University of West Virginia v. Vanvoorhies, 00-1440.

Decision Date30 January 2002
Docket NumberNo. 00-1440.,No. 00-1478.,00-1440.,00-1478.
Citation278 F.3d 1288
PartiesUNIVERSITY OF WEST VIRGINIA, BOARD OF TRUSTEES, Plaintiff-Appellee, and West Virginia University Research Corporation, Third Party Defendant-Appellee, and James Earl Smith and Integral Concepts, Inc., Third Party Defendants-Appellees, v. Kurt L. VANVOORHIES, Defendant/Third Party Plaintiff-Appellant.
CourtU.S. Court of Appeals — Federal Circuit

David E. Tungate, Eckert Seamans Cherin & Mellott, of Pittsburgh, PA, argued for plaintiff-appellee and third party defendant-appellee. With him on the brief were Arnold B. Silverman, and Kirk D. Houser. Of counsel on the brief were Andrew G. Fusco, and Jeffrey A. Ray, The Fusco Legal Group, L.C., of Morgantown, WV.

Gordon H. Copland, Steptoe & Johnson, PLLC, of Clarksburg, WV, argued for third party defendants-appellees. With him on the brief was Megan D. Dortenzo.

Kenneth A. Martin, Martin & Adams, of Washington, DC, argued for defendant/third party plaintiff-appellant. With him on the brief was Jennifer C. Adams. Of counsel on the brief was William A. Kolibash, Phillips, Gardill, Kaiser & Altmayer, of Wheeling, WV.

Before LOURIE, RADER, and GAJARSA, Circuit Judges.

LOURIE, Circuit Judge.

Kurt L. VanVoorhies appeals from the decision of the United States District Court for the Northern District of West Virginia granting the University of West Virginia Board of Trustees' ("WVU's") motion for summary judgment that VanVoorhies breached his duty to assign U.S. Patent Applications 08/486,340 and 08/514,609 to WVU. Univ. of W. Va. v. VanVoorhies, 84 F.Supp.2d 759 (N.D.W.Va.2000). He also appeals from the court's grant of WVU's motions for summary judgment on his claims based on fraud, breach of fiduciary duty, breach of contract, and invalid assignment, as well as its grant of WVU's motions to dismiss his quasi-contract claims and his claims under the Racketeer Influenced and Corrupt Organizations Act, 18 U.S.C. § 1962 (2000) ("RICO"). In addition, VanVoorhies appeals from the court's denial of his motions to disqualify WVU's counsel, compel discovery, and vacate the stay of a consolidated case. Because we decide that the district court did not err in concluding that VanVoorhies was obligated to assign his inventions to WVU, and we are not persuaded that it erred in any of its other challenged decisions, we affirm.

BACKGROUND

Dr. VanVoorhies was a Senior Design Engineer for General Motors Corporation before he enrolled in graduate school at WVU in 1990 to pursue a Ph.D. in engineering. VanVoorhies, 84 F.Supp.2d at 762. He went to WVU specifically to work with one particular professor, Dr. James E. Smith, after which Smith and VanVoorhies investigated antennae for wireless power transmission. Id. VanVoorhies' laboratory notebook indicates that he completed an invention for a contrawound toroidal helical antenna ("the first invention") by June 3, 1991. Id.

In November 1991, VanVoorhies submitted an invention disclosure form to WVU describing that invention and listing Smith as a co-inventor. Id. at 763. Smith later testified that he had discussed WVU's patent policy with him prior to submitting that invention disclosure, in June 1991. The WVU policy applies to "University personnel," who are defined as "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." Id. at 762. Under the policy, "[t]he University owns worldwide right, title and interest in any invention made at least in part by University personnel, or with substantial use of University resources, and unless otherwise agreed, this Policy applies to any invention conceived or first reduced to practice under terms of contracts, grants or other agreements." The policy also states that "[t]he inventor shall cooperate fully with the University in all respects; to the evaluation of an invention, the preparation of the filing and prosecution of an application and the transfer of rights in the same as well as the maintenance and protection of any resultant patents." Id. at 762 n. 27. The policy compensates inventors with thirty percent of the net royalty income received after subtracting expenses incurred from the procuring and licensing of the patent rights. Id. at 763.

