In a non-precedential opinion, the U.S. Court of Appeals for the Federal Circuit upheld a district court’s denial of Applera’s motions for judgment as a matter of law (JMOL) or for a new trial on ownership of the patents-in-suit. Applera Corp. v. Illumina, Inc., Case Nos. 09-1253, -1260 (Fed. Cir., Mar. 25, 2010) (Moore, J., non-precedential).
Dr. Stephen Macevicz is a patent attorney with a Ph.D. in biophysics and is the sole inventor of the patents-in-suit. In 1992, Dr. Macevicz joined Applera as in-house counsel. At that time, he signed an Employee Invention Agreement (EIA) which required him to assign to Applera any inventions that he developed during his employment unless three criteria were met: the invention was developed entirely on his own time; “no equipment, supplies, facility or trade secret of the Company was used in its development”; and “(i) it does not relate to the business or actual or demonstrably anticipated research or development of the Company, or (ii) it does not result from any work performed by [him] for the company.”
Applera had a policy that permitted its patent attorneys to take on outside work. In 1993, as part of his outside work, Dr. Macevicz prosecuted a patent application for Dr. Brenner, a subsequent Nobel Prize winner not affiliated with Applera. The following year, Dr. Macevicz himself developed a method of sequencing DNA and filed patent applications that matured into the patents-in-suit. In 1995, Dr. Macevicz left Applera and joined Solexa, which was subsequently acquired by Illumina.
Applera filed the present suit seeking a declaratory judgment against Dr. Macevicz and Solexa raising issues of ownership, non-infringement and invalidity of the patents-in-suit. The issue of inventorship survived summary judgment and was presented to the jury, which returned a verdict in favor of Dr. Macevicz and Solexa. The jury found that Dr. Macevicz’s inventions met all three of the exceptions laid out in his EIA and, therefore, were owned by him. Applera moved for JMOL or, in the alternative, for a new trial. The district court denied Applera’s motion and held that ample evidence supported the jury’s verdict.
The Federal Circuit agreed that substantial evidence supported the jury’s finding that all three criteria were met. The Court noted there was no dispute that Dr. Macevicz developed the inventions on his own time. Moreover, the evidence showed that Dr. Macevicz described his inventions in his personal laboratory notebook, that he used his own home computer to prosecute the patents and that there was no evidence he used any of Applera’s trade secrets. Finally, the Court looked at whether the inventions relate to Applera’s business or (result from work performed by Dr. Macevicz for Applera. Dr. Macevicz argued that in order to meet the third criterion, he only had to satisfy one of the two conditions. Applera contended that both conditions must be satisfied. The Court sided with Dr. Macevicz and refused to rewrite the EIA by changing the “or” to an “and” in the third criterion. The Court noted that Dr. Macevicz presented evidence that the inventions-in-suit originated from his own earlier work on sequencing by hybridization as well as inspiration gained from working on Dr. Brenner’s patent application and did not result from work he performed for Applera. Finding that substantial evidence supported the jury’s findings, the Court affirmed the district court