United States District Court, District of Colorado
ORDERS ON MOTIONS FOR SUMMARY JUDGMENT
Richard P. Matsch, Senior Judge.
Defendant James Galbiati (“Galbiati”) is a named co-inventor of the invention(s) described in United States Patent No. 6, 985, 762, titled “Network Formatting for Remote Location Oximetry Applications, ” issued January 10, 2006 (“the ‘762 Patent”). Datex-Ohmeda Inc. and its corporate parent, General Electric Company (“GE”), claim that Galbiati’s interest in the ‘762 Patent must be assigned to the Plaintiffs under the “hired to invent” doctrine in the common law of Colorado.
Contrary to complaint’s jurisdictional allegations, the Plaintiffs’ claims do not arise under the United States Patent Act. The sole basis for federal jurisdiction is diversity of citizenship. It is assumed the amount in controversy exceeds $75, 000, exclusive of interest and costs, as required by 28 U.S.C. § 1332.
The Plaintiffs moved for summary judgment, arguing that undisputed facts establish their ownership of Galbiati’s interest in the ‘762 Patent. The Defendants opposed the Plaintiffs’ motion and moved for summary judgment because the Plaintiffs’ claims are barred by the Colorado statute of limitations applicable to contract claims.
The following facts are undisputed:
Datex-Ohmeda is in the business of developing medical technologies. In the late 1990s, Datex-Ohmeda was developing new technologies related to pulse oximetry, a non-invasive method of monitoring an individual’s hemoglobin levels.
Galbiati is a software engineer. He has a Master’s degree in that subject, and by the late 1990s, had at least 10 years of experience in that field.
In the summer of 1999, Datex-Ohmeda employed Galbiati through a staffing service known as Manpower Professional. Datex-Ohmeda hired Galbiati to develop software for Datex-Ohmeda’s products, and in particular, to model circuits in an electronic drafting program to support one of the company’s blood pressure products.
The employment relationship between Datex-Ohmeda and Galbiati was analogous to that of a contractor or consultant. He had no written employment contract with Datex-Ohmeda addressing intellectual property rights.
In the fall of 1999, Galbiati also was working on his own project called PerfusionIndex, developing a means of collecting data from a Datex-Ohmeda pulse oximeter used to measure blood flow in a patient’s radial artery. Datex-Ohmeda was aware of the PerfusionIndex project and supplied equipment for it. While working on the PerfusionIndex project, Galbiati realized it could be possible to move data from a pulse oximeter to a computer or server, which would allow a doctor in a hospital to obtain data from a patient at a distant location.
In late 1999, Galbiati’s relationship with Datex-Ohmeda was terminated when the company reduced its workforce. Shortly thereafter, Galbiati suggested to Datex-Ohmeda that he should try to implement his plan to have a pulse oximeter communicate with a computer or a server. Galbiati wrote up a proposal, which included writing the system architecture, system design, timelines, and work estimates. He presented the proposal to Datex-Ohmeda, suggesting the work would take approximately six-weeks to complete.
In early 2000, Datex-Ohmeda approved Galbiati’s proposal. Galbiati’s work on the project took place mostly on site at Datex-Ohmeda’s facilities. Galbiati also used some of his own equipment, or his brother’s equipment, while working on the project.
The project was completed. Galbiati continued to work for Datex-Ohmeda on other pulse oximetry projects. Datex-Ohmeda paid Galbiati for his work through Manpower Professional.
In 2001 and 2002, Galbiati worked with Datex-Ohmeda’s patent attorney, Russ Manning (“Manning”), on the application for the patent that ultimately became the ‘762 Patent. That application, designated as application number 10/190, ...