Opinion
Civil Action No. 01-7158
March 12, 2004
MEMORANDUM/ORDER
Plaintiffs, Sprinturf, Incorporated ("Sprinturf') and Hank Julicher ("Julicher"), filed a complaint against Southwest Recreational Industries, Incorporated ("Southwest") and Villanova University ("Villanova") in 2001 for patent infringement under 35 U.S.C. § 1 et seq. Plaintiffs seek judgment for past infringement and injunctive relief against further infringement of United States Patent No. 5,976,645, "Vertically Draining, Rubber-filled Synthetic Turf and Method of Manufacture" ("the `645 Patent").
Presently before the court is defendants' Motion to Correct Inventorship of the `645 Patent and Dismiss Plaintiffs' Complaint (#41). After considering the parties' submissions and the testimony given at the May 1, 2003 and November 24, 2003 hearings, defendants' motion is denied.
Facts
In 1998, Daniel Daluise, Hank Julicher, Paul R. Lioi, and Al Teague co-founded SafeTurf International Limited ("SafeTurf"), a synthetic turf company. In order to compete in the synthetic turf market, the company sought to develop a synthetic turf product with an all-rubber infill. At the suggestion of Julicher, SafeTurf consulted George Avery ("Avery") regarding a turf design that would meet these specifications and would not expand, contract, or wrinkle with heat. Avery had been in the turf design and manufacturing business for over thirty years, and owned and operated his own company ("Avery Sports Turf, Inc."). Avery was, and still is, the owner of a patent issued on November 10, 1987, (United States Patent No. 4,705,706, "Tufted Carpeting Having Stitches Thermally Bonded to Backing") ("Avery's 1987 Patent"). Avery suggested the use of the double woven backing from his 1987 patent and Safe Turf initially adopted it. However, according to Lioi, prior to meeting with Avery in January 1998, Lioi had already met with other vendors who had suggested the use of a non-woven backing, and he had considered and investigated a woven/non-woven backing as a technology that might be useful to SafeTurf.
On May 13, 1998, Avery met with Charles Wagner ("Wagner") of Colbond, a company that makes non-woven fabrics for various purposes. Immediately thereafter, Avery sent Daluise technical specifications for the woven/non-woven Colbond material. On May 22, 1998, Daluise inserted in the `645 patent application a description of a backing that uses woven and non-woven layers to provide dimensional stability. On June 1, 1998, Daluise and Lioi filed a patent application for an all-rubber infill synthetic product with a dimensionally stable woven/non-woven backing ("the `645 Patent"). The application resulted in the issuance of the `645 patent on November 2, 1999; the patent did not include Avery as an inventor.
As a result of a disagreement among the owners, Safe Turf later was dissolved. In 1999, Julicher purchased the assets of Safe Turf, which included the `645 Patent, and now lists the `645 patent as an asset belonging to his other company, Sprinturf. Sprinturf, in turn, consented to allow Specialty Surfaces International, Limited ("SSI"), which was incorporated by Julicher on February 29, 2000, to use its name. Julicher also remains the sole owner of the `645 Patent and has not assigned or licensed the `645 Patent to SSI, Sprinturf, or any other entity.
Avery alleges that until January 10, 2000 he was unaware of the `645 patent. On April 23, 2002, Avery assigned all his actual or prospective rights in the `645 Patent to Southwest, released Southwest from claims for past infringement, and agreed not to join as a party in any suit asserting such infringement claims against Southwest. Southwest paid $60,000 for the rights in the `645 Patent.
Discussion
Defendants — including Southwest, the assignee of Avery's asserted rights in the `645 patent — argue that, pursuant to its power to correct inventorship under 35 U.S.C. § 256, the court should "correct" the `645 Patent by adding Avery as a co-inventor because Avery conceived of the woven/non-woven backing used to stabilize the turf product.
