (4) sends transmissions to a remote phone service (the drawing shows a wireless telephone), (5) is controlled by software via a PC, (6) contains a motion sensor, and (7) includes a camera. (Doc. No. 25-3).
Ozoeneh provides as evidence a copy of a fax addressed to Jason Miller, and listing "Emmanuel, Revolutionary Engineering Concepts" as the sender. (Doc. No. 26-2). The fax is dated May 23, 2002. The document contains a drawing of a purported prototype with specific parts labeled, including a digital video camera, a microphone, a speaker, a keypad, a phone jack, a video screen, and a head phone jack. Short narratives describe some of the labeled features.
Ozoeneh offers portions of the Rule 30(b)(6) deposition of Christopher Bernard, an attorney with the Law Firm at the time of the relevant events. Bernard stated in the deposition that the firm's documents and invoices are "consistent with" Ozoeneh's position that he was an inventor of the Invention. Bernard further stated that the "firm's position was that it appears he was an inventor."
Ozoeneh provides an invention disclosure form that Carter and Ozoeneh submitted to the Law Firm, on which Carter and Ozoeneh each signed the form on adjacent lines listing them as "Inventor 1" and "Inventor 2." (Doc. No. 11-4 at 6). He further provides a copy of a "new matter report" from the Law Firm listing "Doorbell Messenger" as the file name. This report lists both Carter and Ozoeneh as clients. It lists the nature of the matter as "1) Work for Hire Agreement ... 2) Provisional Pat Appln." (Doc. No. 26-5 at 2). Ozoeneh also offers a file cover jacket labeled "Door Answering System" listing both Carter and Ozoeneh on the line for "Inventor(s)." (Doc. No. 26-6). Further, handwritten notes from the Law Firm's file include the following notation:
Image 1 (1.76" X .62") Available for Offline Print
(Doc. No. 26-7). The notation appears to indicate that the note-taker considered both Carter and Ozoeneh co-inventors. Attorney Miller stated at deposition that the notes were his. Finally, Ozoeneh provides letters and invoices from the Law Firm addressed to Ozoeneh, most of which were also copied to Carter. These communications include an October 22, 2002, letter to Ozoeneh, attached to which were an invoice and the provisional application that was filed listing both Carter and Ozoeneh as inventors. Carter is listed as having been carbon copied on this letter.
Ozoeneh provides as evidence the supplemental expert report from the state-court litigation of Karl Sawyer, Jr., a patent attorney. One portion of this report states:
I attended a deposition of Mr. Ozoeneh taken under oath, at which Mr. Ozoeneh gave testimony to the effect that he, not Mr. Carter, is the sole inventor of the subject matter in the United States patent application in question. Subsequently, I have received and reviewed a copy of the transcript of such testimony and, in my opinion, Mr. Ozoeneh's testimony establishes that he is the sole inventor of such invention.
Ozoeneh also offers the affidavit and deposition testimony of Jason Miller, the attorney who drafted and filed the provisional application. Miller states in the affidavit that he believes Ozoeneh and Carter were co-inventors based on (1) his review of documents provided by Carter and Ozoeneh; (2) his discussions with the two; and (3) his discussions with his supervisor, Ralph Dougherty.
At deposition, when asked why his notes look to reflect that Carter and Ozoeneh were co-inventors, Miller stated, "at the time these [notes] were taken, that was my understanding." (Doc. No. 45-2 at 5). Miller stated that this understanding was based on "discussions with Mr. Carter and Mr. Ozoeneh." ( Id.). Miller stated later in the deposition, "I do believe that based upon the conversations that I had with Mr. Carter and Mr. Ozoeneh, the documents provided to me, and the Invention Disclosure Form, they both contributed to [Claim 1] as a whole." ( Id. at 8). The questioning then goes on:
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