Ethicon, Inc. v. US Surgical Corp.

• Decision Date: 09 September 1996
• Docket Number: No. 5:89CV00386 (RNC).,5:89CV00386 (RNC).
• Citation: 937 F. Supp. 1015
• Parties: ETHICON, INC. and Inbae Yoon, M.D., Plaintiffs, v. UNITED STATES SURGICAL CORPORATION, Defendant, and Young Jae Choi, Intervenor-Defendant.
• Court: U.S. District Court — District of Connecticut

937 F. Supp. 1015

ETHICON, INC. and Inbae Yoon, M.D., Plaintiffs, v. UNITED STATES SURGICAL CORPORATION, Defendant and Young Jae Choi, Intervenor-Defendant.

No. 5:89CV00386 (RNC).

United States District Court, D. Connecticut.

September 9, 1996.

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Kaare Phillips, Grais & Phillips, New York City, Special Master.

Richard S. Lipman, Schatz & Schatz, Ribicoff & Kotkin, Hartford, CT, Thomas W. Pippert, Richard H. Savage, David F. Dobbins, Jeffrey I.D. Lewis, Kim Sweet, John M. DiMatteo, Erik Haas, Patterson, Belknap, Webb & Tyler, New York City, Eric Harris, Harman A. Grossman, Johnson & Johnson, New Brunswick, NJ, Dion W. Moore, Elizabeth Jane McBride, Peter D. Clark, Williams, Cooney & Sheehy, Bridgeport, CT, for plaintiff Ethicon, Inc.

Paul F. Thomas, Jacob D. Zeldes, Frank J. Silvestri, Jr., Zeldes, Needle & Cooper, Bridgeport, CT, Theresa M. Gillis, Jones, Day, Reavis & Pogue, New York City, Eric J. Lobenfeld, Chadbourne & Parke, New York City, Clark E. Walter, Valerie A. Cohen, J. Paul McGrath, Bradford J. Badke, Harvey Kurzweil, Dewey Ballantine, New York City, Sanford M. Litvack, The Walt Disney Company, Burbank, CA, Beverly Stauffer Knapp, Westport, CT, for defendant U.S. Surgical Corp.

Richard S. Lipman, Schatz & Schatz, Ribicoff & Kotkin, Hartford, CT, Thomas W. Pippert, Richard H. Savage, David F. Dobbins, Jeffrey I.D. Lewis, Kim Sweet, John M. DiMatteo, Erik Haas, Patterson, Belknap, Webb & Tyler, New York City, Eric Harris, Harman A. Grossman, Johnson & Johnson, New Brunswick, NJ, Dion W. Moore, Elizabeth Jane McBride, Peter D. Clark, Williams, Cooney & Sheehy, Bridgeport, CT, Patrick E. Gonya, Jr., Fowler, White, Burnett, Hurley, Banick & Strickroot, Miami, FL, for plaintiff Inbae Yoon.

RULING ON DEFENDANTS' MOTION TO CORRECT INVENTORSHIP

CHATIGNY, District Judge.

This is a patent infringement case brought by Inbae Yoon, M.D., the sole inventor named in the patent, and his exclusive licensee, Ethicon, Inc., against defendant United States Surgical Corporation. The case is before me on a motion by U.S. Surgical and intervenor-defendant Young Jae Choi to correct the patent to add Choi as a coinventor pursuant to 35 U.S.C. § 256. Alternatively, U.S. Surgical seeks a declaration that the patent is unenforceable due to inequitable conduct before the Patent and Trademark Office.¹

A lengthy evidentiary hearing has been held on the numerous factual issues presented by the parties' inventorship dispute. See Ethicon, Inc. v. United States Surgical Corp., 921 F.Supp. 901 (D.Conn.1995) (holding that plaintiffs not entitled to jury trial). Proposed findings of fact and conclusions of law have been submitted by the parties, along with post-hearing briefs.

Courts are reluctant to order correction of the inventorship of patents, especially when misjoinder or nonjoinder of inventors is raised in response to an infringement claim. Nevertheless, after careful consideration of all the evidence presented by both sides, I find that Choi is a coinventor of the subject matter of two claims of the patent, that section 256 permits correction of the patent to add him as a coinventor and that Choi is not barred from obtaining correction of the patent by laches or equitable estoppel.

I. Background

The patent in question is United States Patent No. 4,535,773 (the '773 patent), entitled "Safety Puncturing Instrument And Method." The patent claims surgical puncturing instruments, known as "trocars," with certain mechanical and electronic components designed to reduce the danger to patients posed by use of conventional trocars. The parties refer to the instruments claimed in the patent as "safety trocars."

In June 1989, Yoon and Ethicon commenced this action against U.S. Surgical alleging infringement of claims 34 and 50 of the '773 patent. At a deposition in April 1990, Yoon was shown a handwritten document dated August 20, 1975, entitled "Flow Chart of the Procedure," relating to use of a "safety trocar system." DX 29.² See USSC's October 15, 1992 Motion to Correct Inventorship, Appendix 1, Ex. 3, pp. 112-117. Yoon testified that the document had been prepared in part by Choi, whom he described as an "electric technician" with "expertise in sensors," during a trip Yoon made to South Korea in 1975. Yoon testified that he planned to hire Choi but never did. Asked whether Choi did any work for him, Yoon answered, "Some of the sensor area, but was discussing sic stage." Asked whether Choi did anything "relating to trocars," Yoon replied, "No, no."