The Patent Act accords each patent a statutory presumption of validity, 35 U.S.C. § 282 (1994), and creates a presumption that a patent's named inventors are the true and only inventors, Trovan, Ltd. v. Iron, 2000 WL 1285243, at *3 (Fed. Cir. 2000) (citing Hess v. Adv. Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed. Cir. 1997)). Section 256 of the Patent Act authorizes the federal courts to correct the named inventors on a disputed patent in the case of non-joinder (omission of inventor) or misjoinder (unwarranted inclusion of person not responsible for the invention). See Fina Tech. v. Ewen, 265 F.3d 1325, 1328 (Fed. Cir. 2001).
When a party pleads non-joinder or misjoinder of inventors, the district court must determine whether clear and convincing evidence supports the moving party's claim that he or she was in fact a co-inventor. Pannu v. lolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998); see also Virginia Elec. Lighting Corp. v. Nat'l Serv. Indus., 2000 WL 12729, at *4 (Fed. Cir. 2000) (alleged inventor "bears the heavy burden at trial of proving a significant contribution to the conception of the invention of the claims by clear and convincing evidence."). A joint inventor must make a significant, quality "contribution to the claimed invention," when "measured against the dimension of the full invention," and must "do more than merely explain to the real inventors well-known concepts and/or the current state of the art." Pannu, 155 F.3d at 1351. The basic exercise of ordinary skill in the art, without an inventive act, does not make one a joint inventor. Fina Oil Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997).
To meet the clear and convincing burden of proof, an alleged co-inventor must prove his contribution to the conception with more than his own testimony. Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993). The Federal Circuit has recognized the corroborative value of several forms of evidence. This includes "[d]ocumentary or physical evidence that is made contemporaneously with the inventive process," Sandt Tech., Ltd. v. Resco Metal Plastics Corp., 264 F.3d 1344, 1350-51 (Fed. Cir. 2001) (citing Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1373 (Fed. Cir. 1998), an alleged inventor's prototypes of the invention, shipping receipts, testimony of third parties who saw prototypes, Virginia Electronic, 2000 WL 12729, at *5, and drawings of the disputed invention, Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1464 (Fed. Cir. 1998).
Circumstantial evidence may satisfy the corroborating evidence requirement and may include:
(1) the [named inventor's] need for a person with expertise in [the specific field]; (2) [putative inventor's] background in [needed field], (3) [named inventor's] proposal that [parties] should work together to develop new products . . . (4) their informal business relationship, (5) the length of time they worked together, (6) the absence of any pay to [putative inventor] for his work, (7) the similarity between [the putative inventor's] sketches and the patent figures . . .Id. at 1464. In addition, oral testimony by someone other than the alleged inventor may corroborate a putative inventor's claim. See id. at 1461.
Whether the putative co-inventor's testimony has been sufficiently corroborated is evaluated under a "rule of reason" analysis, Price, 988 F.2d at 1195, and ultimately, "[t]he determination of whether a person is a joint inventor is fact specific, and no bright-line standard will suffice in every case," Fina Oil Chem., 123 F.3d at 1473.
To support their claim, defendants rely on the testimony of Daluise, Lioi and Wagner, as well as several supporting documents.
Daluise's testimony regarding inventorship
Defendants argue that named co-inventor Daluise's "testimony alone would be sufficient to establish Avery as an inventor." Defts' Reply Br. at 6. Daluise testified as follows:
19 A [Daluise]. I needed a backing. I mean, the essence of the 20 patent is a dimensionally stabile backing with an all
21 rubber infill, and we were removing the sand. And if 22 you're going to remove the sand, you have to have a 23 dimensionally stabile backing. 24 It's, you know, the essence of the thing, and 1 apparently, it's an essence that a lot of people don't 2 understand, but that was what I needed, that was the 3 key, to get a dimensionally stabile backing. 4 So, George [Avery] is someone that I talked to to get an 5 idea of what could be done for a dimensionally stabile 6 backing. . . . 14 George had suggested a non-woven/woven backing as 15 something that would be dimensionally stabile, and 16 that's what we, that what we went with in terms of 17 the backing.
