University of W.Va. Bd. of Trustees v. Vanvoorhies

• Decision Date: 17 February 2000
• Docket Number: No. CIV. A. 1:97-CV-144.,CIV. A. 1:97-CV-144.
• Citation: 84 F.Supp.2d 759
• Court: U.S. District Court — Northern District of West Virginia
• Parties: The UNIVERSITY OF WEST VIRGINIA BOARD OF TRUSTEES, Plaintiff, v. Kurt L. VanVOORHIES, Defendant, v. West Virginia University Research Corporation, et al.

84 F.Supp.2d 759

The UNIVERSITY OF WEST VIRGINIA BOARD OF TRUSTEES, Plaintiff, v. Kurt L. VanVOORHIES, Defendant, v. West Virginia University Research Corporation, et al.

No. CIV. A. 1:97-CV-144.

United States District Court, N.D. West Virginia, Martinsburg Division.

February 17, 2000.

Andrew G. Fusco, The Fusco Legal Group, Morgantown, WV, David E. Tungate, Kirk D. Houser, Eckert, Seamans, Cherin & Mellott, Pittsburgh, PA, Arnold P. Silverman, Eckert, Seamans, Cherin & Mellott, LLC, Pittsburgh, PA, for Plaintiff.

William A. Kolibash, Phillips, Gardill, Kaiser & Altmeyer, Wheeling, WV, Kenneth A. Martin, Kurt M. Rylander, Martin & Rylander, P.C., Washington, DC, for Defendant Kurt Vanhoorhies.

Gordon H. Copland, Steptoe & Johnson, Clarksburg, WV, Megan D. Dortenzo, Steptoe & Johnson, Clarksburg, WV, Rhonda L. Miller, MacCorkle, Lavender & Casey, PLLC, Morgantown, WV, for Third-Party Defendants.

Braun A. Hamstead, Hamstead & Associates, LC, Charles Town, WV, William A. Birdwell, Birdwell & Janke, LLP, Portland, OR, for Interested Party IAS Communications.

MEMORANDUM OPINION AND ORDER

BROADWATER, District Judge.

On October 8, 1999, came the parties, by counsel, for a combined hearing on the parties' motions for summary judgment.¹ These motions were filed by the plaintiff, the University of West Virginia Board of Trustees (WVU) and the third-party defendant, West Virginia University Research Corporation (WVURC),² the defendant and third-party plaintiff, Kurt L. VanVoorhies (VanVoorhies),³ and the third party defendants, Dr. James E. Smith (Smith)⁴ and Integral Concepts, Inc. (ICI).⁵ After the summary judgment hearing,⁶ Magistrate Judge Seibert issued an Order⁷ denying VanVoorhies' motion to compel the deposition of Smith.⁸ VanVoorhies objected to the Magistrate Judge's Order.⁹ The Court modified this Order¹⁰ by conducting an in court deposition of Smith on November 18, 1999.¹¹

Thereafter, the Court issued an Order¹² granting partial summary judgment in favor of the plaintiff and third-party defendants as to claims seven, eight, nine and thirteen of the Amended Counterclaim¹³ and Third-Party Complaint.¹⁴ As well, counsel for WVU also subsequently filed a motion to dismiss pursuant to FED. R. CIV. P. 12(h)(3).¹⁵ The Court held a telephonic status conference addressing, inter alia, this motion,¹⁶ on January 5, 1999.¹⁷

After considering the parties' briefs, hearing the arguments of counsel, and reviewing the record herein, this Court is of the opinion, for the reasons set forth below, that summary judgment should be granted as follows:

1. In favor of WVU, WVURC, Smith, and ICI as to the First Claim, Fifteenth Claim, and Fourteenth Claim of the Amended Counterclaim¹⁸ and Third-Party Complaint.¹⁹

2. In favor of WVU as to Counts I and IV of the Complaint.²⁰

The Court's ruling is based on the following undisputed material facts as determined after the Court's thorough review of an extensive documentary record.

I. STATEMENT OF MATERIAL FACTS.

VanVoorhies and Smith are identified as co-inventors in United States Patent No. 5,442,369 (Patent '369). Patent '369 covers a contrawound toroidal antenna.²¹ VanVoorhies worked on the technology in Patent '369 while he was a Graduate Research Assistant at WVU.

VanVoorhies became acquainted with Smith during VanVoorhies' first visit to WVU in 1987, as a Society of Automotive Engineers lecturer. At that time, VanVoorhies was employed by General Motors as a Senior Design Engineer. During a tour of WVU's facilities, VanVoorhies viewed the projects with which Smith was involved.

Maintaining contact with Smith over the subsequent years, VanVoorhies decided to enroll in graduate school at WVU in 1990 to pursue a Ph.D. in engineering. VanVoorhies left a well paying job as a Director of Safety Systems for Automotive Systems Laboratory, Inc. At this laboratory, VanVoorhies managed a multi-million dollar project for automotive airbag inflator development.

