Opinion
CASE No. CV 03-1140 MRP
February 17, 2004
MEMORANDUM OF DECISION FINDINGS OF FACT, and CONCLUSIONS OF LAW RE INVENTORSHIP
Commencing December 16, 2003, this Court heard evidence and argument regarding Dr. Huang's assertion that he is an unnamed inventor on the patents claiming the automated DNA sequencer. This Court took the matter under submission, and now decides that Dr. Huang has not succeeded in proving that he is an inventor of the technology at issue. This memorandum begins with a discussion of this Court's reasoning; it proceeds to make findings of fact and conclusions of law.
BACKGROUND
I. Technology
This case involves what was arguably one of the most important advances in biology in the 20th century: the automatic DNA sequencer. The automation of DNA sequencing substantially reduced the time, skill, and money necessary for DNA sequences to be decoded, and consequently enabled such advances as mapping the human genome.
Genetic information is stored on chromosomes that are long strands of DNA. Joint Written Technology Tutorial ("JTT"), 2 (filed 8/19/2003). DNA is composed of nucleotides. Id. Each nucleotide is composed of a sugar molecule, a phosphate molecule, and a base. Id. at 3. The sugar and phosphate groups are the same on each nucleotide, but the base varies. Id. There are four possible bases: adenine (A), cytosine (C), guanine (G) and thymine (T). Id. When scientists sequence DNA they identify the bases and thereby ascertain the order of the nucleotides. Id. at 5.
To sequence DNA, fragments are made from the DNA to be sequenced (the "template"). The template is cut or copied to produce fragments in four sets, corresponding to the four nucleotide bases. Id. at 6. The fragments vary in length, each being one nucleotide shorter than the next, so that there is a fragment (or group of fragments) that ends with each of the nucleotides in the template. Id.
In manual sequencing, the fragments from each reaction are placed in separate wells on an electrophoresis gel. Id. at 17, 21. As the DNA fragments migrate through the gel, the shortest fragments move more quickly and the longer fragments move more slowly. Id. at 14-16. The gel can separate fragments that are differ in length by only one nucleotide. Id. at 14. Because the fragments run through the gel in their four respective lanes, scientists can determine the nucleotide sequence by seeing which lane the shortest fragment is in, and then seeing which lane the next-shortest fragment is in, and so on. Id. at 17-21.
The invention at issue in this case automates this process. The fragments created in the four reactions are each labeled with a different dye. Instead of four separate lanes, the fragments are all run in the same lane. A photometer recognizes the tag on each fragment as it runs through the gel, thereby "reading" the gel much more quickly and accurately than is possible manually.
II. Patents
The automated DNA sequencer is the subject of the four patents at issue in this case, U.S. Patent Nos. 5,171,534 ("`534") (Joint Trial Exhibit ("Ex.") 1); 5,821,058 ("`058") (Ex. 2); 6,200,748 ("`748") (Ex. 3); and 4,811,218 ("`218") (Ex. 4) (collectively, the "Patents"). The named inventors on the `534, `058 and `748 patents are Lloyd M. Smith, Leroy E. Hood, Charles R. Connell, Michael W. Hunkapiller, and Timothy J. Hunkapiller. Exs. 1-3. The California Institute of Technology ("Caltech") is the assignee of the `534, `058 and `748 patents, and Applied Biosystems Group ("ABI"), a division of Applera Corporation ("Applera"), is the exclusive licensee of these patents. Second Amended Complaint ("SAC") ¶ 55-56 (leave to file granted 12/18/03, filed 2/3/04), Michael W. Hunkapiller, Charles R. Connell, John D. Lytle, William J. Mordan, and John A. Bridgham are the named inventors on the `218 patent. Ex. 4. The `218 patent is assigned to ABI. SAC ¶ 59.
The `534 patent was issued December 15, 1992. Ex. 1. Entitled "Automated DNA Sequencing Technique," this patent describes a system whereby DNA fragments are tagged with chromospheres or flurophores that are detected by a photometer as the fragments move through an electrophoresis gel, allowing the researcher to determine the sequence of the DNA being examined. Ex. 1, column 3. The `534 patent contains seven system claims, two of which are independent. Id. at column, 10.
The `058 patent is also entitled "Automated DNA Sequencing Technique." Ex. 2. The `058 patent was issued October 13, 1993. Id. It contains 56 claims, six of which — claims 1, 7, 14, 28, 41 and 54 — are independent. Id. at columns 10-14. Each of the 56 claims in the `058 patent is a method claim. Id. The `058 patent appears to claim the methods for using the system that is claimed in the `534 patent.
The `748 patent issued March 13, 2001 and is entitled "Tagged Extendable Primers and Extension Products." Ex. 3. There are sixty-one claims in this patent. Id. at columns 10-12. At its most basic level, the patent describes a duplex of an oligonucleotide primer and a template, where the primer is covalently coupled to a chromophore or fluorophore such that a polymerase can extend the chain. Id. at column 10, claim 1. The sixty-one claims describe various ways of accomplishing this basic idea. Id. at columns 10-12.
The `218 patent, which issued March 7, 1989, claims improvements on the technology described in the other patents that make it more commercially viable. Ex. 4. The `218 patent contains fourteen claims, and is entitled "Real Time Scanning Electrophoresis Apparatus for DNA Sequencing". Id. With the exception of claim 4, which is a method claim, each of the fourteen claims in the `218 patent are apparatus claims. Id. at columns 10-14. Six of these are independent. Id. Together, these claims describe an apparatus for detecting electromagnetic radiation from electrophoresis lanes. Id. at column 3. Elements of this apparatus focus the radiation, filter the radiation to allow selective transmittal of wavelengths, and detect the intensity of the radiation passing through the filter. Id. at columns 1-3.
III. Case
A. Parties
Plaintiff Henry Huang brought this action against Caltech, Applera, ABI, and the named inventors on the Patents: John A. Bridgham, Charles R. Connell, Leroy E. Hood, Michael W. Hunkapiller, Timothy J. Hunkapiller, John D. Lytle, William J. Mordan, and Lloyd M. Smith ("Individual Defendants") (collectively "Defendants"). SAC ¶ 5-15.
B. Procedural History
Dr. Henry Huang filed his Complaint February 19, 2003 and amended it twice. Amended Complaint (filed June 25, 2003) ("FAC"); SAC. The case was originally assigned to the Honorable Percy Anderson but was transferred to this chambers on August 18, 2003. Order Transferring Action (filed 8/18/03). Prior to transferring the case, Judge Anderson divided it into two stages, so that the inventorship case would be decided before discovery on the remaining claims for relief and damages. Minute Order (filed June 19, 2003). This memorandum of decision resolves the first phase of this case: the question of inventorship.
IV. Inventorship
A. Inventorship Contentions
Dr. Huang narrowed his claims over the course of this case. At Originally Dr. Huang sought a decision that he and Lloyd Smith be named as the only inventors on the `534, `058, and `748 patents, and that the other named inventors (the Hunkapillers, Hood, and Connell) be removed. Complaint ¶ 52-53. He sought to be named as the sole inventor of the `218 patent, and to have his name substituted for the named inventors on that patent (M. Hunkapiller, Connell, Lytle, Mordan, and Bridgham). Complaint ¶ 54-55.
Dr. Huang narrowed his claims slightly prior to trial. Compare Plaintiff's Preliminary Inventorship Contentions (filed July 21, 2003) ("Preliminary Contentions") (claiming that Dr. Huang "invented, or contributed to the invention of" all the claims of each patent), with Plaintiff's Revised Inventorship Contentions (filed Oct. 17, 2003) ("Revised Contentions") (asserting that Dr. Huang was a "co-inventor of each and every claim of the Patents.") In his revised inventorship contentions Dr. Huang claimed to have co-invented the subject matter of the `534, `058, and `748 patents with Dr. Lloyd Smith, and to have co-invented the `218 patent's claims with "other individuals, to be determined by the Court" that Dr. Huang could not name. (Revised Contentions, 11-12).
