United States District Court, D. Delaware
CONNOLLY, UNITED STATES DISTRICT JUDGE.
single filing (D.I. 169), Plaintiffs have asked the Court to
grant six motions for summary judgment. I addressed three of
Plaintiffs' motions in memorandum orders issued on April
12, 2019 and April 17, 2019. I address in this Memorandum
Order the three remaining motions for summary judgment in
the first of the remaining motions, Plaintiffs seek summary
judgment on Defendants' defenses and counterclaims
regarding incorrect inventorship of the asserted patents.
See D.I. 169; D.I. 170 at 31-37. Plaintiffs argue
that there is no record evidence to support Defendants'
allegations of incorrect inventorship. In response,
Defendants assert that "Geppert [a former employee of
Plaintiff f real foods, LLC, to which entity Farrell, the
named inventor, assigned the asserted patents] helped
conceive of at least one limitation of each of the claims of
[the three asserted patents for which Defendants allege
incorrect inventorship]." See D.I. 232 at 7,
¶ 3. In support of this assertion, Defendants point to
certain excerpts from Geppert's and Farrell's
depositions and and an "Employee Confidential
Information and Inventions Agreement" executed by f real
and Geppert. See id.
cited deposition excerpts do not support Defendants'
position. Indeed, Geppert denied under oath at his deposition
that he invented or co-invented the subject matter of the
patents at issue. See D.I. 219, Ex. TT at
Notwithstanding Geppert's deposition testimony, the
agreement could arguably support Defendants' position
because Geppert handwrote in Exhibit A of the agreement,
under the heading "List of Prior Inventions and Original
Works of Authorship," the words "various aspects of
[one of Plaintiffs' blenders]." See D.I.
202, Ex. 13 at FREAL186806. Although I question whether this
document would be admissible at trial as substantive evidence
of Geppert's inventorship, Plaintiffs do not dispute its
admissibility and therefore I will treat it as admissible for
purposes of ruling on this motion. Because there is a dispute
about the meaning of Geppert's writing in Exhibit A of
the agreement, it appears that there may be genuine issues of
material fact about whether Geppert is an unnamed inventor of
at least one of the patented inventions. Accordingly, I will
deny this motion. See Fed. R. Civ. P. 56(a)
("The court shall grant summary judgment if 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."); Celotex Corp. v. Catrett, 477 U.S. 317,
323 (1986) ("[T]he party moving for summary judgment...
bears the burden of demonstrating the absence of any genuine
issues of material fact.").
Next, Plaintiffs seek summary judgment on Defendants'
inequitable conduct claims. See D.I. 169; D.I. 170
at 40-43. If a jury found in Defendants' favor that
Geppert is an unnamed inventor of at least one of the
patented inventions, then it would not be unreasonable for
the jury to find that Farrell's assertions of sole
inventorship before the United States Patent and Trademark
Office in the prosecution of the patents were materially and
intentionally misleading, amounting to inequitable conduct.
See Am. Calcar, Inc. v. Am. Honda Motor Co., 768
F.3d 1185, 1190-91 (Fed. Cir. 2014) ("[B]ecause direct
evidence of deceptive intent is rare, a district court may
infer intent from indirect and circumstantial evidence,
provided that such intent is the single [most] reasonable
inference." (internal quotation marks and citation
omitted)); Therasense, Inc. v. Becton, Dickinson &
Co., 649 F.3d 1276, 1292 (Fed. Cir. 2011)
("Although but-for materiality generally must be proved
to satisfy the materiality prong of inequitable conduct, this
court recognizes an exception in cases of affirmative
egregious misconduct... such as the filing of an unmistakably
false affidavit"); cf. Hardin v. Pitney-Bowes
Inc., 451 U.S. 1008, 1008 (1981) (Rehnquist, J.,
dissenting) ("It has long been established that it is
inappropriate to resolve issues of credibility, motive, and
intent on motions for summary judgment."). I will
therefore deny this motion.
Finally, Plaintiffs seek summary judgment that U.S. Patent
No. 7, 520, 662 is not invalid "in view of
Defendants' admissible prior art." D.I. 169; see
also D.I. 170 at 44. Plaintiffs argue that summary
judgment is appropriate because "estoppel properly
applies to each of the seven prior art combinations that
Defendants have disclosed." D.I. 170 at 44. Defendants
respond that "Defendants are not estopped from asserting
two of their prior art combinations." D.I. 195 at 35. In
ruling on two separate motions in limine, however, I
excluded those two prior art combinations. See D.I.
239; Tr. of Apr. 11, 2019 Hr'g, at 26:12-27:3. I will
therefore grant this motion.
on this Eighteenth day of April in 2019, IT IS HEREBY
Plaintiffs' motion for summary judgment on
"Defendants' defenses related to incorrect
inventorship for f real's self-cleaning blender patents,
and related counterclaims" (see D.I. 169) is
Plaintiffs' motion for summary judgment on
"Defendants' inequitable conduct affirmative
defenses and counterclaim" (see D.I. 169) is
Plaintiffs' motion for summary judgment of "no
invalidity of Claim 21 of [U.S. Patent No. 7, 520, 662] in
view of Defendants' admissible prior art"
(see D.I. 169) is GRANTED.