Defendants claim that count XIX is defective because it fails to identify an interest or a tangible property right which could be returned to it. Plaintiff has failed to plead, with any specificity, the "things" it wants covered by the proposed constructive trust. Accordingly, by May 20, 1991, plaintiff shall deliver to defendants a document which describes, with as much detail as is possible at this time, the items upon which plaintiff seeks imposition of a constructive trust. We expect the list to be as exhaustive as feasible under current circumstances. However, we recognize that plaintiff may not, at this early stage in the proceedings, be able to determine all of the individual items of its property that defendants may have wrongfully retained. Thus, if it turns out that, in good faith, some omission is made, and that omission can later be both justified and rectified without undue prejudice to defendants, the court will permit the new item to become the subject of plaintiff's proposed constructive trust.
VI. The Trade Secret Misappropriation Claims Based on Material Published in 1980, 1981 and 1985.
Defendants argue that plaintiff cannot base a claim of misappropriation of trade secrets on matter that plaintiff disclosed in its '133, '502 and '523 patents. The theory supporting this contention is that after the information was published in the patent application process it lost its character as a trade secret.
Plaintiff has conceded that it cannot claim misappropriation of trade secrets disclosed in the '133 and 502 patents (issued in 1980 and 1981 respectively). Plaintiff makes no such blanket concession, however, with respect to the '523 patent, which issued on July 8, 1986. While plaintiff concedes that it cannot predicate misappropriation causes of action on misuse of matter disclosed in that patent that allegedly occurred after the date of the issuance of the patent, plaintiff insists that it should be permitted to press claims based on acts of misappropriation that occurred before that date. Given our prior ruling (on res judicata grounds) that plaintiff cannot maintain a cause of action for misappropriation based on conduct occurring prior to April 10, 1986, there remains a very small window of time (between April 10, 1986 and July 8, 1986) with respect to which we cannot, at this juncture, prohibit plaintiff from attempting to prove that defendants misappropriated secrets subsequently disclosed in the '523 patent.
VII. Legal Sufficiency of Plaintiff's Correction of Inventorship Claim
In count XVIII of the amended complaint, plaintiff seeks to correct the inventorship on U.S. patent 4,827,936. 35 U.S.C § 256 provides that a court add or delete the name of an inventor on a patent "whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention. . ."
Plaintiff alleges that the subject of the '936 patent, originally issued to defendants Sweeny and Pless (and outside adviser Roger Winkle), and subsequently assigned to Ventritex, "was discovered by individuals who were not the trio of Benjamin Pless, Michael Sweeny and Roger Winkle, and who were, at the time of the discovery, under an obligation and duty to assign all right, title and interest in the matter discovered to Intermedics."
Defendants' motion to dismiss this count because of plaintiff's failure to plead, affirmatively, that the alleged error was inadvertent (i.e., committed without intent to deceive) is DENIED. Instead, plaintiff may plead ignorance of whether the alleged error in inventorship was advertent or inadvertent. In the amended complaint that we have ordered plaintiff to file by May 20, 1991, plaintiff shall identify the person or persons whom plaintiff believes to have been the true inventor(s) and shall aver explicitly, if true, that plaintiff does not know whether the error was inadvertent or not. If plaintiff later discovers evidence that the named inventors are the correct inventors, or that the error in naming the inventors was made with deceptive intent, plaintiff shall promptly withdraw this count.
VIII. Defendants' Motion for a More Definite Statement
Defendants' motion for a more definite statement is DENIED except to the limited extent required in the preceding sections.
IT IS SO ORDERED.
DATED: May 9, 1991
Wayne D. Brazil
United States Magistrate