After considering the evidence produced in discovery and the named inventors' deposition testimony, Dr. Huang evidently reevaluated his position regarding the named inventors' contributions to the patents at issue. At trial, Dr. Huang sought only to have his name added to each of the four patents; he did not seek removal of any of the named inventors. See 12/16/03 Huang Opening Statement 12:22-25 ("what we contend is the single issue before the Court . . . is whether the patents should be corrected to add Dr. Huang as an inventor."). Despite his inability to specify which claims he contributed to in his court-ordered disclosure of inventorship contentions, Dr. Huang was able to specify "representative" claims at trial. 12/17/03 Huang Direct 94:25-103:16; 12/23/03 Huang Closing Argument 19:24-22:14. Dr. Huang asserted that the following represent his contributions to the patents at issue: claim 7 of the `534 patent, claims 14, 20 and 21 of the `058 patent, claim 8 of the `758 patent, and claim 4 of the `218 patent. Id. In his testimony, Dr. Huang identified what he believed to be his contributions to each of these patents. 12/17/03 Huang Direct 94:25-103:16.
B. Core Concepts
Rather than explain his asserted contributions claim-by-claim, Dr. Huang structured his inventorship claims around four core concepts that he asserted he contributed to the DNA sequencer and thus to the patents at issue. First, Dr. Huang contended that the idea of using optical detection in the DNA sequencer was his. 12/16/03 Huang Direct 92:6-106:17. Dr. Huang also claimed that it was his idea to chemically tag DNA with chromophores and fluorophores. 12/17/03 Huang Direct 3:9-26:19. Next, Dr. Huang argued that the concept of tagging DNA reactions with four different dyes and running all four reactions in the same lane on an electrophoresis gel was his idea. 12/17/03 Huang Direct 26:20-48:17. Finally, Dr. Huang claimed credit for the idea of automated detection and real time computer analysis. 12/17/03 Huang Direct 49:3-62:3.
ANALYSIS
I. Burden of Proof
The applicable burden of proof was the key consideration for this Court in evaluating Dr. Huang's inventorship contentions. The Court found Dr. Huang to be a credible witness, and is not convinced that he had no role at all in the development of the technology at issue here. Nevertheless, it was Dr. Huang's burden to prove by clear-and convincing evidence that he was an inventor. Hess v. Advanced Cardiovascular Systems, Inc., 106 F.3d 976, 980 (Fed. Cir. 1997) Primarily because his story was largely uncorroborated, but also because the evidence presented did not justify his inventorship claims, Dr. Huang has failed to meet his burden.
II. Corroboration
Dr. Huang's proffered evidence consisted almost exclusively of his own testimony and his laboratory notebooks. In establishing his case, Dr. Huang's testimony would not be sufficient on its own, even if he were completely credible. When a party seeks to establish conception via his own testimony, it is well established that the party must provide corroborating evidence. Chen and Farina v. Bouchard et al., 347 F.3d 1299, 1309 (Fed. Cir. 2003); Singh v. Brake, 317 F.3d 1334, 1340-41 (Fed. Cir. 2002).
Dr. Huang's laboratory notebooks are not sufficient corroborating evidence in and of themselves, Chen, 247 F.3d at 1310; Singh, 317 F.3d at 1340-42, and this Court has little additional evidence to consider in evaluating Dr. Huang's inventorship claim. Although Dr. Huang seemed to be intelligent and was convincing in some of his testimony, his testimony regarding corroborating evidence was not convincing. The passage of time and the obviously unreliable state of his records negatively affected the evidentiary weight this Court could give them. Dr. Huang's reliability was further impaired by this failure to determine at an earlier date whether this invention was his, despite the magnitude of the invention.
Dr. Huang brings this case almost twenty years after his laboratory notebooks were created. In the intervening time, the invention that he now claims to have conceived has received international acclaim and tremendous financial success. Even honest and well meaning people might be tempted to amplify their role in creating such an important invention: this is exactly the concern that the corroboration requirement is designed to address. Hess, 106 F.3d at 980. The requirement that testimony be corroborated is designed to ameliorate the concern that a party describing his actions in retrospect might be tempted to do so in "an unjustifiably self-serving manner." Chen, 347 F.3d at 1309; Singh, 317 F.3d at 1341. This Court must look for corroborating evidence to determine whether Dr. Huang's memory of his participation in conceiving of the DNA sequencer is unjustifiably flattering.
To determine whether Dr. Huang's testimony has been sufficiently corroborated, this Court must use a "rule of reason" analysis. See Chen, 347 F.3d at 1309-10; Singh, 317 F.3d at 1342. There is no particular formula that the putative inventor must follow to corroborate his testimony. Chen, 347 F.3d at 1309; Singh, 317 F.3d at 1341. Under the "rule of reason" analysis, the Court must evaluate all pertinent evidence and make a determination of the credibility of the inventor's testimony. Chen, 347 F.3d at 1310; Singh, 317 F.3d at 1341. However, the rule of reason analysis "does not alter the requirement of corroboration of an inventor's testimony. Evidence of inventive facts must not rest alone on the testimony of the inventor himself." Chen, 347 F.3d at 1310; Singh, 317 F.3d at 1341.
Dr. Huang offered his lab notebooks as corroboration of his testimony. Perhaps unfortunately for Dr. Huang, the Federal Circuit does not recognize a putative inventor's lab notebooks as sufficient corroboration of his testimony, at least where their contents are not corroborated by witnesses or other evidence. See Chen, 347 F.3d at 1310 (holding lab notebooks to be uncorroborated where their authors could not produce witnesses to verify their contents); Singh, 317 F.3d at 1340-42 (same). With the exception of one drawing that is not directly relevant to his inventorship contentions (Ex. 14), Dr. Huang's lab notebooks are not witnessed, or even consistently or reliably dated. 12/18/03 Huang Cross 56:24-57:13. He did not produce witnesses to verify their contents. The lab notebooks are Dr. Huang's uncorroborated work product, and like his testimony they must be verified to be persuasive. Thus only in those instances where Dr. Huang's lab notebooks were corroborated by independent evidence were they considered at all persuasive by this Court.
III. Conclusions re Inventorship
Dr. Huang proposed four "core concepts" that he believed were his ideas that made their way into the patents at issue. To support these contentions, Dr. Huang offered six items of independent evidence (that is, evidence distinct from his testimony and his lab notebooks): 1) the invention disclosure form listing October 1, 1982 as the named inventors' date of conception (Ex. 116), 2) the letter from Bayer AG ("Bayer") to Dr. Huang (Ex. 576), 3) Dr. Huang's letter to David Ward (Ex. 612), 4) the letter Lloyd Smith wrote regarding the various inventors' participation in the project (Ex. 133), 5) Lloyd Smith's testimony that the multiple color idea was Dr. Huang's idea (12/22/03 a.m. Smith Direct 17:3-13; 12/22/03 a.m. Smith Cross 28:20-25; Smith Deposition 25:20-26:3), and 6) Lloyd Smith's testimony that he did not remember the October 1, 1982 "epiphany" meeting (12/22/03 a.m. Smith Cross 31:1-32:13; 12/23/03 Huang Closing Argument 94:4-95:15).
Dr. Huang argued that the invention disclosure form demonstrates that the core concepts were his. The October 1, 1982 conception date listed on that form is a reference to a meeting that occurred on that date, and that was memorialized in Lloyd Smith's notes dated October 29, 1982. Ex. 104; 12/19/03 Hood Cross 47:10-48;3; 12/22/03 a.m. Smith Cross 30:20-31:3. Dr. Huang noted that the named inventors had done no experimentation prior to the October 1, 1982 conception date listed on the invention disclosure form and suggested that this indicates that the named inventors drew their ideas from Dr. Huang's work, 12/23/03 Huang Closing Argument 17:12-18:14. This evidence is insufficient to demonstrate Dr. Huang's conception of the core concepts. The named inventors testified that the date listed on the invention disclosure form was the date that they had a definite research plan in place that led to the invention being disclosed. 12/19/03 Hood Direct 16:16-18:18; 12/19/03 Hood Cross 46:16-20. Dr. Huang has given the Court no reason to suppose that the inventors — none of whom were lawyers — meant to indicate that they fulfilled the legal definition of conception on October 1, 1982. This Court must look for other evidence to support Dr. Huang's contention that the core concepts disclosed on the invention disclosure form were his.
