claimed in the '207 patent of defendant Priceline. See TAC at 15:16-20.
Plaintiff asserts that the alleged inventors explained the substance of
their inventions to agents of defendants in confidential documents and
conversations before defendants sought and received a patent on the
disputed invention. See id. at 15:22-16:7.
Plaintiff's TAC prays for two alternative forms of relief with respect
to Count 5:(1) an order that the Commissioner of Patents and Trademarks
shall issue a certificate correcting inventorship in U.S. Patent No.
5,794,207 to add Perell, Martinez, Hughes-Hartogs and Weiss as
inventors; or (2) an order that the Commissioner of Patents and
Trademarks shall issue a certificate correcting inventorship in U.S.
Patent No. 5,794,207 to name only Perell, Martinez, Hughes-Hartogs and
Weiss as inventors. See TAC at 19:1-8.
In support of their motion for summary judgment, defendants argue
that: (1) plaintiff's asserted conception of the subject matter covered
by the '207 patent is not corroborated; and (2) plaintiff's asserted
communication of the invention to defendants is not corroborated. See
Motion at 37:10-38:24. Since corroborating evidence is essential and not
optional in inventorship correction cases, and since plaintiff bears the
burden of proof on the issue at trial, defendants contend that there is a
failure of proof by plaintiff. In such a situation, defendants are not
obliged to offer evidence to prove a negative. See Celotex Corp. v.
Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) ("[T]he
burden on the moving party may be discharged by `showing' — that is
by pointing out to the district court — that there is an absence of
evidence to support the nonmoving party's case.").
Plaintiff argues that "numerous Marketel documents corroborate Marketel
witnesses' account of the process by which Marketel invented and
developed the trade secrets misappropriated by defendants." Opposition at
18:19-20. But instead of presenting this evidence and relating it to the
elements of the cause of action, plaintiff merely states that such
evidence has been "described in great detail above and in the
declarations of Messrs. Rappaport, Shapiro, and Martinez." Id. at
Plaintiff's showing is insufficient. When the moving party points to an
absence of proof and the nonmoving party will bear the burden of proof on
the issue at trial, the nonmoving party must "go beyond the pleadings and
by her own affidavits, or by the `depositions, answers to interrogatories
and admissions on file,' designate `specific facts showing that there is
a genuine issue for trial.'" Celotex, 477 U.S. at 324, 106 S.Ct. 2548
(quoting from Fed.R.Civ.P. 56(c) & (e)).
Plaintiff has designated no specific facts. The previous pages of
plaintiff's opposition brief attempt to draw parallels between the subject
matter of defendants' '207 patent and plaintiff's alleged trade secrets.
Even if the court were to agree that there is a "remarkable correlation"
between defendants' patent claims and plaintiff's alleged trade secrets
(Opposition at 2:7), this does not address, inter alia: (1) which of the
particular claims of the patent were conceived by the alleged inventors;
(2) the timing of the alleged inventors' purported conception of the
patented subject matter; (3) communication of the alleged inventors'
supposed inventions to defendants; or (4) the individual contributions,
and therefore the basis for the claims to inventorship, of Perell,
Martinez, Hughes-Hartogs and Weiss.
Nor do plaintiff's general references to the declarations of
Rappaport, Shapiro and
Martinez carry the day. Plaintiff is obliged to direct the court to
specific primary and corroborative evidence supporting the claims of
priority and derivation. Moreover, to satisfy its burden of proof,
plaintiff's evidence must be clear and convincing. The court is not
obliged to sort through all of plaintiff's declarations to locate
evidence on its behalf. Nor is the court obliged to divine which evidence
is offered to support which aspects of plaintiff's inventorship claim. As
the Ninth Circuit has recently held in similar circumstances: "A lawyer
drafting an opposition to a summary judgment motion may easily show a
judge, in the opposition, the evidence that the lawyer wants the judge to
read. It is absurdly difficult for a judge to perform a search,
unassisted by counsel, through the entire record, to look for such
evidence." Carmen v. San Francisco Unified School District, 237 F.3d 1026,
1029-30 (9th Cir. 2001). Given that the record on these summary judgment
motions measures at least six feet in height, the concerns addressed by
Carmen are very real here.
Perhaps realizing that it had failed to carry its burden in opposing
summary judgment, plaintiff sought leave from the court to file a
sur-reply. The court granted leave, and plaintiff filed a sur-reply.
In its sur-reply plaintiff maintains that it "presented detailed
evidence in its opposition showing triable issues of material fact on the
need to correct inventorship." Sur-Reply at 9:10-11. However, instead of
identifying that evidence and showing how it substantiates and
corroborates plaintiff's claims of priority and derivation, plaintiff
merely string-cites to large portions of the declarations and exhibits of
Rappaport, Martinez, Perell (notably missing from the opposition briefs
recitation of relevant evidence), and Shapiro. See id. at 9:11-13.
Again, the court is left to find for itself how this mass of cited
evidence specifically supports plaintiff's inventorship claim, whether
the evidence is independently corroborated, and which elements of the
claim it is offered to support. As the Carmen court observed, a district
court is not required to "examine reams or file cabinets full of paper
looking for genuine issues of fact, as though the judge were the adverse
party's lawyer[.]" Carmen, supra, at 1031. Similarly, a judge is not
required to guess at what the reams or file cabinets of paper are offered
For example, plaintiff's sur-reply directs the court to exhibits 1-33,
52-54, 55-58, and 60-62 of the Shapiro declaration. See Sur-Reply at
9:13. The bulk of these exhibits — which occupy three thick volumes
— is material related to the application for and issuance of the
'207, '169 and '639 patents. There is no explanation as to how this
extensive material relates to plaintiff's claims of priority and
derivation. There is no attempt to parse out the specific claims of the
patents, which of the alleged inventors conceived of them, when this prior
conception took place, how the substance of the claims was communicated
to defendants, and which documents corroborate the essentials of
plaintiff's claims to inventorship.