In an unsolicited letter to the Chairman of the WVU Mechanical and Aerospace Engineering Department, dated February 6, 1992, VanVoorhies stated the following:

I left that job [as a Director of Safety Systems of Automotive Systems Laboratories, Inc.,] to pursue a Ph.D. in engineering, after having applied to only one school — WVU — because of the opportunity to work with one professor — Dr. James E. Smith. I am glad to have made that decision and feel fortunate to have Dr. Smith as my graduate advisor and committee chairman. I have subsequently worked for Dr. Smith since August 1990 as a Graduate Research Assistant.²²

From August 1990 through December 1993, WVU paid VanVoorhies a $1,200 per month stipend for his services as a Graduate Research Assistant and for his work on a Ph.D. dissertation topic. Smith, as VanVoorhies' research advisor, supervised VanVoorhies as both a Graduate Research Assistant and a Ph.D. candidate.²³

In August 1990, Smith assigned VanVoorhies the task of reviewing prior art work related to wireless power transmission. This included a specific low frequency Ground Wave Emergency Network system antenna project (GWEN project) related to wireless power. The GWEN project included an investigation of a prior art antenna. This prior art antenna was the Corum Element antenna. Professor James F. Corum obtained U.S. Patent Nos. 4,622,558 and 4,751,515 for his torodial helical antennas developed while working in WVU's Electrical Engineering Department. The prior investigation of the Corum Element antenna could not prove that such antenna was a viable or functional candidate for the GWEN project. Smith was interested in ascertaining why the prior art antenna was not functional.

Smith met with VanVoorhies frequently regarding the problems with the prior art antenna. Smith maintains that he instructed VanVoorhies to work on specific changes to the antenna.²⁴ Smith also provided other technical suggestions to VanVoorhies.

VanVoorhies completed his original contrawound toroidal helical antenna invention by June 3, 1991. VanVoorhies reviewed the project with Smith. Thereafter, Smith signed VanVoorhies' log book.

VanVoorhies was aware of invention releases in reference to his employment experiences prior to enrolling in WVU's Ph.D. program. Consequently, at that time, VanVoorhies asked Smith about VanVoorhies' own invention rights to his contrawound torodial helical antenna. In response, Smith informed VanVoorhies about WVU's Patent Policy. VanVoorhies subsequently acknowledged that he was advised that WVU's Patent Policy gave inventors a thirty percent (30%) royalty.

The WVU Patent Policy has been in effect since 1985. This policy applied to "all full-time and part-time members of the faculty and staff, and all other employees of the University including graduate and undergraduate students and fellows of the University."²⁵ The Patent Policy provided for committing support for research and invention at WVU and a structure for compensation and incentives to inventors at WVU.²⁶ The Patent Policy required the inventor to cooperate fully with the University in all respects for the purpose of preparing, filing, and prosecuting patent applications and maintaining resultant patents.²⁷

In VanVoorhies' letter to WVU's patent lawyers, dated May 27, 1994, VanVoorhies stated that he elected to pursue the invention within WVU for several reasons. VanVoorhies recognized the need to test the invention at WVU, and "the possibility (probability)" for litigation concerning the prior art Corum antenna and his antenna.²⁸ Furthermore, VanVoorhies was concerned with the economies of obtaining a patent and his interest in graduating from WVU as soon as possible.²⁹

In November 1991, VanVoorhies completed the Disclosure of Invention form associated with WVU's Patent Policy. VanVoorhies submitted the form to Smith, listing Smith as a co-inventor. Smith signed the form on November 8, 1991. VanVoorhies signed the form on November 12, 1991.³⁰ There are no contemporaneously written documents that show any objection by VanVoorhies to listing Smith as a co-inventor.

Thereafter, WVU first sent the Disclosure of Invention to Research Corporation Technologies (Research Corp.), an Arizona Corporation. Research Corp. reviewed the Disclosure of Invention for commercial application. However, on May 4, 1992, Research Corp. rejected the opportunity for a license of the technology.

In June 1992, Smith incorporated Integral Concepts, Inc. (ICI) for the purposes of establishing a consulting business. ICI is a company wholly owned by Smith. The plan to incorporate ICI started several months earlier. However, the incorporation of ICI was delayed due to the uncompleted paperwork by Smith's attorney.

VanVoorhies next prepared a research proposal to Rome Laboratory at Griffiss Air Force Base. However, like Research Corp., Rome Laboratory declined this offer.

During this period, VanVoorhies, along with Smith and two other inventors, submitted an additional Disclosure of Invention.³¹ This Disclosure of Invention, dated March 24, 1992, covered a "Quarter-wave coaxial cavity resonator as an ignition source."³² This invention was subsequently disclosed and claimed in U.S. Patent Application Serial No. 08/164,600 (Application '600) and later issued as Patent No. 5,361,737. VanVoorhies, along with the two other inventors, assigned this invention to WVU.³³ VanVoorhies did not object to the co-inventorship of this patent nor the assignment of this patent to WVU.

In November 1992, VanVoorhies and Smith reviewed the draft antenna patent claim. After several revisions, VanVoorhies and Smith signed the patent application as co-inventors. On December 15, 1992, Patent Application No. 07/992,970 (Application '970) was filed with the U.S. Patent and Trademark Office (Patent Office). Application '970 was subsequently issued as Patent '369 on August 15, 1995.

On February 5, 1993, VanVoorhies and Smith, by a written assignment, assigned all rights in the original...