Scott v. Zimmer, Inc.

Decision Date27 August 2012
Docket NumberC.A. No. 10–772 GMS.
Citation889 F.Supp.2d 657
PartiesW. Norman SCOTT and Giles R. Scuderi, Plaintiffs, v. ZIMMER, INC. and Zimmer Technology, Inc., Defendants.
CourtU.S. District Court — District of Delaware

OPINION TEXT STARTS HERE

Karen Jacobs Louden, Jeremy A. Tigan, Morris, Nichols, Arsht & Tunnell, Wilmington, DE, Andrew M. Grodin, Pro Hac Vice, Jacob W. Buchdahl, Pro Hac Vice, Joel N. Bock, Pro Hac Vice, Shawn J. Rabin, Pro Hac Vice, for Plaintiffs.

Jason James Rawnsley, Richards, Layton & Finger, PA, Wilmington, DE, Anne Shea Gaza, Brent P. Ray, Pro Hac Vice, Bryan S. Hales, Pro Hac Vice, Bryce A. Budin, Pro Hac Vice, David W. Higer, Pro Hac Vice, Gregory Blair Sanford, Pro Hac Vice, Jessica C. Kaiser, Pro Hac Vice, for Defendants.

MEMORANDUM

GREGORY M. SLEET, Chief Judge.

I. INTRODUCTION

In this correction of inventorship action, plaintiffs W. Norman Scott, M.D., (Dr. Scott) and Giles R. Scuderi, M.D., (“Dr. Scuderi” or collectively, “the plaintiffs) seek to add themselves as inventors of U.S. Patent No. 6,123,729, U.S. Patent No. 6,402,786, and U.S. Patent No. 6,319,283 (“the patents”) presently assigned to defendants Zimmer, Inc., and Zimmer Technology, Inc. (collectively “the defendants or “Zimmer”). Dr. Scuderi also seeks to rescind an agreement with Zimmer based on the doctrine of mutual mistake. The court held a five-day bench trial in this matter on June 25 through June 29, 2012. Presently before the court are the parties' post-trial proposed findings of fact and conclusions of law. (D.I. 88 & 90.)

Pursuant to Fed.R.Civ.P. 52(a), and after having considered the entire record in this case and the applicable law, the court concludes that Dr. Scott and Dr. Scuderi are not inventors of U.S. Patent No. 6,123,729, U.S. Patent No. 6,402,786, or U.S. Patent No. 6,319,283, and that that Dr. Scuderi cannot rescind his agreement with Zimmer. These findings of fact and conclusions of law are set forth in further detail below.

II. FINDINGS OF FACT1A. The parties

1. W. Norman Scott, M.D. is an individual domiciled in the State of New York with a residence at 941 Park Avenue, New York, NY. Dr. Scott is an orthopedic surgeon and a director and co-founder of the Insall–Scott–Kelley Institute (“ISK”).

2. Giles R. Scuderi, M.D. is an individual domiciled in the State of New York with a residence at 56 Second Street, Garden City, NY. Dr. Scuderi is an orthopedic surgeon and a director at ISK.

3. Zimmer Inc. is a Delaware corporation with a principal office at 345 East Main Street, Warsaw, IN. 4. Zimmer Technology, Inc. is a Delaware corporation with a principal office at 345 East Main Street, Warsaw, IN.

B. Relevant Persons

5. Dr. John Insall was an orthopedic surgeon and a co-founder of ISK.

6. Cary Reeves is a patent attorney formerly employed by Zimmer's legal department.

7. Paul Schoenle is an attorney formerly employed by Zimmer's legal department.

8. Todd Dawson is a patent attorney formerly employed by Zimmer's legal department.

9. Jacque Wilson is a patent attorney formerly employed by Zimmer's legal department.

10. Mark Heldreth is a former Zimmer employee.

11. Roy Hori is a former Zimmer employee.

12. Kyoko Okhuni is a former Zimmer employee.

13. Steve Zawadski is a current Zimmer employee.

14. Vince Webster is a current Zimmer employee.

15. Audrey Beckman is currently the Senior Vice President of the Zimmer Institute at Zimmer.

16. Audrey Beckman's married name was Audrey Patmore.

17. Dr. William Rohr is a former Zimmer employee.

18. Christopher McLean is a current Zimmer employee.

19. Linggawati Tanamal is a former Zimmer employee.

20. Clayton Miller is a former Zimmer employee.

21. Mark Lazzeri is a former Zimmer employee.

22. Todd Davis is a former Zimmer employee.

23. Joseph Topmiller is an attorney employed by Zimmer.

24. Elizabeth “Betzy” Keiley is an attorney formerly employed by Zimmer's legal department.

25. Jennifer Martiniez is a current employee at Zimmer.

26. Kathleen Lenhardt is the business director of ISK.

27. Deborah Lans is an attorney at Cohen Clair Lans Greifer & Thorpe LLP.

28. David Lerner is an attorney at Morrison Cohen LLP.

C. The '729 Patent

29. U.S. Patent No. 6,123,729 (the “'729 Patent”) entitled “Four Compartment Knee” issued on September 26, 2000, from U.S. Patent Application No. 09/037,417 filed March 10, 1998. U.S. Patent No. 6,123,729 lists John N. Insall, Mark Heldreth, Vince Webster, Steve Zawadski, Roy Yoshikazu Hori, Audrey Beckman, and William Rohr as inventors.

