Barnett v. Surefire Medical, Inc.

          ORDER

          PHILIP A. BRIMMER CHIEF UNITED STATES DISTRICT JUDGE.

         This matter comes before the Court on Surefire’s Motion for Summary Judgment [Docket No. 59], Plaintiff’s Motion for Summary Judgment [Docket No. 62], and Surefire’s Motion to Strike [Docket No. 74]. The Court has jurisdiction pursuant to 28 U.S.C. § 1331.

         I. BACKGROUND

         This case involves a patented design for an anti-reflux catheter. See Docket No. 1 at 1.^[1] Plaintiff Dr. Bradley Barnett (“Barnett”) met Dr. Aravind Arepally (“Arepally”) while Barnett was a medical student and Arepally was a professor at Johns Hopkins Medical Institute (“Johns Hopkins”). Docket No. 59 at 7, ¶ 4. Arepally sponsored Barnett’s application for a research fellowship to study islet cell therapy and served as Barnett’s mentor in 2005-06 and co-mentor in 2006-07. Id., ¶¶ 5-6.

         Between late March and early July, 2007, Arepally was out of the country on sabbatical. Docket No. 59 at 7, ¶ 8.^[2] While Arepally was on sabbatical, Barnett worked with Dr. Jean-Francois Geschwind (“Geschwind”) on an invention called the “Fusion Drug Delivery System” (“FDDS”). Docket No. 59 at 8, ¶ 12. Broadly speaking, the FDDS is an “anti-reflux catheter” featuring “an expandable and retractable conical mesh tip that can be configured to either allow blood to flow through it or to prevent retrograde flow.” Docket No. 1 at 7, ¶ 18. The FDDS is disclosed in Barnett’s notebook and in a “Report of Invention” submitted to Johns Hopkins’ Office of Technology (“OTL”). Docket No. 59 at 6, ¶ 2. Although Barnett’s notebook contains others’ handwriting, Docket No. 66 at 5, ¶ 15, none of the pages in Barnett’s notebook are witnessed. Docket No. 59 at 8, ¶ 15.^[3] The “Report of Invention, ” as well as a subsequent provisional patent application filed by OTL and Barnett, do not list Arepally as an inventor, mentor, co-mentor, laboratory head, or otherwise identify him. Id. ¶ 14. After the filing of the provisional patent application, there were no further attempts to patent the FDDS by OTL or by Barnett. Id. at 9, ¶ 18.^[4]

         In April 2009, Dr. James Chomas (“Chomas”) began working on an anti-reflux device. Docket No. 59 at 9, ¶ 19.^[5] In July 2009, Chomas and Arepally cofounded defendant Surefire Medical, Inc. (“Surefire”). Id., ¶ 22.^[6] On December 2, 2009, Surefire filed a revised provisional patent application for an anti-reflux catheter design featuring an expandable and retractable mesh tip. Docket No. 1 at 10, ¶ 25. On July 2, 2010, Surefire filed a non-provisional patent application claiming priority from the revised provisional application and formally identifying Arepally as an inventor of the anti-reflux catheter design. Id. at 11-12, ¶¶ 29-30. On August 6, 2013, the U.S. Patent and Trademark Office issued U.S. Patent No. 8, 500, 775 (the “’775 Patent”) from Surefire’s non-provisional patent application. Id. at 12, ¶ 30; Docket No. 1-3 at 2. The ’775 Patent describes a “protection device and method against embolization agent reflux” and lists Chomas, Arepally, Leonard Pinchuk, and John Martin as inventors. Docket No. 1-3 at 2. Surefire is listed on the patent as the “assignee.” Id. Barnett has never met, communicated, or worked directly with any of the named inventors on the Surefire patents except for Arepally. Docket No. 59 at 6, ¶ 3; Docket No. 66 at 4, ¶ 3. Surefire subsequently obtained U.S. Patent Nos. 8, 696, 698, 8, 696, 699, 9, 295, 540, 9, 069, 341, and 9, 089, 668 (with the ’775 patent, the “Surefire patents”) for its anti-reflux device. Docket No. 1 at 12, ¶¶ 30-31. Barnett’s retained expert, Dr. Robert Wagoner (“Wagoner”), examined the ’775 patent against the sketch made in Barnett’s notebook and the Report of Invention made by Barnett and concluded that “the major part of the novel content and inventive leap [in the ’775 patent] was in fact invented years earlier by Barnett.” Docket No. 66-28 at 10, ¶ 79; see also Docket No. 66 at 10.^[7]