In a similar vein, plaintiff directs the court's attention to
paragraphs 13 and 16-89 of the Rappaport declaration. Mr. Rappaport is a
patent attorney and Vice President for Intellectual Property at Aurigin
Systems, Inc. He opines that, based on his review of the pertinent
documents, the "'207 Patent claims cover Marketel's achievement exactly"
or, put another way, "the description of the Marketel system is
sufficient and adequate under patent law to support and be read on the
claims of the '207 patent." Id. at ¶ 16.
Like plaintiff's opposing briefs generally, Mr. Rappaport's declaration
reads as if
it were offered to support a patent invalidity defense in an infringement
case. There are no infringement claims or counterclaims in this case. The
only question before the court on the fifth count is who, among the many
candidates, qualifies legally as an inventor of the '207 patent's subject
matter. As stated above, there is a strong presumption favoring the
inventors named in the patent. Nonjoinder or misjoinder are not supported
by the kind of detailed claim construction Mr. Rappaport's declaration
offers. Nor can such post facto evidence be offered to corroborate
priority or derivation. What plaintiff needs to offer is contemporaneous
evidence — notebooks, non-inventor testimony, experimental
prototypes — confirming that they conceived of the contested subject
matter before the named inventors, and that they communicated its
substance to the named inventors before patenting.
The declarations of Martinez and Perell, CEO and CFO of Marketel
respectively, begin to flesh out the history of Marketel and its
innovative business method plans from its inception as TransNational
TelAssist Corporation in 1984-85. See Martinez Decl. at ¶¶ 2-21;
Perell Decl. at ¶¶ 5-12. Exhibits 60-92 to the Martinez declaration
mostly relate to private placement offerings, and Mr. Perell's
declaration, at paragraphs 5-12, makes many assertions about how the
ideas driving these offerings were communicated to Jaeckle, Walker and
Brier. At first blush, this appears to be the type of evidence required.
On closer inspection, however, this is only the undeveloped germ of an
inventorship correction claim. Mr. Martinez and Mr. Perell are allegedly
co-inventors of the '207 patent. As such, their testimony cannot be
credited without independent corroboration. More importantly, the private
placement documents and alleged communications with Jaeckle, Walker and
Brier admittedly concerned "short-term and long-term plans." Perell
Decl. at ¶ 3. Without more, this does not establish the existence or
communication of a "definite and permanent idea of the complete and
operative invention" needed to support prior conception or derivation. It
also does nothing to prove that all of the alleged inventors contributed
significantly to the patented subject matter.
In sum, even when the court seeks to do the evidentiary work that
should have done by plaintiff's attorneys, it cannot say that there is
any genuine issue of material fact here. The testimony from two of the
alleged inventors is insufficient to raise a triable issue, and there is
insufficient corroborative evidence to substantiate their claims.
For the foregoing reasons, the court GRANTS summary judgment in favor
of defendants on the fifth count, for inventorship correction.
IT IS SO ORDERED.
The Court having granted summary judgment on Counts I, II, and V of the
Third Amended Complaint filed in this action by plaintiff Marketel
International, Inc. ("TAC"), and Count III of the TAC insofar as it was
not based on a claim of false advertising; and plaintiff having dismissed
with prejudice Count IV of the TAC and Count III of the TAC insofar as it
was based on a claim of false advertising by a stipulation of all parties
pursuant to Rule 41(a)(1)(ii) of the Federal Rules of Civil Procedure,
IT IS HEREBY ORDERED, ADJUDGED, AND DECREED, as this Court's final
judgment in the above-captioned
action, that all claims of the TAC are dismissed with prejudice.
STIPULATION FOR DISMISSAL OF REMAINING CLAIMS
STIPULATION OF DISMISSAL
WHEREAS, on December 5, 2000, the Court granted summary judgment on
Counts I, II, and V of the Third Amended Complaint ("TAC") filed in this
action by plaintiff Marketel International, Inc. ("Marketel"), and Count
III of the TAC insofar as it was not based on a claim of false
advertising, and dismissed Priceline Travel, Inc.
WHEREAS, on December 5, 2000, the Court denied summary judgment on
Count IV of the TAC and Count III of the TAC insofar as it was based on a
claim of false advertising, and these are the only claims currently
remaining in this action,
WHEREAS Rule 41(a)(1)(ii) of the Federal Rules of Civil Procedure
provides that "an action may be dismissed by the plaintiff without order
of court . . . by filing a stipulation of dismissal signed by all parties
who have appeared in the action," and
WHEREAS plaintiff Marketel and defendant Priceline.com, Inc.
("Priceline") are the only remaining parties to the action,
NOW, THEREFORE, IT IS HEREBY STIPULATED BY AND BETWEEN THE PARTIES
1. Count IV of the TAC and the remaining aspects of
Count III of the TAC, based on a claim of false
advertising, are dismissed with prejudice; and
2. the parties jointly request that the Court enter a
final judgment in this matter, in the form attached
hereto as Exhibit A, as soon as possible.