United States District Court, D. Colorado
DR. BRADLEY BARNETT, Plaintiff,
SUREFIRE MEDICAL, INC. Defendant.
A. BRIMMER CHIEF UNITED STATES DISTRICT JUDGE.
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.
case involves a patented design for an anti-reflux catheter.
See Docket No. 1 at 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.
late March and early July, 2007, Arepally was out of the
country on sabbatical. Docket No. 59 at 7, ¶
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. 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.
April 2009, Dr. James Chomas (“Chomas”) began
working on an anti-reflux device. Docket No. 59 at 9, ¶
In July 2009, Chomas and Arepally cofounded defendant
Surefire Medical, Inc. (“Surefire”).
Id., ¶ 22. 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
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.
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).
“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.
Surefire’s Motion for Summary Judgment
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.