         On October 16, 2017, Barnett filed this lawsuit. Docket No. 1. The complaint brings six claims for correction of inventorship pursuant to 35 U.S.C. § 256 against Surefire, seeking to add Barnett as a named inventor on the Surefire patents, and a claim against Arepally for unjust enrichment. Id. at 18-29, ¶¶ 47-106. On September 23, 2017, the Court dismissed Barnett’s claim against Arepally for unjust enrichment. Docket No. 50. On January 7, 2019, Surefire filed a motion for summary judgment on the six correction of inventorship claims. Docket No. 59. On January 11, 2019, Barnett filed a motion for partial summary judgment on Surefire’s defense that Barnett’s design is anticipated by or otherwise shown in the prior art. Docket No. 62. On February 11, 2019, Surefire filed a motion to strike certain exhibits supporting Barnett’s response to the motion for summary judgment. Docket No. 74.

         II. LEGAL STANDARD

         Summary judgment is warranted under Federal Rule of Civil Procedure 56 when the “movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); see Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-50 (1986). A disputed fact is “material” if under the relevant substantive law it is essential to proper disposition of the claim. Wright v. Abbott Labs., Inc., 259 F.3d 1226, 1231-32 (10th Cir. 2001). Only disputes over material facts can create a genuine issue for trial and preclude summary judgment. Faustin v. City & Cty. of Denver, 423 F.3d 1192, 1198 (10th Cir. 2005). An issue is “genuine” if the evidence is such that it might lead a reasonable jury to return a verdict for the nonmoving party. Allen v. Muskogee, 119 F.3d 837, 839 (10th Cir. 1997).

         Where “the moving party does not bear the ultimate burden of persuasion at trial, it may satisfy its burden at the summary judgment stage by identifying a lack of evidence for the nonmovant on an essential element of the nonmovant’s claim.” Bausman v. Interstate Brands Corp., 252 F.3d 1111, 1115 (10th Cir. 2001) (internal quotation marks omitted) (quoting Adler v. Wal-Mart Stores, Inc., 144 F.3d 664, 671 (10th Cir. 1998)). “Once the moving party meets this burden, the burden shifts to the nonmoving party to demonstrate a genuine issue for trial on a material matter.” Concrete Works of Colo., Inc. v. City & Cty. of Denver, 36 F.3d 1513, 1518 (10th Cir. 1994). The nonmoving party may not rest solely on the allegations in the pleadings, but instead must designate “specific facts showing that there is a genuine issue for trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986) (internal quotation marks omitted). “To avoid summary judgment, the nonmovant must establish, at a minimum, an inference of the presence of each element essential to the case.” Bausman, 252 F.3d at 1115. When reviewing a motion for summary judgment, a court must view the evidence in the light most favorable to the non-moving party. Id.

         III. ANALYSIS

         A. Surefire’s Motion for Summary Judgment

         Surefire argues that it is entitled to summary judgment on all of Barnett’s correction of inventorship claims because Barnett cannot establish that he collaborated with any of the named inventors on the Surefire patents. Docket No. 59 at 11-18. Separately, Surefire argues that it is entitled to summary judgment on the question of damages because Barnett has no pathway to recover damages from Surefire through his correction of inventorship claims. Docket No. 59 at 18-19.

         1. Correction ...