Defts' Resp. Mem. Exh. D, Daluise Depo. at 31:19-32:17 (emphasis added). When asked about his interactions with Avery, Daluise explained:
12 A. [Daluise]. . . . I said, `George, I need a backing that 13 doesn't expand and contract plain and simple.' 14 Q. And he said? 15 A. Well, he said, `Well, what the hell are you doing?' 16 And I said, `Well, I'm going to do — I want to do a 17 turf.' And again, understand like I have no prior, 18 you know, familiarity with turf, you know, so I'm 19 treading lightly. 20 And I said, `Well, George, I want to do a turf 21 without any sand in it, just rubber,' and his 22 reaction pretty much was `What,' you know, `Oh, no, 23 you don't want to do that' kind of thing. But you 24 know, I said, `Look, just give me something that 1 doesn't expand. You know, what do you got?' 2 You know, and obviously there was much more to 3 this conversation I couldn't recall, but that's the 4 essence of what I was trying to accomplish. 5 So, he said, `Well, let me take a look' and I 6 don't recall frankly if he sent me other iterations 7 of backings, you know, or talked about other 8 iterations of backing. 9 But what we ended up with at some point, not in 10 this initial conversation but after we had, you know,
11 a lot of conversations back and forth and whatever 12 was to try this woven, you know, layer, with the 13 nonwoven layer . . .Id. at 61:12-62:13 (emphasis added).
Although the foregoing Daluise testimony tends to show that Avery suggested the use of the woven/non-woven backing, it bears emphasis that, during this same deposition, Daluise also stated that the woven/non-woven technology was not really new or unique, and was, in fact, well-known in other industries. When questioned directly about whether Avery invented the woven/non-woven backing, Daluise testified with some equivocation:
16 Q. Okay. And [the layer with the nonwoven layer] came from George? 17 A [Daluise]. I mean, nonwoven is a process, you know what I mean? 18 Q. Right. And that backing design came from George 19 Avery, the woven and the nonwoven? 20 A. Well, yes. It actually was an existing backing that 21 was used in the industry for different things, not turf or not 22 infill turf, certainly, but you know, it 23 was used in the carpet industry. 24 Q. He believed it would work with this product? 1 A. Yeah. It was actually developed for dimensional 2 stability in certain kinds of carpet. 3 Q. And he thought this was a good application for it? 4. A. Yeah. Well, it was his suggestion for it. 5. Q. Okay. 6. A. So, we took that and we ran with it basically.
Defts' Resp. Mem. Exh. D, Daluise Depo. at 62:16-63:6 (emphasis added).
Lioi's testimony regarding inventorship
Defendants contend that Lioi admitted that Avery conceived of the woven/non-woven backing. For example, at deposition Lioi testified that:
25 Q. So you told George Avery, "We need a 1 heavy-duty backing"? 2 A [Lioi]. Correct.
3. Q. And George Avery said, "This is what you 4. need to do"? 5. A. Well, no what we needed was a product that 6. had dimensional stability that would be able to 7. respond well during temperature gradients. 8. Q. And was it George's idea to do the woven and 9. non woven? 10. A. George had a concept that he had utilized 11. with woven and non woven, yes. 12. Q. And he was the one that offered that to you? 13. A. Yes.
Defts' Reply Brief Exh D, Lioi Depo. at 54:25-55:13.
Lioi's testimony is, however, silent as to whether Avery actually invented the woven/non-woven concept. Moreover, Lioi's choice of verb tense (Avery "had a concept that he had utilized with woven and non woven") is suggestive that Avery's concept may have been a part of the "prior art."