Dr. Huang did not present any other independent evidence to support his contention that the idea of optical detection was his. He also cannot support his contention that the idea of real-time analysis was his with independent evidence. Because Dr. Huang's testimony and laboratory notebook entries on these two concepts are not corroborated by any evidence independent of Dr. Huang, he has not proved conception of optical detection or automated detection and real time analysis. He has therefore not proved that he is an inventor of these two Core concepts.
This leaves only two of Dr. Huang's core concepts for the Court to evaluate using the "rule of reason" test: 1) Dr. Huang's contention that tagging DNA with chromophores or fluorophores was his idea and 2) Dr. Huang's contention that it was his idea to use multiple color tags to run each of the four sequencing reactions in one lane.
A. Tagging DNA with Chromophores or Fluorophores
Dr. Huang presented a letter written to him by Bayer in response to Dr. Huang's request for texfile dye suggestions from the company (Ex. 576). Dr. Huang offered this evidence to support his contention that he conceived of tagging DNA with colored dyes. Applying the "rule of reason" to this evidence, it is impossible to conclude that it supports Dr. Huang's contention. In Singh, the putative inventor ordered the product that was actually used in the invention at issue, and this was insufficient to demonstrate conception. 317 F.3d at 1341. In this case, Dr. Huang ordered a product that was not used in the ultimate invention, and that has never been proved to work (Dr. Huang never tested the dyes he ordered, and the record reflects that an entirely different process was used to attach tags to DNA in the patented invention). Even if the dyes he ordered did work, nothing in the fact that he ordered them demonstrates that doing so was his idea. The leap from ordering texfile dyes to tagging DNA with chromophores or fluorophores is simply too great for this Court to make without further corroborating evidence.
Dr. Huang also offered a letter written to David Ward seeking more information about chemistry that might be useful in attaching dyes to DNA. This letter proves only that Dr. Huang was exploring the idea of tagging; it does not demonstrate that the idea was his. It just as likely that Dr. Hood assigned Dr. Huang to explore this idea as it is that Dr. Huang discovered the idea on his own. Furthermore, the chemistry discussed in the Ward letter teaches away from the chemistry that was ultimately utilized in the Patents. Even if Dr. Huang were able to prove that the idea of using the Ward chemistry was his, this is not the chemistry that was used in the Patents. The letter does not support Dr. Huang's contention that the concept of tagging DNA with chromophores or fluorophores was his; it only demonstrates that Dr. Huang was headed down the wrong path in attempting to work out the attachment chemistry.
B. Using Multiple-Color Tags to Allow All Reactions to be Run in One Lane
The other three pieces of independent evidence that support Dr. Huang's claim of inventorship each support the idea that he conceived of the use of multiple dyes. First, Dr. Huang presented a letter authored by Lloyd Smith in which Dr. Smith acknowledged Dr. Huang as the source of the multiple color idea (Ex. 133). Second, Dr. Smith testified both in his deposition and in the hearing that Dr. Huang had mentioned multiple colors to him. Smith Deposition 25:20-26:3; 12/22/03 a.m. Smith Direct 17:3-13; 12/22/03 a.m. Smith Cross 28:20-25. Third, Dr. Smith testified that unlike his co-inventors he does not remember the October 1, 1982 "epiphany" meeting. 12/22/03 Smith Cross 31:1-32:13. Dr. Huang asked this Court to infer that Dr. Smith does not remember this meeting because the multiple color idea that seemed so revolutionary to the other participants was not new to Dr. Smith, because Dr. Smith had already heard it from Dr. Huang. 12/23/03 Huang Closing Argument 94:4-95:15.
The first two of these pieces of evidence — the letter and Dr. Smith's testimony that Dr. Huang told him about multiple colors — support the idea that Dr. Huang knew about multiple colors and communicated that knowledge to Dr. Smith. This evidence makes it clear that Dr. Huang had the idea of tagging with multiple colors, but does not demonstrate that he understood the concept that is claimed in the patents at issue — that each reaction could be tagged with a separate color and run in one lane. The main issue is thus whether "multiple colors" necessarily implies "four colors in one lane." Dr. Huang has not demonstrated that it does.
Dr. Smith and Dr. Wetmur testified that there were other possible uses of multiple colors, such as running controls. 12/22/03 a.m. Smith Cross 50:14-51:1; 12/22/03 Wetmur Direct 15:10-16:9. It was not clear from their testimony whether those alternate uses of multiple colors were known or used at the time. Nevertheless, it is not the Defendants' burden to prove that there were other uses of multiple colors. Instead, it is Dr. Huang's obligation to offer clear and convincing evidence that the single lane concept was his. In his closing argument, Dr. Huang's counsel made much of Dr. Smith's testimony at the hearing that "the one lane is sort of implied when you talk about the four-dye idea" but counsel ignored that immediately before making that statement Dr. Smith testified that the idea of multiple colors is "very distinct than the idea of four dyes in one lane as a solution to the alignment problem." 12/22/03 a.m. Smith Cross 50:14-51:1; see 12/23/03 Huang Closing Argument 93:3-16.
The Defendants also offer Dr. Wetmur's testimony to confirm this distinction between multiple colors and four colors in one lane, but this Court did not find his testimony particularly persuasive, particularly in light of the fact that Dr. Wetmur draws this distinction in an incongruous paragraph appended to the supplemental expert report that was likely prepared by defense counsel. 12/22/03 Wetmur Direct 15:10-16:9; 12/22/03 p.m. Wetmur Cross 42:20-46:8.
Neither the picture of the sequenator offered as Exhibit 30 or the list of the emission levels of various tags offered as Exhibit 704 demonstrate the single lane idea. Although the picture in Exhibit 30 shows one lane, there is no way to know whether this one lane represents the entire four well gel, whether the one lane is simply one of four, or, as Dr. Huang contended, it represents an understanding of the four-dye one lane idea. None of the listed "advantages" in Exhibit 30 indicate any understanding of the single lane idea or its impact on the alignment problem. Similarly, although Exhibit 704 shows that Dr. Huang contemplated multiple colors, it does not demonstrate that he envisioned using the multiple colors to separately tag each sequencing reaction and run them in a single lane.
These notebook entries are considered because they are at least potentially corroborated by Smith's letter and Smith's testimony.
Dr. Huang offered no proof that running all four reactions in a single lane was the intended or only possible use of multiple colors. Instead, he asks the Court to infer that the single lane idea was his from the fact that Dr. Smith does not remember the meeting where the other inventors had the four color/one lane "epiphany." If the burden of proof were lower, the Court might arguably be willing to make that inference, but here Dr. Huang's obligation was to offer clear and convincing evidence. As no piece of independent evidence mentions the single lane concept or indicates that Dr. Huang understood the four-color/one-lane idea, this Court holds that Dr. Huang has not demonstrated that the four-color/one-lane idea was his.
IV. Conclusion
The Federal Circuit's requirement that testimony and uncorroborated lab notes be verified with independent evidence distills this case down to very few pieces of evidence. None of these satisfy the requirement that Dr. Huang offer clear and convincing proof of his conception. This Court therefore concludes that Dr. Huang has not demonstrated that he should be named as an inventor of the technology claimed by the `534, `058, `748, and `218 patents. The Court therefore declines to order that Dr. Huang be substituted or added as an inventor on these patents.
The Court drew the foregoing conclusion regarding inventorship based on the following findings of fact and conclusions of law.
FINDINGS OF FACT
I. Background
A. Cause of Action
B. Parties
1. Plaintiff Henry Huang brought this action against Defendants California Institute of Technology ("Caltech"), Applera Corporation ("Applera"), Applied Biosystems Group ("ABI"), Lloyd M. Smith, Leroy E. Hood, Michael W. Hunkapiller, Timothy J. Hunkapiller, Charles R. Connell, John D, Lytle, William J. Mordan and John A. Bridgham (collectively "Individual Defendants"). Second Amended Complaint ("SAC"), p. 1.