30. The expiration date for the '729 Patent is March 10, 2018.

D. The '786 Patent

31. U.S. Patent No. 6,402,786 (the “'786 Patent”) entitled “Four Compartment Knee” issued on June 11, 2002, from U.S. Patent Application No. 09/606,608 filed June 29, 2000. U.S. Patent No. 6,402,786 lists John N. Insall, Mark Heldreth, Vince Webster, Steve Zawadski, Roy Yoshikazu Hori, Kyoko Ohkuni, Audrey Beckman, and William Rohr as inventors. U.S. Patent Application No. 09/606,608 is a divisional application of, and claims priority to, U.S. Patent Application No. 09/037,417, which is the application that led to the '729 Patent.

32. The expiration date for the '786 Patent is March 10, 2018.

E. The '283 Patent

33. U.S. Patent No. 6,319,283 (the “'283 Patent”) entitled “Tibial Knee Component with a Mobile Bearing” issued on November 20, 2001, from U.S. Patent Application No. 09/346,850 filed July 2, 1999. U.S. Patent No. 6,319,283 lists John Insall, Audrey (Patmore) Beckman, Christopher McLean, Linggawati Tanamal, and Clayton R. Miller as inventors.

34. The expiration date for the '283 Patent is July 2, 2019.

III. DISCUSSION

The court has subject matter jurisdiction over this matter pursuant to 28 U.S.C. §§ 1331, 1338(a) and 1367(a). The court has subject matter jurisdiction over Zimmer's declaratory judgment counterclaims under 28 U.S.C. §§ 1331, 1338(a) and 1367(a), as well as, 28 U.S.C. §§ 2201 and 2202. Venue is proper under 28 U.S.C. §§ 1391(b) and 1391(c). After having considered the entire record in this case, the substantial evidence in the record, the parties' post-trial submissions, and the applicable law, the court concludes that the patents should not be corrected to add the plaintiffs as inventors, and that Dr. Scuderi and Zimmer did not make a mutual mistake to render their agreement rescindable. The court's reasoning follows.

A. Correction of Inventorship

The named inventors on an issued patent are presumed correct. Amax Fly Ash Corp. v. United States, 514 F.2d 1041, 1047 (Ct.Cl.1975). People not named, are presumed not to be inventors. Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456,1460 (Fed.Cir.1998). Thus, plaintiffs seeking to add themselves as inventors “must meet the heavy burden of proving [their] case by clear and convincing evidence.” Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1358 (Fed.Cir.2004); see also Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed.Cir.1997). This standard responds to some plaintiffs' temptation “to reconstruct, in a manner favorable to their own position, what their state of mind may have been years earlier,” or “to reconstruct, so as to further their own position, the extent of their contribution to the conception of the invention.” Hess v. Adv. Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed.Cir.1997).

To be an inventor, one must contribute to the conception of the invention. Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227–28 (Fed.Cir.1994). “Conception is defined as ‘the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention.’ Stern v. Trs. of Columbia Univ., 434 F.3d 1375, 1378 (Fed.Cir.2006). Thus, plaintiffs must show that they each individually made a “contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and [did] more than merely explain to the real inventors well-known concepts and/or the current state of the art.” Acromed Corp. v. Sofamor Danek Grp., Inc., 253 F.3d 1371, 1379 (Fed.Cir.2001). A plaintiff's contribution must be to the conception of the claims, not something outside of the claims ( e.g., unclaimed aspects of the specification). Eli Lilly, 376 F.3d at 1362–63;Ethicon, 135 F.3d at 1461–63. A plaintiff's contribution also must have been something more than what is in the prior art and more than an exercise of normal skill in the art, without an inventive act. Eli Lilly, 376 F.3d at 1362;Fina, 123 F.3d at 1473.

Participation in reduction to practice is insufficient to make a plaintiff an inventor. Vanderbilt Univ. v. ICOS Corp., 601 F.3d 1297, 1303 (Fed.Cir.2010). [A] person is a joint inventor only if he contributes to the conception of the claimed invention.” Eli Lilly, 376 F.3d at 1358–59;Ethicon, 135 F.3d at 1460.

Furthermore, plaintiffs' testimony regarding their own inventorship claim “is regarded with skepticism” and “cannot, standing alone, rise to the level of clear and convincing proof.” Price v. Symsek, 988 F.2d 1187, 1194 (Fed.Cir.1993); Ethicon, 135 F.3d at 1461. As such, plaintiffs “must supply evidence to corroborate [their] testimony.” Ethicon, 135 F.3d at 1461;Singh v. Brake, 222 F.3d 1362, 1367 (Fed.Cir.2000). Corroboration is determined under a “rule of reason” analysis, i.e., the court evaluates “all pertinent evidence” to determine “the credibility of the [alleged] inventor's story.” Ethicon, 135 F.3d at 1461. “Reliable evidence of corroboration preferably comes in the form of physical records that were made contemporaneously with the alleged prior invention.” Trovan, Ltd. v. Sokymat SA, Irori, 299 F.3d 1292, 1302 (Fed.Cir.2002). Further, one co-plaintiff's testimony cannot corroborate another's testimony, and vice versa. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1171 (Fed.Cir.2006) (“One consequence of the independence requirement is that testimony of one [alleged] co-inventor cannot be used to help corroborate the testimony of another.”).

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