After dismissing Wilson Wolf Manufacturing’s patent infringement claim against Corning with prejudice just over a year ago, the Court recently further narrowed the claims headed to trial this fall in Wilson v. Corning. In a win for Corning, Judge Frank granted the defendant’s summary judgment motion, dismissing Wilson’s unjust enrichment claim and limiting its trade secret misappropriation claim. Wilson’s cross-motion for summary judgment was denied, as fact disputes prevented adjudication in the plaintiffs’ favor on their breach of contract and correction of inventorship claims. Click here to view the Order in full.
The inventorship ruling offers a good reminder for patent litigators. At summary judgment the Court must, of course, view the evidence in the light most favorable to the non-moving party. Judge Frank also correctly noted that a party seeking to add itself as a co-inventor on a patent bears the burden of proving its inventive contribution by clear and convincing evidence. Coupling these two legal standards makes it particularly challenging to win (and perhaps fool-hardy to bring) a summary judgment motion on a correction of inventorship claim if there is any dispute or uncertainty, whatsoever, in the record.
Judge Frank’s ruling on Wilson’s misappropriation claim is also of interest, particularly as the Defend Trade Secrets Act stands poised to be signed into law. Wilson “represented that their trade secret claim is based on information contained in their [published] patent applications,” and failed to “indicate that there are relevant trade secrets outside of their patents.” The Court agreed with Corning that public disclosure in the patent applications eliminated the information’s status as a trade secret. However, the Court only dismissed the claim insomuch as it was based on allegations that post-dated the patent publication. In so doing, the Order seems to accept Wilson’s argument that a claim for trade secret misappropriation may still be viable if the information becomes public only after it is wrongfully taken and used.
In light of the Court’s order, it will be interesting to see if Wilson can prove misappropriation – and, if so, how Wilson’s public disclosure in its patent applications may affect the Court’s assessment of damages. It may be too early to tell, however, whether the claim (or any claims) will proceed to trial at all: Wilson has sought permission to file a motion for reconsideration and Corning, for its part, has filed another motion for summary judgment on all remaining claims.