Chirichillo v. Prasser, 97-C-0814.
| Decision Date | 04 December 1998 |
| Docket Number | No. 97-C-0814.,97-C-0814. |
| Parties | Anthony CHIRICHILLO, Plaintiff, v. Robert PRASSER, Defendant. |
| Court | U.S. District Court — Eastern District of Wisconsin |
Lee W. Shelly, Dominic H. Frinzi, Milwaukee, WI, for Plaintiff.
Kim M. Peterson, Milwaukee, WI, for Defendant.
DECISION AND ORDER
Plaintiff Anthony Chirichillo makes two allegations in this lawsuit: (1) that he was a co-inventor of an invention patented by defendant Robert Prasser and should therefore be named on the patent as a co-inventor, and (2) that Prasser agreed to transfer to Chirichillo stock in the corporation that Prasser established to market the invention, but that Prasser breached this agreement. Jurisdiction is based on 35 U.S.C. § 256, which authorizes federal courts to order the Commissioner of Patents to correctly identify the inventors of a patented invention and on diversity of citizenship. Plaintiff and defendant are citizens of New Jersey and Wisconsin, respectively. Before me now is defendant's motion for summary judgment.
In 1991 Prasser owned a restaurant in Wisconsin where he did much of the cooking. He observed that heat generated by the stoves in the kitchen was released through hoods over the stoves to the air outside. He conceived of the idea of a combination cook stove fluid heater and grease filter, which would capture the thermal energy created by the stove in a fluid circulating throughout the filter and also filter grease. The fluid could be utilized to heat water or air. The idea was to use the heat generated by the stoves in a productive way rather than to lose it to the outside. Prasser worked on the implementation of this idea for the next six months in Wisconsin. In June 1992 he relocated to Colorado where he continued to work on the idea. By February 1993 he developed a prototype of the invention.
Plaintiff Chirichillo is a retired plumber who first met Prasser in August 1993 in Colorado, where plaintiff was visiting his son. Prasser showed the prototype of his invention to Chirichillo. Chirichillo told Prasser that Prasser's creation was a "wonderful invention," but that it needed improvements and had to be made safer. Chirichillo suggested a number of improvements, including copper tubing and various safety valves.
In September 1993 Prasser arranged a meeting regarding the invention with representatives of Modine Manufacturing Company in Racine, Wisconsin. Chirichillo accompanied Prasser to this meeting. Modine was interested in the invention, and in late 1993 Modine developed an improved prototype. In about February 1994 the prototype developed by Modine was installed in a restaurant in Colorado. Subsequently, Modine further refined the product, and the new prototype was installed in a restaurant in Florida.
In October 1993 Prasser filed an application for a patent, and on October 10, 1995, the United States Patent Office issued a patent on the invention to him. In late 1993 or early 1994 Prasser created a corporation, known as Hydro-Hoods, for the purpose of marketing the invention. Prasser initially owned 84% of the stock of this corporation. In 1993 Chirichillo provided financial assistance to Prasser amounting to about $10,000 for the purpose of helping Prasser develop the invention. Chirichillo did not give the money directly to Prasser but rather to his son, Patrick Chirichillo, who lived in Colorado and who passed the money on to Prasser.
In February 1994 Prasser discussed with Patrick Chirichillo an arrangement by which Prasser would give Anthony Chirichillo fifteen shares of Prasser's Hydro-Hood stock. At the time Prasser did not discuss this directly with Anthony Chirichillo, but Patrick advised Anthony of his discussions with Prasser. The parties dispute whether or not an agreement was reached obliging Prasser to transfer stock to Anthony and on the content of any possible agreement. Both parties agree that, if an agreement was reached, it was an oral agreement. The positions of the parties concerning the alleged agreement will be discussed subsequently in greater detail.
Summary judgment is proper if the pleadings, depositions, answers to interrogatories, and admissions on file, together with any affidavits, show that there is no genuine issue of material fact, and that the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).
In analyzing whether a question of fact exists, the court construes the evidence in the light most favorable to the party opposing the motion. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Summary judgment is appropriate against a party who, after adequate time for discovery and in the face of a properly supported summary judgment motion, fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial. Celotex, 477 U.S. at 322, 106 S.Ct. 2548.