2. Plaintiff Henry Huang has sought, by this action, to add or substitute himself as an inventor to Unites States Patents Nos. 5, 171, 534 ("`534"); 5,821,058 ("`058"); 6,200,748 ("`748"); and 4,811,218 ("`218") (collectively, the "Patents"); establish a constructive trust over proceeds Defendants have and will receive relating to the Patents; force Defendants to account to him for royalties received from the license or sale of the methods or apparatus disclosed in all United States and foreign patents that Defendants have filed or obtained relating to the Patents; and recover actual and punitive damages for Defendants' unfair and fraudulent activities with respect to their failure to acknowledge him as an inventor of the subject matter of the patents. SAC ¶ 4.
3. On June 19, 2003, the Court held a status conference at which it was decided that the case would be divided into two phases, with the Court hearing the dispute regarding inventorship prior to the other issues in the case. Minutes Order (filed June 19, 2003).
4. This matter came on for hearing before this Court on December 16, 2003. This Court heard the evidence, considered the briefs and arguments of counsel, and evaluated the testimony of the witnesses.1) Plaintiff Dr. Henry Huang
5. Plaintiff Henry Huang is an individual residing in St. Louis, Missouri. SAC at ¶ 5. Dr. Huang was a postdoctoral fellow in Dr. Hood's Caltech laboratory from 1977 to 1982. 12/16/03 Huang Direct 62:3-7. Between 1979 and 1982, Dr. Huang worked in Dr. Hood's laboratory; one of his projects was to develop an automated DNA sequencer. 12/17/03 Huang Direct 83:23-84:1; 12/18/03 Hood Direct 168:2-11.
6. Defendant Caltech is a private, not for profit university located in Pasadena, California. Answer and Counterclaim of Defendant California Institute of Technology to Plaintiff Henry Huang's Amended Complaint ("Caltech Answer"), at ¶ 5.
7. Defendant Applera is a Delaware corporation with a regular and established place of business in Norwalk, Connecticut. Defendant ABI is a business unit of Applera Corporation and has a regular and established place of business in Foster City, California. Answer of Defendants Applera Corporation and Its Applied Biosystems Group to Plaintiff Henry Huang's Amended Complaint and Counterclaims ("Applera Answer") at ¶¶ 6-7.
8. Defendant Leroy M. Smith is an individual residing in Wisconsin. Answer to Complaint and Counterclaim by Defendant Leroy Hood Against Plaintiff Henry Huang ("Smith Answer") at ¶ 9. Dr. Smith joined Dr. Hood's laboratory as a post doctoral fellow in April, 1982. 12/19/03 Smith Direct 127:12-17. Smith Depo. at 9:25-10:5. Dr. Smith is a named inventor on the `534, `058 and `748 patents. Ex. 1-3.
9. Defendant Michael Hunkapiller is an individual residing in California. Answer of Plaintiff Michael W. Hunkapiller to Plaintiff Henry Huang's Amended Complaint ("M. Hunkapiller Answer") at ¶ 11. Dr. M. Hunkapiller is a named inventor on each of the patents at issue. Ex. 1-4.
10. Defendant Timothy J. Hunkapiller is an individual residing in Washington. Answer of Timothy J. Hunkapiller to Plaintiff Henry Huang's Amended Complaint ("T. Hunkapiller Answer") at ¶ 10. Dr. T. Hunkapiller is a named inventor on the `534, `058, and `748 patents. Ex. 1-3.
11. Defendant Charles Connell is an individual residing in California. Answer of Charles R. Connell to Plaintiff Henry Huang's Amended Complaint ("Connell Answer") at ¶ 12. Dr. Connell is a named inventor on each of the patents at issue. Ex. 1-4.
12. Defendant John D. Lytle is an individual residing in California. Answer of John D. Lytle to Plaintiff Henry Huang's Amended Complaint ("Lytle Answer") at ¶ 13. Dr. Lytle is a named inventor on the `218 patent. Ex. 4.
13. Defendant William J. Mordan is an individual residing in California. Answer of William J. Mordan to Plaintiff Henry Huang's Amended Compliant ("Mordan Answer") at ¶ 14. Dr. Mordan is a named inventor on the `218 patent. Ex. 4.
14. Defendant John A Bridgham is an individual residing in California. Answer of John A. Bridgham to Plaintiff Henry Huang's Amended Complaint ("Bridgham Answer") at ¶ 15. Dr. Bridgham is a named inventor on the `218 patent. Ex, 4.
15. The automated DNA sequencer is the instrument that enables sequencing of the human genome and has been characterized as one of the most important instrument developments in biology in the 20th Century. 12/19/03 Hood Direct 13:6-14.
16. An automated DNA sequencer was developed in the early 1980s in Dr. Hood's laboratory at Caltech and at ABI. 12/19/03 M. Hunkapiller Direct 88:2-7.
17. The invention of the automated DNA sequencer led to three United States patents, which are assigned to Caltech: the `534, `058, and `748 patents. Joint Trial Exhibits ("Ex.") 1, 2, and 3.
18. ABI later improved on the original DNA sequencer prototype and developed a commercial product that could be made widely available to the scientific community. 12/19/03 M. Hunkapiller Direct 91:25-93:22; Ex. 4.A. Protein Sequencer
19. Dr. Hood and his staff started work on an automated protein sequencer in the early 1970s, but the effort really began to advance after Dr. Mike Hunkapiller started working on the project in the mid-1970s. 12/18/03 Hood Direct 154:21-155:5; 12/19/03 M. Hunkapiller Direct 68:16-69:4.
20. By 1978, Drs. Hood and M. Hunkapiller had published their work on the development of an automated protein sequencer. 12/18/03 Hood Direct 154:21-155:8; 157:12-158:3; Ex. 668.
21. Drs. Hood and M. Hunkapiller received a patent for their work on automated protein sequencing. 12/18/03 Hood Direct 158:5-11, Ex. 711.
22. The protein sequencer was not a prototype for the DNA sequencer. 12/19/03 Hood Cross 28:6-9.
23. However, several core concepts for the DNA sequencer were first developed in the context of the protein sequencer, including optical detection, chemically attaching chromophores to protein fragments, and automated detection and real time computer analysis. 12/18/03 Hood Direct 159:11-160:25; Exs. 668 and 711.
24. The fundamental technologies for manual DNA sequencing (the Sanger and Maxam-Gilbert methods) were developed in the mid-1970s and first published in 1977. 12/18/03 Hood Direct 164:4-17; Ex. 743.A. Dr. Huang's Work
25. In 1979, Dr. Hood discussed automated DNA sequencing with Dr. Huang and they agreed that Dr. Huang would work on an approach to automated DNA sequencing. 12/18/03 Hood Direct 165:2-4; 166:14-18.
26. Dr. Huang spent approximately 15-20% of his time working on the automated DNA sequencer. See 12/18/03 Hood Direct 168:5-11.
27. Dr. Huang's research on the automated DNA sequencer focused primarily on detecting DNA with ultraviolet (UV) light. 12/18/03 Huang Cross 62:2-6; 12/18/03 Huang Direct 94:4-9.
28. In the fall of 1979, Huang led an in-house discussion with Caltech Engineering and Applied Sciences division engineers. This began a collaborative relationship with a number of engineers who assisted Dr. Huang in developing a prototype. 12/16/03 Huang Direct 101:3-9; 12/19/03 M. Hunkapiller Direct 72:12-19.
29. During the course of his research, Dr. Huang regularly disclosed the status of his DNA Sequencer project to Dr. Hood. 12/19/03 Hood Cross 7:1-7; 31:14-19. Dr. Hood was Dr. Huang's mentor, and Dr. Huang and Dr. Hood interacted on a weekly to bi-weekly basis to discuss Dr. Huang's work, including the status of the DNA sequencer project. 12/19/03 Hood Cross 31:14-19.
30. Dr. Huang disclosed his work to other members of the lab, including T. Hunkapiller and M. Hunkapiller, in presentations of his work. 12/19/03 T. Hunkapiller Direct 113:14-114:10; 12/19/03 M. Hunkapiller Direct 70:4-72:19.
31. When Dr. Huang left Caltech, his prototype was configured to use UV detection of DNA. 12/18/03 Huang Cross 126:14-127:25.
32. Because it was designed for UV detection, Dr. Huang's prototype was not a precursor to the patented inventions at issue. 12/18/03 Huang Cross 126:14-16.