In mid-1992, counsel for U.S. Surgical contacted Choi regarding his involvement with Yoon and safety trocars. Discussions between U.S. Surgical's counsel and Choi led to an agreement dated September 3, 1992. DX 123. In that agreement, Choi granted U.S. Surgical an exclusive license to practice his "trocar related inventions"; authorized U.S. Surgical to bring an action to correct the patent to add him as a coinventor; promised to assist U.S. Surgical in connection with the action by providing information and testimony; and agreed to join the action as a party. U.S. Surgical agreed to pay Choi $300,000 on execution of the agreement and make future payments to him of up to $1 million contingent on the outcome of the litigation.

On October 15, 1992, U.S. Surgical filed the instant motion seeking correction of the inventorship of the patent. U.S. Surgical and Choi contend that Choi is a coinventor of four of the patent's fifty-five claims.

Yoon and Ethicon acknowledge that Choi worked with Yoon on a project that led to issuance of the '773 patent but deny that he is a coinventor. They also argue that Choi should be barred from obtaining correction of the patent because he (1) failed to act with due diligence in asserting his coinventorship claim and (2) caused Yoon to have a reasonable belief that no such claim would ever be presented, which Yoon relied on in entering into his licensing agreement with Ethicon.

To obtain correction of the patent, U.S. Surgical and Choi must prove by clear and convincing evidence that Choi made an inventive contribution to the final conception of the subject matter of at least one claim of the patent.³ At the hearing, they presented the testimony of the following witnesses: Choi; Yoon; Professor Donald S. Chisum, an expert in patent law; Professor Martin F. Schlecht, an expert in electrical engineering; and Lyndal L. Shaneyfelt, an expert examiner of questioned documents.

Yoon and Ethicon have no burden of proof except with regard to their reliance on the doctrines of laches and equitable estoppel. At the hearing, they presented the testimony of Yoon; Mrs. Yoon; Eph Konigsberg, a manufacturer of biomedical instruments;⁴ Robert E. Bushnell, a patent attorney who represented Yoon in connection with obtaining the '773 patent; Tipton D. Jennings, IV, a patent attorney who represented Yoon in certain patent matters in the 1970's and 1980's; Melvin C. Garner, an intellectual property lawyer who is also an electrical engineer; and James R. Glover, a financial planning consultant who assisted Yoon in connection with licensing negotiations involving the '773 patent.

II. Findings of Fact

A. The Parties

1. Yoon is a physician specializing in obstetrics and gynecology. He was born in South Korea and graduated from medical school there in 1961. He has engaged in private practice in Maryland since 1970 and has worked extensively in the field of endoscopic surgery. He is the sole inventor named in numerous patents relating to devices used in endoscopic surgery.

Yoon has no formal education in electronics or engineering. Since the mid- to late 1970's, he has been aware of the existence of various types of sensors and interested in their potential application in the practice of gynecology. However, he does not understand basic terminology relating to electronics and is incapable of drawing circuits. Mindful of the limited nature of his own knowledge, he has looked for people with expertise in electronics and engineering to assist him in connection with his projects. Prior to meeting Choi, he disclosed no use of electronics in connection with his patented inventions.⁵

2. Ethicon is a New Jersey corporation with a principal place of business in New Jersey. On June 27, 1988, Yoon granted Ethicon an exclusive license under the '773 patent. DX 18, DX 19. Pursuant to the licensing agreement, as amended, Ethicon manufactures and sells a safety trocar. The product has been a commercial success. To date, Ethicon has paid Yoon more than $15 million in royalties in connection with the '773 patent.

3. U.S. Surgical is a Delaware corporation with a principal place of business in Connecticut. It also manufactures and sells a safety trocar.

4. Choi is a resident of Maryland. Like Yoon, he was born and educated in South Korea. He matriculated at a university there for a period of time, taking courses in physics, chemistry and electrical engineering, but did not get a degree. From 1973 to 1979, he held a series of jobs in South Korea working in consumer electronics. In April 1979, he emigrated to the United States. Since then, he has been employed in a number of different positions involving research and development activities relating primarily to electronic devices. At the time of the hearing, he was self-employed as a consultant. He has never been named the inventor of any patent.

Choi does not have Yoon's credentials as a scientist or inventor. However, he was qualified to collaborate with Yoon in a joint effort to develop a safer trocar because of his training and experience in electronics.

B. Surgical Trocars

5. A trocar is a surgical puncturing instrument used in endoscopic surgery. Endoscopic surgery is a minimally invasive surgical technique whereby access is gained to the interior of an anatomical cavity by one or more small punctures in the cavity wall. Trocars are used in surgery requiring...