Lioi's later testimony buttresses the idea that Lioi understood the woven/non-woven concept to be well-known within the art. In particular, Lioi testified that, prior to his meetings with Avery, Lioi already had considered and discussed multiple types of backings that could be used to stabilize the product, including a woven/non-woven backing. Lioi explained that when he and Daluise first met with Avery, they were already "concerned about a double backing issue," and finally, that "we," (evidently Lioi and Daluise) "decided that we wanted to go with woven and non-woven and that we would apply for our own patent." Pls' Exh. D 26:1-8. Moreover, Lioi testified that he and Daluise sent Avery a fax in January 1998 (five months before Avery's May 13, 1998 meeting with Wagner, after which Avery sent the woven/non-woven specifications to Daluise) with "general specifications of turf' with a non-woven layer, which they had "thought up" without Avery. Id. at 27:20, 28:11-14. Lioi also emphasized that, as early as April 1998, he and Daluise were aware of the type of backing needed and did file a draft of the `645 patent application that included a reference to non-woven backing. Id. at 32:19-25; 35:3-4.
Because Lioi's testimony is somewhat contradictory, defendants suggest that plaintiffs have not met the burden of providing clear and convincing evidence that Daluise and Lioi are the true and proper inventors of the `645 patent. However, defendants have misapprehended the respective burdens of proof: plaintiffs enjoy a statutory presumption of validity, and it is defendants, not plaintiffs, who bear the burden of proving their allegations by clear and convincing evidence.
Circumstantial Evidence
1. Wagner's Testimony and Diaries
Defendants emphasize that Charles Wagner, one of Colbond's representatives, testified that, at a May 13, 1998 meeting, Avery told Wagner that, at that time, "Avery Sports Turf was running . . . a [woven-woven] double layer primary backing." Wagner Depo at 46:24-47:20. Wagner further testified that at the May 13 meeting Avery explained to Wagner his idea to use a "dual layer primary backing with the first layer being a woven polypropylene FLW and then the second layer being a non woven Colback N100 product." Id. at 47:45-48:20. Avery then purchased the non-woven material from Wagner. Wagner, who keeps a daily journal of his discussions with customers, provided his journal notes, which confirm that he met with Avery on that day and contain a diagram that, according to Wagner, is of the woven/non-woven backing that Avery decided to use.
While Wagner's testimony corroborates the fact that Avery was aware of the woven/non-woven backing concept in the weeks prior to Safe Turf's filing of its patent application, the testimony fails to demonstrate that Avery actually invented the idea.
2. Draft Patent Applications
Defendants also argue that a series of draft patent applications submitted by SafeTurf to SafeTurf's patent attorney, Kevin Lemack, corroborate Avery's role as an inventor of the `645 patent. Defendants reason that since Lioi suggested that he had investigated the use of the woven/non-woven backing in January 1998, a description of the woven/non-woven technology should have appeared in Lioi's correspondence to Lemack sometime after January 1998. Yet, defendants argue, SafeTurf's draft patent applications, dated March 11, 20, 27, and April 14, 1998, failed to mention the woven/non-woven concept. Defendants emphasize that it wasn't until after May 13, 1998 — the date Avery sent Daluise the specifications for the woven/non-woven materials, and the date Avery met with Wagner — that SafeTurf's draft applications described the woven/non-woven backing concept.
The problem with defendants' argument is that they have over-represented the import of the draft applications. First, Lioi, the named inventor who claims to have known about the woven/non-woven backing prior to meeting Avery, did not send any of the draft patent applications. Daluise sent all three of the March 1998 applications, and the April 14, 1998 draft application was drafted by Lemack and sent to Daluise for his review. Second, the March 11, 1998 draft application from Daluise does not mention anything about a backing. Thus, this application is only modest evidence that Daluise did not think the backing was important enough to the invention to warrant mentioning. And the March 27 draft application bears a delphic editorial remark next to the description of the backing: "Maybe — not necessary to invention." Defts' Exh. 88 at ¶ 5.
The draft applications relied upon by defendants were obviously just that — drafts. Any failure by the individuals who sent the applications to describe the woven/non-woven technology merely indicates that the applications were a work in progress. I do not find such omissions to be strong circumstantial evidence that Avery invented the woven/non-woven technology.