33. Dr. Huang was never able to sequence DNA using his prototype or any other automated method. 12/18/03 Huang Cross 50:5-9; 125:3-7.
34. Dr. Huang left Caltech at the end of August or beginning of September 1982. 12/16/03 Huang Direct 62:6-7.
35. Dr. Huang abandoned his automated DNA sequence project when he left Caltech and took his lab notes with him. 12/18/03 Huang Cross 13:4-17; 9:21-10:2.
36. Although Dr. Huang published at least ten papers while he was a post-doctoral scholar in Dr. Hood's lab, he never published anything in connection with the automated DNA sequencer. 12/18/03 Hood Direct 169:14-17; 12/18/03 Huang Cross 50:10-12.
37. Although Dr. Huang sought a patent for an unrelated project, and consequently must have known about the patent process, he never sought a patent for his work on the DNA sequencer. Ex. 8; 12/17/03 Huang Cross 104:17-23.
38. Dr. Smith joined Dr. Hood's laboratory as a post doctoral fellow in 1982. Dr. Smith had no molecular biology background, and began manually sequencing DNA to develop his recombinant DNA and molecular biology skills. 12/19/03 Smith Direct 128:7-129:6.
39. At some point prior to Dr. Huang's departure from Caltech, Dr. Smith became interested in the DNA sequencer project. 12/19/03 Smith Direct 129:7-14.
40. At Dr. Hood's request, Dr. Smith analyzed Dr. Huang's progress on the DNA sequencer project. 12/19/03 Smith Direct 129:15-23; 134:4-9.
41. Dr. Smith met with Dr. Huang two or three times. 12/19/03 Smith Direct 129:25, 137: 4-14; 12/17/03 Huang Direct 62:13-18. During the conversations between Drs. Smith and Huang, Dr. Huang mentioned "multiple dyes." 12/22/03 Smith Cross 28:21-25; Ex. 133.
42. Dr. Smith also spoke with Caltech engineers about the DNA sequencer project and viewed the prototype. 12/19/03 Smith Direct 134:11-18.
43. The May/June 1982 issue of High Technology magazine depicted a spiral-shaped capillary that could be meters long but still could be scribed onto a silicon wafer only a few centimeters in size. 12/19/03 T. Hunkapiller Direct 115:4-22; Ex. 270; Ex. 117.
44. Dr. T. Hunkapiller saw the High Technology article and discussed with Dr. M. Hunkapiller the potential for using a capillary for DNA sequencing. 12/19/03 T. Hunkapiller Direct 116:4-16; 12/19/03 M. Hunkapiller Cross 100:3-11.
45. The difficulty of scribing four separate lanes onto a silicon wafer led the Hunkapillers to consider the four-color/one-lane approach. 12/19/03 M. Hunkapiller Direct 78:23-79:7; 12/19/03 M. Hunkapiller Cross 100:15-24.
46. On or about October 1, 1982 Drs. M. Hunkapiller, T. Hunkapiller, Hood and Smith discussed labeling DNA fragments with different spectrally distinct fluorescent dyes and running them in a single lane. 12/19/03 M. Hunkapiller Direct 80:5-14; 12/19/03 T. Hunkapiller Direct 117:18-118:13; 12/19/03 Hood Direct 15:13-17:5. This is the "four-color" idea and implied four colors in a single lane. 12/22/03 Smith Cross 50:25-51:1.
47. This conversation was memorialized in notes Dr. Smith prepared and dated October 29, 1982. Ex. 178; 12/19/03 M. Hunkapiller Direct 82:22-83:13.
48. Dr. Smith spent substantial time researching the chemistry that would be necessary to implement the four-color/one-lane idea. He settled on a modified form of thymidine that had an amino group at the 5' end and protective chemistry that would allow it to be used in standard DNA synthesis. 12/22/03 a.m. Smith Direct 11:5-12:4; 14:8-17. Dr. Smith published this solution in a scientific journal in 1985. 12/22/03 a.m. Smith Direct 15:9-20; Ex. 137.
49. On November 28, 1983 Drs. Smith, T. Hunkapiller, and M. Hunkapiller filed an Invention Disclosure Form with Caltech that claimed an automated DNA sequencer. 12/22/03 a.m. Smith Cross 43:21-45:6; Ex. 116.
50. Caltech filed U.S. patent application No. 570,973 (the "`84 application") on January 16, 1984. 12/19/03 Hood Direct 21:21-22; Ex. 106. The `84 application adds Dr. Hood as an inventor. Ex. 106.
51. The prosecution of the `84 application eventually resulted in the issuance of the `534 Patent, the `058 Patent and the `748 Patent. Ex. 1, 2, and 3.A. Optical Detection
52. The optical detection of DNA, with or without the use of dyes, was a standard technique that had been known for many years at the time Dr. Huang was conducting his research into automatic DNA sequencing. Ex. 708; 12/22/03 a.m. Wetmur Direct 63:17-64:19; 12/18/03 Hood Direct 159:22-160:1.
53. Optical detection as an alternative to radioactivity was already a component of the protein sequencer developed by Drs. Hood and M. Hunkapiller. 12/18/03 Hood Direct 158:21-160:1; 12/19/03 M. Hunkapiller Direct 66:19-68:10; Ex. 668.
54. Dr. Huang was aware of the protein sequencer work in Dr. Hood's laboratory before he began work on the automated DNA sequencer. 12/18/03 Huang Cross 5:3-11. Dr. Huang was also aware of the use of fluorescent labeling as opposed to radioactivity in the context of automated protein sequencing. 12/18/03 Huang Cross 60:21-61:2.
55. Dr. Huang never had a definite and permanent idea of how to perform automated DNA sequencing using optical detection by the innate UV absorbance of DNA, and, to this day, there is no evidence that such an approach would work at all. See 12/16/03 Huang Direct 95:17-21; 98:18-24.1) Idea of Using Tagging
56. The concept of detecting DNA fragments by tagging them with fluorophores was well known before 1979. 12/22/03 a.m. Wetmur Direct 63:17-65:12; Exs. 708, 712, 163.
57. Drs. Hood and M. Hunkapiller used a tagging approach in the protein sequencer. 12/18/03 Hood Direct 160:2-6; 12/19/03 M. Hunkapiller Direct 67:11-17; 12/18/03 Huang Cross 60:21-61:11.
58. Dr. Hood urged Dr. Huang to employ fluorescence as a means of detecting DNA to maximize sensitivity. 12/18/03 Hood Direct 167:4-8; 12/19/03 Hood Direct 8:20-24; 12/17/03 Huang Direct 10:12-14.
59. Dr. Huang pointed out the difficulties of using fluorescent tagging, including the fact that chemical methodology for using fluorescent dyes in sequencing had not been developed. 12/18/03 Hood Direct 166:21-167:12; 12/19/03 Hood Direct 8:6-12; 12/17/03 Huang Direct 10:21-11:24; 12/18/03 Huang Cross 86:2-13.
60. Dr. Huang preferred the use of UV detection for the DNA sequencer. 12/18/03 Hood Direct 167:10-18; 12/19/03 Hood Direct 8:6-12; 12/19/03 M. Hunkapiller Direct 74:11-19.
61. Dr. Huang's prototype contemplated using ultraviolet detection. 12/16/03 Huang Direct 101:10-103:2; 12/18/03 Huang Cross 61:20-62:6; Ex. 592.
62. Dr. Huang's notes dated between October and December 1979 refer only to detection of DNA by its innate UV absorbance. 12/17/03 Huang Direct 3:24-4:2; 12/16/03 96:19-97:15; 98:2-11; Ex. 10.
63. The ideas about fluorescence detection in Ex. 623 were taken directly from the prior art. 12/17/03 Huang Direct 22:5-25:13.
64. Dr. Huang's 9/1/1981 notebook entry demonstrates that he had no particular concept of what an appropriate chemical tag would be. Ex. 641 at HNG 10984 ("chromophore can be visible, IR [infrared], fluorescent, NMR, MS [mass spectrometry], stable isotope, whatever"); Huang Direct 12/17/03 5:14-6:9.