In November 1992, VanVoorhies and Smith as co-inventors executed a patent application directed to the first invention. Id. at 764. On February 5, 1993, they assigned all rights to that first invention, embodied in U.S. Patent Application 07/992,970, to WVU. Id. The '970 application subsequently issued as U.S. Patent 5,442,369 on August 15, 1995. The written assignment ("'970 assignment") extended as well to all continuation-in-part ("CIP") applications relating to the invention, as follows:

[T]he undersigned does (do) hereby sell, assign, transfer and set over unto said assignee, its successors and assigns the entire right, title and interest in and to said invention or inventions, as described in the aforesaid application, in any form or embodiment thereof, and in and to the aforesaid application; ... also the entire right, title and interest in and to any and all patents or reissues or extensions thereof to be obtained in this or any foreign country upon said invention or inventions and any divisional, continuation, continuation-in-part or substitute applications which may be filed upon said invention or inventions in this or any foreign country; and the undersigned hereby authorize(s) and request(s) the issuing authority to issue any and all patents on said application or applications to said assignee or its successors and assigns.

Id. at 764 n. 35 (emphasis added).

On December 29, 1993, VanVoorhies completed his dissertation and received his doctoral degree from WVU. Id. at 765. VanVoorhies asserts that he then invented a half-wave bifilar contrawound toroidal helical antenna ("the second invention") during the short interval between receiving his Ph.D. and beginning his work as a Post Graduate Research Assistant Professor at WVU on February 1, 1994. Id. In a letter dated October 6, 1994, VanVoorhies, who became a registered patent agent that same month, suggested that WVU file a CIP of the '970 application directed to the second invention. Id. at 766. VanVoorhies later forwarded a preliminary invention disclosure to WVU's patent counsel on January 9, 1995, urging WVU to obtain patent protection on the invention. Id. at 766. However, when WVU sent VanVoorhies a patent application with a declaration and corresponding assignment, VanVoorhies did not respond. Id. WVU nonetheless filed what became U.S. Patent Application 08/486,340 as a CIP of the '970 application on June 7, 1995, listing VanVoorhies as the sole inventor. Id. The application was filed under 37 C.F.R. § 1.47(b), which permits a party with a sufficient interest in an invention to file a patent application when an inventor refuses to execute the application. Id. at 766-67. The United States Patent and Trademark Office ("PTO") subsequently accepted the '340 application after evaluating WVU's entitlement to ownership of the application under the '970 assignment covering CIPs. Id. at 767. The '340 application issued as U.S. Patent 6,028,558 on February 22, 2000. A continuation of that application issued as U.S. Patent 6,204,821 on March 20, 2001.

On August 14, 1995, VanVoorhies filed U.S. Patent Application No. 08/514,609, also directed to the second invention, listing himself as the sole inventor. Id.1 The '609 application, unlike the '340 application, was not designated as a CIP of the original '970 application. He assigned all interest in that application to VorteKx, P.C., of which he is the president and majority shareholder. Id. The '609 application issued as U.S. Patent 5,734,353 on March 31, 1998. U.S. Patent 5,952,978 also issued from a continuation of the '609 application on September 14, 1999.

In June 1992, before the '970 application was filed, Smith incorporated Integral Concepts, Inc. ("ICI"), a consulting business wholly owned by Smith. Id. at 763. Smith's company obtained an exclusive license to the first invention from the licensing division of WVU, West Virginia University Research Corporation ("WVURC"), on April 12, 1994. Id. at 765.

WVU sued VanVoorhies on August 14, 1997, alleging that VanVoorhies breached his duty to assign the second invention to WVU. Id. at 767. VanVoorhies filed extensive counterclaims and a third-party complaint against WVURC, Smith and ICI. Id. He also moved to disqualify WVU's counsel, the law firm of Eckert Seamans Cherin & Mellott ("Eckert"), asserting that Eckert had represented VanVoorhies in connection with the prosecution of the '970 application. Univ. of W. Va. v. VanVoorhies, 33 F.Supp.2d 519, 520 (N.D.W.Va.1998). The district court denied that motion, determining that "[n]one of the usual indicia of an attorney-client relationship are present in this case." Id. at 522.

In his counterclaim, VanVoorhies asserted RICO and implied contract claims against WVU, WVURC, Smith, and ICI, which the district court dismissed on the grounds that: (1) the prime alleged conspirator, WVU, could not formulate the required intent as a government entity for the RICO claim; and (2) the express assignment precluded recovery under any implied contract theory. Univ. of W. Va. v. VanVoorhies, No. 97-CV-144 (N.D.W.Va. Mar. 30, 1999). VanVoorhies also moved to compel discovery, which the district court denied as untimely, but it nevertheless permitted VanVoorhies to conduct a four-hour deposition of Smith. Univ. of W. Va. v. VanVoorhies, No. 97-CV-144 (N.D.W.Va. Nov. 16, 1999).

VanVoorhies further alleged claims for breach of fiduciary duty, breach of contract, and fraud, and sought a declaration of invalidity of the '970 assignment. The district court granted Smith, ICI, and WVURC's ...

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