Prior Art
Although defendants argue that Avery conceived of and contributed the woven/non-woven backing idea, plaintiffs counter that the disputed concept already was known in the art. In particular, plaintiffs contend that Lioi had already considered using the woven/non-woven backing because other vendors had suggested it to him, signifying that Avery can only be said to have reduced a well-known idea to practice. As mentioned above, when someone merely explains the prior state of the art and reduces it to practice by the ordinary application of skill, that party cannot claim to be a true inventor whose name need be included on the patent. See Pannu v. Lolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998) (joint inventor must "do more than merely explain to the real inventors well-known concepts and/or the current state of the art.").
In her Report and Recommendation, Judge Angell reasoned that the woven/non-woven backing of the `645 Patent may have been anticipated by prior references, thereby raising substantial questions as to the "newness" of the `645 Patent. See 35 U.S.C. § 102 (anticipation defense). Indeed, Judge Angell found that Avery's 1987 patent "describe[d] the use of woven and non-woven backing in both primary and secondary backing." R R at ¶ 34. In particular, Avery's 1987 patent describes the following:
In some instances the . . . layer of the backing is made of flexible plastic film or non-woven fabric, rather than a fabric mesh. In some instances the coating which is applied to the underside of the backing doubles in function as a non-slip surface-providing means; in other instances, the stitch-locking coating is itself backed with one or more layers of woven fabric, plastic film, non-woven fabric and/or a non-slip feature-providing coating.
Defts' Exh. 52, Cols. 1-2. Although Judge Angell focused on the possibility that Avery's 1987 patent might render the `645 patent invalid for lack of newness under 35 U.S.C. § 101, her findings also support the inference that Avery's claimed "new" conception of a woven/non-woven backing merely explained his own pre-existing 1987 invention, which may have been well-known in the art. Thus, Avery's explanation of his previously patented work would not provide grounds for adding Avery as a co-inventor of the `645 patent.
In addition, there are at least three other turfs that utilize the woven/non-woven backing concept independent of Avery. On May 8, 1973, Woodrow P. Greene was awarded a patent for a ski slope material that described a multi-layer backing with woven and non-woven layers. Defts' Exh. 54, Col. 1-4. On February 5, 1985, Seymour Tomarin received a patent for an invention in which he described a synthetic turf with a backing that possibly could consist of a woven primary backing sheet with a second non-woven layer bonded to the backing after tufting. Defts' Exh. 53, Fig.1 Col.2 Exh. 243. Similarly, in 1997, Southwest developed, manufactured, and sold Astroplay, an artificial turf material turf made with Colbond's non-woven backing. See R R at 15-17. Indeed, Greene's 1973 patent not only suggests that the woven/non-woven backing concept was not new, but also that it had existed and been used by Greene and other tufters for almost thirty years prior to the issuance of the `645 patent.
The existence of three prior patents utilizing a woven/non-woven backing tends to undercut defendants' contention that Avery contributed a "new" concept beyond the state of the art. Conclusion
As the foregoing analysis demonstrates, the defendants have not established by clear and convincing evidence that Avery was a co-inventor of the `645 patent. Accordingly, it is hereby ORDERED that defendants' Motion to Correct Inventorship and Dismiss Plaintiffs' Complaint (#41) is DENIED.
Defendants' motion to dismiss is entirely contingent upon this court granting their motion to correct inventorship. Avery, who is contractually prohibited from pursuing infringement litigation against Southwest, as stipulated in his $60,000 assignment contract with Southwest, could not have consented to join in the infringement suit. Hence, under Ethicon, if Avery had been added as an inventor, this court would have been required to dismiss the case due to Avery's inability to join in the suit. See Ethicon, 135 F.3d 1456, 1468 (all co-owners or co-inventors must consent to an infringement suit).
Additionally, it is hereby ORDERED that defendants' Motion for Leave to File Sur-Reply and Supplemental Opposition Briefs (#114) is GRANTED.