65. In January 1981, Dr. Huang wrote to Bayer AG ("Bayer") and asked whether the company could provide him with dyes that reacted with DNA. 12/17/03 Huang Direct 15:14-25; 16:4-24; Ex. 576.
66. Dr. Huang had no definite concept of which Bayer dyes would be useful. He thought that dyes that attached to cotton might also attach to DNA. 12/18/03 Huang Cross 91:15-92:10. He hoped that "in their expertise" Bayer might be able to identify a suitable dye. 12/17/03 Huang Direct 16:14-19.
67. Dr. Huang never tested the dyes Bayer sent, and is still unaware of whether they would have been useful for DNA sequencing. 12/18/03 Huang Cross 93:5-94:9.
68. Dr. Huang attempted to label the 3' end of DNA with Remazol Brilliant Blue in an experiment recorded in his notes dated August 31, 1981. Ex. 641; 12/18/03 Huang Cross 83:11-84:5. This experiment was unsuccessful. 12/18/03 Huang Cross 88:8-19.
69. Even if the Remazol Brilliant Blue experiment had been successful, the resulting tag would not have been useful for DNA sequencing because 3' labeling is incompatible with the sequencing reaction. 12/22/03 a.m. Wetmur Direct 69:16-79:6, Ex. 200A, at 10.
70. Other than the Remazol Brillant Blue experiment, Dr. Huang never again attempted to attach any dye to DNA. 12/18/03 Huang Cross 48:23-25.
71. Dr. Huang's notes indicate that he attempted to identify specific absorptive and fluorescent dyes that he could potentially attach to DNA. Ex. 621; 12/17/03 Huang Direct 6:14-7:8.
72. Dr. Huang never identified a chromophore or fluorophore that would work for the automatic sequencing of DNA. 12/18/03 Huang Cross 49:9-15.
73. Dr. Huang had no definite or permanent idea of what tags would be practical for use in DNA sequencing. See 12/18/03 Huang Cross 48:9-49:15; 12/18/03 Huang Cross 93:22-94:9.
74. The outline on which Dr. Huang relies to show that he was contemplating optical detection by attaching dye tags to DNA in late 1979 or early 1980 does not describe a process for attaching dyes to DNA. Ex. 592 ("[D]ecide if new approach is required e.g. go to visible by using dyes as tags . . . Try to develop visible approach").
75. Dr. Huang's outline is undated and uncorroborated. 12/16/03 Huang Direct 100:4-9, 101:19-103:2, Ex. 592.
76. In January 1982 Dr. Huang wrote to David Ward to request a sample of Ward's chemistry to confirm that it would provide an interim method of attaching a dye to DNA. 12/17/03 Huang Direct 21:12-18; Ex. 612.
77. Dr. Huang's list of potential chemistry methods for attaching dyes to DNA (Ex. 614) is composed of methods taken from the literature and known at the time. 12/17/03 Huang Direct 12:1-14:19. The purpose of the list was to write down "the kinds of methods people have used to modify DNA." 12/17/03 Huang Direct 13:7-21.
78. Dr. Huang's list shows that he had not settled on any particular method of attaching DNA, as evidenced by the fact that they list up to eight different methods. They further show that Dr. Huang did not have a definite or permanent idea of where on the DNA to attach a dye, as evidenced by the fact that the notes mention attaching a dye to either the 5' or 3' end of a DNA. Exs. 614 and 621; 12/22/03 Wetmur Direct p.m. 7:16-8:4.
79. Dr. Huang's list was, at best, a research plan. 12/18/03 Huang Cross 119:17-120:15.
80. Dr. Lloyd Smith eventually developed a method of labeling DNA with a chromophore or fluorophore by attaching an amino group to the 5' end of a synthetic nucleotide. 12/17/03 Huang Direct 19:2-20:2; 12/22/03 a.m. Smith Direct 8:19-10:6.
81. Dr. Huang never successfully coupled a chromophore or any other reporter molecule to DNA. 12/18/03 Huang Cross 48:13-49:8.
82. Dr. Huang had no definite or permanent idea of how to tag DNA with dyes.
83. When multiple bands of DNA simultaneously migrate through multiple lanes on an electrophoretic slab gel they are subject to different temperatures from one lane to the next. The differing temperatures cause DNA to migrate at different speeds. This creates an alignment problem, known as "smile". 12/17/03 Huang Direct 27:6-28:24; Exhibit 698 at 3862(b).
84. The eventual solution to the "smile" problem was to use a different colored tag for each of the four sequencing reactions and run all of the DNA fragments in one lane.
85. In a March 2, 1991 letter, Dr. Smith wrote that Dr. Huang was the inventor of the "multiple color" idea. Ex. 133.
86. Dr. Smith testified that he heard the multiple color idea from Dr. Huang. 12/22/03 a.m. Smith Cross 28:21-25; Ex. 133.
87. The multiple color idea is not necessarily equivalent to the idea that fragments tagged with four different colors could be run in a single lane as a solution to the smile problem. 12/22/03 a.m. Smith Cross 50:14-51:1.
88. Dr. Huang relied on a sketch (Ex. 30) to corroborate his claims that he conceived the idea of labeling each nucleotide with a different colored dye and detecting all four sequencing reactions in a single tube. 12/18/03 Huang Cross 102:5-103:12. He claimed that the single detector and single lane depicted in this sketch shows that he had the four-color/one-lane idea. 12/17/03 Huang Direct 37:15-43:14; Ex. 30; 12/18/03 Huang Cross 99:13-19.
89. Exhibit 30 says nothing about labeling DNA with four different colored dyes and electrophoresing them in a single tube. Ex. 30.
90. Dr. Huang's sketch (Ex. 30) lists advantages of the depicted setup; this list does not include solving the alignment problem. Ex. 30; 12/18/03 Huang Cross 98:12-25.
91. The list of advantages in Exhibit 30 includes an ability to detect DNA "in an environment unsuitable for regular optics, e.g., submerged in a bath." Ex. 30. Submersion in a bath was a method Dr. Huang used to solve the alignment problem. Ex. 14; 12/18/03 Huang Cross 109:3-17. That Dr. Huang lists another solution to the alignment problem as an advantage of his sketch suggests that the sketch does not represent the four-color/one-lane solution to the problem of alignment.
92. Dr. Huang did not have the sketch (Ex. 30) witnessed, and did not tell anyone about it. 12/18/03 Huang Cross 108:20-22.
93. Dr. Huang demonstrated his understanding of the importance of having documents witnessed by having at least one other document he considered significant witnessed. 12/18/03 Huang Cross 108:23-109:9.
94. Dr. Huang took the sketch (Ex. 30) with him when he left Dr. Hood's lab. 12/18/03 Huang Cross 35:11-14.
95. Exhibit 30 was dated April 11, 1982, but the portions on which Dr. Huang relies to show that he was contemplating tagging reactions were added at an undetermined later time. 12/18/03 Huang Cross 95:10-97:9; 101:25-102:4.
96. Dr. Huang created a list of fluorophores that included the wavelength of light used to excite each fluorophore, the wavelength of light emitted by each fluorophore, and the difference in emission wavelengths between each fluorophore. Ex. 747(original); Ex. 704(copy); 12/17/03 Huang Direct 44:16-47:20.
97. The difference in the emission wavelengths between each fluorophore would allow an optical detector to distinguish between the fluorophores. 12/17/03 Huang Direct 44:16-47:20.
98. Dr. Huang's list of known fluorophores and their associated wavelengths was taken from the prior art. 12/17/03 Huang Direct 47:1-7; Ex. 747/704.
99. Dr. Huang's list of known fluorophores does not identify a purpose for listing the difference in emission wavelengths, and does not discuss the four-color/one-lane concept or the alignment problem. Ex. 747/704.
100. Dr. Huang's list of known fluorophores is not dated; Dr. Huang testified that the list was created in the spring of 1982, but offered no corroborating evidence. Ex. 747/704; 12/17/03 Huang Direct 45:8-24.
101. The last column in this document listing the difference in emission wavelengths was added at an undetermined later time. 12/19/03 Huang Cross 108:23-109:25.