A "metaphysical doubt as to the material facts" is insufficient to defeat a motion for summary judgment. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). To defeat a properly supported motion for summary judgment, the opposing party must present specific and sufficient evidence that, if believed by a jury, would actually support a verdict in their favor. Fed.R.Civ.P. 56(e); Anderson, 477 U.S. at 249, 106 S.Ct. 2505. A failure of proof concerning an essential element of the nonmoving party's case necessarily renders all other facts immaterial and makes summary judgment appropriate. Celotex, 477 U.S. at 323, 106 S.Ct. 2548.
A party seeking to be declared a coinventor of a patented invention must prove co-inventorship by "clear and convincing proof." Ethicon v. U.S. Surgical, 135 F.3d 1456, 1461 (Fed.Cir.1998). This standard of proof on the invalidity of a patent must be considered when evaluating the sufficiency of the evidence on a motion for summary judgment. National Presto Indus., Inc. v. West Bend Co., 76 F.3d 1185, 1189 (Fed.Cir.1996). "The heightened standard of clear and convincing evidence, which would be party's burden at trial, is to be considered when evaluating sufficiency of evidence on motion for summary judgment." Id.
This case presents two issues: whether plaintiff is entitled to the status of a co-inventor, and whether plaintiff and defendant entered into an enforceable contract. These issues are governed by different bodies of law. The issue of co-inventorship involves a question of patent law. Since October 1982 the Federal Circuit is the appellate court with jurisdiction over patent law issues. 28 U.S.C. § 1295. Prior to October 1982 the Seventh Circuit had such jurisdiction. Thus, I am bound by Seventh Circuit decisions before 1982 and Federal Circuit decisions thereafter.
Jurisdiction in this case is based both on diversity of citizenship and on the existence of a federal question. In either case, issues arising out of the breach of contract claim are governed by state law. In diversity cases federal courts apply state substantive law. See Erie R.R.Co. v. Tompkins, 304 U.S. 64, 78, 58 S.Ct. 817, 82 L.Ed. 1188 (1938). In federal question cases federal courts apply state substantive law to supplemental state law claims. United Mine Workers of America v. Gibbs, 383 U.S. 715, 725, 86 S.Ct. 1130, 16 L.Ed.2d 218 (1966). The states whose law is potentially applicable to the contract issues are Wisconsin, the forum state, and Colorado, the state where the contract was allegedly entered into. Where the law of two states is essentially the same, I apply the law of the forum state. Railway Express Agency v. Super Scale Models, Ltd., 934 F.2d 135 (7th Cir.1991). The common law of contracts as well as the wording of the statute of frauds, which is relevant to oral contracts, is substantially the same in Wisconsin and Colorado.1 Therefore I will apply Wisconsin law to issues arising out of the breach of contract claim.
A. Co-Inventorship
In order to prove that he is a coinventor plaintiff must overcome a presumption that the inventor named on the patent is the true and only inventor. See Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed.Cir.1997). To overcome this presumption plaintiff must show that he contributed to the conception of the invention. Burroughs Wellcome Co. v. Barr Lab, Inc., 40 F.3d 1223, 1227-28 (Fed.Cir.1994). Conception is the critical factor in determining whether someone is entitled to the status of inventor. Conception is the formation in the mind of the inventor of a definite and permanent idea of the invention. Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed.Cir.1986). An idea is sufficiently definite and permanent when "only ordinary skill would be necessary to reduce the invention to practice without extensive research or experimentation." Burroughs Wellcome, 40 F.3d at 1228.
A patented invention may be the work of two or more joint inventors. See 35 U.S.C. § 116. One does not qualify as a joint inventor by merely assisting the actual inventor after conception of the claimed invention. Ethicon, 135 F.3d at 1460 (citing Sewall v. Walters, 21 F.3d 411, 415 (Fed.Cir.1994)); Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed.Cir.1985) () One who simply provides the inventor with well-known principles does not qualify as a joint inventor. Ethicon, 135 F.3d at 1460 (citing Hess, 106 F.3d at 981). One of ordinary skill in the art who simply reduced the inventor's idea...
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