Goldwasser v. Smith Corona Corp.

• Decision Date: 10 March 1993
• Docket Number: Case No. 5-91-CV-21 (JAC).
• Citation: 817 F. Supp. 263
• Parties: Eric P. GOLDWASSER v. SMITH CORONA CORPORATION and Smith Corona Acer v. INTERNATIONAL BUSINESS MACHINES CORPORATION.
• Court: U.S. District Court — District of Connecticut

817 F. Supp. 263

Eric P. GOLDWASSER v. SMITH CORONA CORPORATION and Smith Corona Acer v. INTERNATIONAL BUSINESS MACHINES CORPORATION.

Case No. 5-91-CV-21 (JAC).

United States District Court, D. Connecticut.

March 10, 1993.

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Michael M. de Angeli, Rockville, MD, Gene S. Winter, St. Onge, Steward, Johnston & Reens, Stamford, CT, for plaintiff.

Richard A. Horgan, Sheila Ozalis, Winthrop, Stimson, Putnam & Roberts, Stamford, CT, Milton Wolson, Malina & Wolson, New York City, for defendants Smith Corona Corp. and Smith Corona Acer.

Evan R. Chesler, Cravath, Swaine & Moore, New York City, for intervenor and counterclaim plaintiff Intern. Business Machines Corp.

RULING ON CROSS-MOTIONS FOR SUMMARY JUDGMENT

JOSÉ A. CABRANES, Chief Judge:

Pending before the court are plaintiff Eric P. Goldwasser's Motion for Summary Judgment On the Issues of Bars sic to IBM's Claim of Ownership (filed April 27, 1992) and International Business Machines Corporation's Motion for Summary Judgment for Ownership of U.S. Patent 4,891,786 (filed May 18, 1992).

Background

Plaintiff Eric P. Goldwasser ("Goldwasser") alleges that defendants Smith Corona Corporation and Smith Corona Acer infringed U.S. Letters Patent 4,891,786 (the "'786 patent"). The U.S. Patent and Trademark Office ("PTO") issued the '786 patent to Goldwasser on January 2, 1990. Defendants Smith Corona and Smith Corona Acer assert that plaintiff lacks standing to sue for infringement and contend that the '786 patent should have been assigned by plaintiff to IBM as part of plaintiff's employment agreement with IBM. The court granted IBM's motion to intervene on December 20, 1991. IBM asserted a counterclaim against Goldwasser for ownership of the '786 patent. In its counterclaim, IBM seeks money damages as well as an order assigning the '786 patent to IBM.

Review of Undisputed Facts

Goldwasser was an employee of IBM from July 1, 1968 to June 29, 1984.¹ As a condition of his employment, Goldwasser signed an Employee Confidential Information and Invention Agreement ("the Employee Agreement").² The Employee Agreement states in relevant part that plaintiff would assign to IBM all "right, title and interest in any invention or idea, patentable or not" relating "in any manner to the actual or anticipated business or ... actual or anticipated research and development of IBM" that is "made or conceived" while plaintiff is "working in IBM."³ The Employee Agreement required plaintiff to disclose any such inventions or ideas to "the local IBM Patent Operations Manager" and execute any appropriate papers presented to him by IBM.⁴

In 1979 and 1980, Goldwasser worked on a variety of tasks at the IBM Research Division headquarters in Yorktown Heights, New York.⁵ The Research Division is responsible for conducting pure and applied research, both in basic fields of science and in particular technology areas of potential application to IBM's future products.⁶ Goldwasser performed research on human factors of speech recognition, on speech disambiguation, and on an IBM speech filing system.⁷

In 1981 and 1982, Goldwasser worked in IBM's Field Engineering Division as an "interface" between information systems (IBM field engineers who worked directly with the customers) and planning (IBM staff programmers who developed programs to meet customer needs).⁸ IBM's Field Engineering Division is responsible for servicing IBM computer customers. Goldwasser's job involved taking the customer requirements from field engineering personnel and translating them into programming projects.⁹

In 1982, IBM reassigned Goldwasser to a position as a staff programmer within IBM's Customer Engineering Division, which subsequently merged with the Field Engineering Division.¹⁰ He continued in that position until he left IBM in June 1984. In this last position, Goldwasser evaluated the usefulness of various computer programs for IBM's Field Engineering Division,¹¹ including an evaluation of the IBM personal computer.¹²