102. Exhibit 747/704 is not witnessed. Ex. 747/704.
103. Dr. Huang's prototype sequencer did not incorporate the four-color/one-lane idea. 12/16/03 Huang Direct 98:18-22.
104. Following his claimed invention of the four-color/one-lane idea, Dr. Huang continued to work on methods of automating DNA sequencing using UV detection and four separate electrophoresis lanes. 12/18/03 Huang Cross 126:14-127:25.
105. On July 20, 1982, Dr. Huang drew a sketch reflecting a new design for an automated DNA sequencer that on its face clearly contemplated detection of DNA in four separate lanes, one for each base. Ex. 607; 12/18/03 Huang Cross 125:17-126:8.
106. Technology for performing automated, real time computer controlled analysis of biological data had been developed prior to 1979 in Dr. Hood's laboratory at Caltech in connection with the project on protein sequencing. 12/18/03 Hood Direct 158:21-159:10; 160:6-18, Ex. 668, Ex. 711.
107. The automated protein sequencer developed by Drs. Hood and M. Hunkapiller detected protein sequences in real time and was controlled by a computer that analyzed the data and called the peaks. 12/18/03 Hood Direct 159:16-160:12.
108. The automated protein sequencer was running in Dr. Hood's lab, and described in publications, before Dr. Huang claims to have conceived the automation concept. 12/19/03 M. Hunkapiller Direct 70:5-13.
109. Dr. Hood's lab was at least partially directed towards developing instruments to automate aspects of biological research. 12/18/03 Hood Direct 152:8-153:23.
110. Dr. Huang did not originate the idea of automating DMA sequencing. Dr. Huang did not originate the idea of using real time analysis.
111. Dr. Huang never had a definite or permanent idea of how to build an automated DNA sequencer utilizing real time analysis.
112. Dr. Huang was, for the most part, a credible witness, but his testimony regarding corroborating evidence was unreliable, largely due to considerable time intervening between when the notes were recorded and Dr. Huang's testimony.
113. The reliability of Dr. Huang's testimony and corroborating evidence must be negatively evaluated based on his failure to attempt to determine earlier whether the invention was his. Despite the magnitude of the invention he made little effort to ascertain what had occurred with the work he had done.
114. Dr. Huang kept twenty-six bound lab notebooks for his work on projects at Caltech. Most of the documents on which Dr. Huang relies to attempt to prove and corroborate his work on the automated DNA sequencer do not come from these bound notebooks. 12/18/03 Huang Cross 83:14-22.
115. The documents that Dr. Huang relied on in this hearing were loose leaf sheets from a note pad. The sheets were not organized in any systematic manner. 12/18/03 Huang Cross 51:18-52:20; Huang Depo. Vol. I 176:3-9 and 177:7-19.
116. With one exception (Ex. 14), Dr. Huang's laboratory notes were not witnessed. Ex. 14.
117. Dr. Huang's did not consistently date his laboratory notes. 12/18/03 Huang Cross 56:24-57:13.
CONCLUSIONS OF LAW
I. Burden of Proof1. The named inventors on an issued patent are presumed to be the true inventors. Hess v. Advanced Cardiovascualar Systems, Inc., 106 F.3d 976, 980 (Fed. Cir. 1997).
2. Any inventorship challenge must be proved by clear and convincing evidence. Hess, 106 F.3d at 980.
3. One justification for this standard of proof is the "temptation for even honest witnesses to reconstruct, in a manner favorable to their own position, what their state of mind may have been years earlier." Hess, 106 F.3d at 980.
4. The named inventors do not bear any burden to substantiate their contributions to the claimed inventions. See Canon Computer Systems, Inc. v. NuKote International, Inc., 134 F.3d 1085, 1088 (Fed. Cir. 1998).
II. Corroboration
5. A co-inventor must proffer "corroborating evidence of a contemporaneous disclosure that would enable one skilled in the art to make the invention." Burroughs Wellcome, Burroughs Wellcome Co. v. Barr Laboratories, Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994).
6. The corroboration requirement can only be satisfied by "evidence in addition to [the alleged inventor's] own statements and documents." Hahn v. Wong, 892 F.2d 1028, 1032 (Fed. Cir. 1989); see also Reese v. Hurst, 661 F.2d 1222, 1225 (C.C.P.A. 1981)("evidence of corroboration must not depend solely on the inventor himself"); Chen v. Bouchard, 347 F.3d 1299, 1311 (Fed. Cir. 2003).
7. "Whether the inventor's testimony has been sufficiently corroborated is evaluated under a rule of reason analysis." Ethicon, Inc. and Yoon v. United States Surgical Corp. and Young Jae Choi, 135 F.3d 1145, 1461 (Fed. Cir. 1998)
8. "However, that `rule of reason' test does not alter the requirement of corroboration of an inventor's testimony." Chen, 347 F.3d at 1310.
9. Laboratory notebook entries and other notes of an inventor cannot supply the necessary corroboration if they are not read and witnessed by a non-inventor. See Chen and Farina v. Bouchard et al., 347 F.3d 1299, 1310 (Fed. Cir. 2003) (holding lab notebooks to be uncorroborated where their authors could not produce witnesses to verify their contents); Singh v. Brake, 317 F.3d 1334, 1340-42 (Fed. Cir. 2002)(same); see also Dentsply Rsch Devlp. Corp. v. Cadco. Dental Prods., Inc., 14 U.S.P.Q.2d 1039, 1042 (C.D. Cal. 1989) (granting summary judgment on the basis of lack of corroboration in part because "the laboratory notebooks were authored solely by the alleged inventor" and "there is no authentication by a witness"). But see Ethicon, 135 F.3d at 1461 ("Corroborating evidence may take many forms. Often contemporaneous documents prepared by a putative inventor serve to corroborate an inventor's testimony").
III. Joint Inventorship
A. Collaboration10. Two individuals may collaborate and be joint inventors even though they do not physically work on the invention together or at the same time, and even though each does not make the same type or amount of contribution to the invention. Burroughs, 40 F.3d at 1227; see also Kimberly-Clark Corp. v. Procter Gamble Distributing Co., Inc., 973 F.2d 911, 916-17 (Fed. Cir. 1992) (collaboration requirement is satisfied if there is some element
of joint behavior, such as working under common direction, one inventor seeing a relevant report and building on it, or one. inventor hearing another inventor's suggestion at a meeting)
B. Contribution
11. A joint inventor must 1) contribute to conception or reduction to practice in some significant manner, 2) make a contribution that is not insignificant in quality when measured against the full invention, and 3) do more than merely explain well known concepts or the current state of the art. Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998)).
1. Conception
12. To qualify as a joint inventor, an individual must contribute in some significant manner to either the conception or reduction to practice of the invention. Pannu, 155 F.3d at 1351.
13. "Conception is the touchstone of inventorship": each person claiming to be a joint inventor must generally contribute to the conception of an invention. Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998).
14. Conception is defined as the formation in the mind of the inventor of a "definite and permanent" idea of the "complete and operative" invention, as it is thereafter applied in practice. Id.
15. Conception requires "a specific, settled idea, a particular solution to the problem at hand, not just a general goal or research plan." Burroughs Wellcome, 40 F.3d at 1228; see also Singh, 317 F.3d at 1341 (ruling that a laboratory notebook entry did not corroborate an alleged conception because "[e]ven if the entry expressed the problem, it did not provide the solution").
16. "One who merely suggests an idea of a result to be accomplished, rather than a means of accomplishing it, is not a joint inventor." Garrett Corp. v. United States, 422 F.2d 874, 881 (Ct.Cl. 1970); see also Land v. Dreyer, 155 F.2d 383, 33 C.C.P.A. 1108, 1113 (C.C.P.A. 1946).
17. Conception is not complete if the subsequent course of experimentation, especially experimental failures, reveals uncertainty that so undermines the specificity of the inventor's idea that it is not yet a definite and permanent reflection of the complete invention as it will be used in practice. Burroughs, 40 F.3d at 1229.
18. "When a research plan requires extensive research before the inventor can have a reasonable expectation that the limitations of the count will actually be met, complete conception has not occurred." Hitzeman v. Rutter, 243 F.2d 1345, 58 U.S.P.Q.2d 1161, 1169 (Fed. Cir. 2001).