While Goldwasser worked in these various positions, he invented certain improvements in word processing systems, specifically relating to text entry methods—that is, software programs designed to enter and manipulate text by the use of a computer system.¹³ Goldwasser conceived of and reduced to practice the inventions which would later be embodied in two patents—U.S. Patent 4,559,598 ("the '598 patent") and the '786 patent.¹⁴

Only two claims—claims 74 and 78—of the '786 patent are at issue in this lawsuit.¹⁵ Claim 74 is an independent claim describing a spelling help method, wherein a list of words described on a screen may be added to text by the user.¹⁶ Claim 78 is a dependent claim specifying that the method of Claim 74 can be activated or deactivated by pressing a key on the keyboard.¹⁷

On February 19, 1983, Goldwasser made a software submission entitled "PointWriter" to IBM's Software Submissions Program.¹⁸ Under this program, IBM evaluated software in order to determine whether it had an interest in marketing the software for use with IBM's personal computer products.¹⁹ In August 1983, the Software Submissions Program declined to market Goldwasser's PointWriter program.²⁰

On February 22, 1983, while still employed at IBM, Goldwasser filed a United States patent application naming himself and Mrs. Goldwasser as joint inventors of the PointWriter program.²¹ This application would later become the '598 patent, which the PTO issued on December 17, 1985, after Goldwasser had left IBM; the '598 patent named plaintiff and his wife as joint inventors.²² The Official Gazette of the United States Trademark Office of that date included a notice indicating the issuance of the '598 patent,²³ and a December 21, 1985 article in The New York Times noted the issuance of the patent to plaintiff and Mrs. Goldwasser.²⁴

As noted above, the '598 patent is not the patent in dispute. The parties have signed a stipulation tolling the statute of limitations for the '598 patent and "any patent other than the '786 patent as of December 12, 1991."²⁵ However, the '598 patent and the '786 patent are related in the following way: the application for the '786 patent is a so-called "continuation-in-part" application — a "continuation-in-part" of the '598 patent. See 37 C.F.R. §§ 1.62 and 1.78.²⁶

On June 29, 1984, Goldwasser left IBM.²⁷ It is not disputed that as part of his "exit interview," Goldwasser signed a Statement of Understanding, in which he represented that he had disclosed all of his inventions and ideas to either his manager and/or an IBM Patent Attorney.²⁸ For the purposes of the present motion, "plaintiff admits that while the PointWriter program and the subject matter of the PointWriter patent application which later became the '598 patent were fully disclosed to IBM on a number of occasions, none of these disclosures were made directly to an IBM Patent Operations Manager."²⁹ In addition, plaintiff concedes that he never specifically advised IBM that he and Mrs. Goldwasser had filed the '598 patent application.³⁰

On June 25, 1985, almost a year after his departure from IBM, Goldwasser filed an application for what became the '786 patent —the patent in dispute here.³¹ He filed for this patent solely in his name. The PTO issued the '786 patent on January 2, 1990.³² Both parties concede that the invention embodied in claims 74 and 78 of the '786 patent was both conceived of and reduced to practice while Goldwasser was an IBM employee.³³

Standard of Review

Summary judgment shall be granted "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits ... show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). "The mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986) (emphasis in original). While the court must view the inferences to be drawn from the facts in the light most favorable to the party opposing the motion, Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986), a party may not "rely on mere speculation or conjecture as to the true nature of the facts to overcome a motion for summary judgment." Knight v. U.S. Fire Ins. Co., 804 F.2d 9, 12 (2d Cir.1986) (Feinberg, C.J.), cert. denied, 480 U.S. 932, 107 S.Ct. 1570, 94 L.Ed.2d 762 (1987). The non-moving party may defeat the summary judgment motion by producing sufficient specific facts to establish that there is a genuine issue of material fact for trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). Finally, "`mere conclusory allegations or denials'" in legal memoranda or oral argument are not evidence and cannot by themselves create a genuine issue of material fact where none would otherwise exist. Quinn v. Syracuse Model Neighborhood Corp., 613 F.2d 438, 445 (2d Cir.1980) (quoting SEC v. Research Automation Corp., 585 F.2d 31, 33 (2d Cir.1978)).

Goldwasser's motion is based on the statute of limitations, laches and estoppel, as to which claims he must demonstrate that there are no genuine issues of material fact in dispute and that the claims are barred as a matter of law. If IBM can show sufficient evidence in the record to allow a reasonable jury to find in IBM's favor with respect to the statute of limitations, laches and estoppel issues, Goldwasser's motion must be denied.

IBM's motion for summary judgment asserts that it is the owner of the '786 patent. With respect to this claim, IBM is the moving party and must therefore demonstrate that there are no genuine issues of material...