19. Contribution to a single claim of a patent is sufficient to establish joint inventorship. Ethicon, 135 F.3d at 1460.
2) Significance
20. To be significant, an alleged co-inventor's contribution must render the results of the collaboration patentable. See, e.g., Acromed Corp. v. Sofamor Danek Group, Inc., 253 F.3d 1371, 1379-81 (Fed Cir. 2001).
21. To judge the significance of an alleged joint inventor's contribution to the complete invention, a court may consider whether the alleged joint inventor was able at the relevant time period to understand and articulate the inventive team's final operative embodiments. See, e.g., BJ Services Co. v. Halliburton Energy Services, Inc., 338 F.3d 1368, 1373 (Fed. Cir. 2003) Board of Ed. v. American Bioscience, Inc., 333 F.3d 1330, 1340 (Fed. Cir. 2003).
3) Ideas Beyond Prior Art
22. One who simply provides the inventor with well-known principles or explains the state of the art without ever having a "firm and definite idea" of the claimed combination as a whole does not qualify as a joint inventor. Ethicon, 135 F.3d at 1460.
23. "[T]eaching skills or general methods that somehow facilitate a later invention, without more, does not render one a coinventor." Board of Ed. v. American Bioscience, 333 F.3d 1330, 1342 (Fed. Cir. 2003).
IV. Dr. Huang is Not an Inventor of the Patents at Issue
24. Dr. Huang has failed to carry his burden of proving by clear and convincing evidence that he made a substantial contribution to the inventions claimed in the patents at issue.
25. Dr. Huang has failed to prove that he had a sufficiently firm and definite idea of the claimed invention as a whole to have acted jointly with the named inventors and be considered a co-inventor.
26. Having been unable at the relevant time period to understand and articulate how his alleged contribution would be implemented in the inventive team's final operative embodiments, Dr. Huang cannot be considered a joint inventor of those embodiments. See BJ Services Co., 338 F.3d 1368 at 1373; Board of Ed., 333 F.3d at 1340.
A. The `534, `058, and `748 Patents
27. Dr. Huang has failed to carry his burden of proving by clear and convincing evidence that he made a substantial contribution to the inventions claimed in the `534, `058, and `748 patents.
1) Optical Detection
28. Dr. Huang has failed to prove that he contributed the idea of optical detection to the automated DNA sequencer or that that idea alone would constitute a substantial contribution to the claimed inventions.
29. The only evidence Dr. Huang offered to corroborate his testimony was an undated outline (Ex. 592). Other than Dr. Huang's testimony, there is no evidence that this outline was created when it was purported to be or that anyone other than Dr. Huang ever saw the outline. Exhibit 592 is insufficient to corroborate Dr. Huang's testimony that he conceived the idea of using optical detection in the DNA sequencer.
30. Dr. Huang also failed to show that the idea of optical detection itself would constitute a substantial contribution to the claimed automated DNA sequencer as it was well known in the late 1970's that DNA could be detected optically either through its innate UV absorbance or by labeling with fluorescent or other dyes.
31. Without proving definite and specific details as to how optical detection methods could be used to automate DNA sequencing, the suggestion to use optical methods for automating DNA sequencing does not rise to the level of a substantial contribution giving rise to joint inventorship. See Garrett Corp., 422 F.2d at 880.
2) Chemical Tagging with Chromophores or Fluorophores
32. Dr. Huang failed to prove that he contributed the concept of chemically tagging DNA with chromophores or fluorophores to the automated DNA sequencer or that the mere idea of tagging DNA without a clear and definite plan of how to accomplish such tagging would be significant in quality when measured against the full invention.
33. Dr. Huang's testimony that the idea of chemically tagging DNA with chromophores or flurophores was his was not sufficiently corroborated by the evidence.
34. The bulk of the evidence that Dr. Huang offered to support his testimony that the idea of chemically tagging DNA was his were pages from his unwitnessed laboratory notes. This evidence is insufficiently independent of Dr. Huang be useful in corroborating his testimony.
35. Even if Dr. Huang's laboratory notes were corroborated, they would not support his inventorship claims because they contain only material that was available in the prior art. Notes about the prior art are insufficient to corroborate Dr. Huang's inventorship contentions.
36. There is no corroborated evidence that Dr. Huang communicated any thoughts he may have had about chemically tagging DNA with any of the named inventors, or that such communications would have done anything more than explain well known concepts and/or the current state of the art.
37. The exchange that Dr. Huang had with Bayer (Ex. 576) indicates that Dr. Huang knew of the tagging idea, but does not indicate that the idea was his.
38. The exchange memorialized in Exhibit 576 corroborates Dr. Smith's testimony that Dr. Huang had not identified specific dyes or now to attach them.
39. The Bayer letter (Ex. 576) does not corroborate Dr. Huang's inventorship claims.
40. The letter that Dr. Huang wrote to David Ward in January 1982 (Ex. 612) indicates that Dr. Huang knew of the tagging idea, but does not indicate that the idea was his.
41. The Ward letter (Ex. 612) corroborates Dr. Smith's testimony that Dr. Huang had not identified the chemistry necessary to attach dyes to DNA.
42. The Ward letter (Ex. 612) does not corroborate Dr. Huang's inventorship claims.
3) Four-colors/One-lane
43. Dr. Huang failed to prove that he had the idea of tagging DNA fragments with four distinguishable chromophores or fluorophores and running all four sequencing reactions in a single lane.
44. The bulk of the evidence that Dr. Huang offered to support his testimony that the idea of running DNA fragments dyed with four colors in one lane was his were pages from his unwitnessed and often undated laboratory notes, and is insufficiently independent of Dr. Huang to be useful in corroborating his testimony.
45. Even if Dr. Huang's April 1982 sketch (Ex. 30) were corroborated, it does not convincingly support Dr. Huang's inventorship claims. The improvement depicted in the sketch is apparently an optical detector capable of functioning underwater, an advantage specifically noted in the sketch itself. It is thus more reasonably interpreted as depicting an improvement on Dr. Huang's earlier sketch concerning solving the "smile" problem (Ex. 14) than as an illustration of the four-color/one-lane approach because if a four-color/one-lane approach is used it eliminates the necessity of a detector that can function underwater. The April 1982 sketch would be insufficient evidence of conception even if it were corroborated.
46. Even if Dr. Huang's undated note card containing information about five fluorescent dyes (Ex. 704/Ex. 747) were corroborated, it merely lists data taken from the prior art. His testimony that he was noting for himself the difference in the fluorescence properties of the various dyes for use in four-color/one-lane sequencing was not corroborated. The fact that Dr. Huang lists five dyes rather than four does not support Dr. Huang's contention that the card represents the four-color/one-lane concept. Dr. Huang's undated note card would be insufficient evidence of conception even if it was corroborated.
4) Automated Detection and Real Time Computer Analysis
47. Dr. Huang failed to prove that he contributed the idea of automated detection and real time computer analysis to the claimed automated DNA sequencer or that the idea would be significant when measured against the full invention.
48. The evidence that Dr. Huang offered to support his testimony that the idea of automated detection and real time analysis was his were pages from his unwitnessed and often undated laboratory notes, and is insufficiently independent of Dr. Huang be useful in corroborating his testimony.
B. The `218 Patent
49. Dr. Huang has failed to prove by clear and convincing evidence that he is a co-inventor of any claim of the `218 patent.
50. Dr. Huang offered no evidence sufficient to corroborate his testimony that he was an inventor of the `218 patent claims.
51. Having never communicated with four of the five named inventors on the `218 patent, and having admitted that he cannot recall ever discussing DNA sequencing with Mike Hunkapiller, Dr. Huang cannot establish the requisite collaboration necessary to find him a joint inventor. See Kimberly-Clark Corp, v. The Procter Gamble Distributing Co., 23 U.S.P.Q.2d 1921 (Fed. Cir. 1992). ("Individuals cannot be joint inventors if they are completely ignorant of what each other has done until years after their individual independent efforts. They cannot be totally independent of each other and be joint inventors.")
CONCLUSION
Based upon the testimony and evidence presented at the hearing, and in light of the fact that inventorship must be proved by clear and convincing evidence, this Court finds that Dr. Huang has not carried his burden of proving that he was an inventor of the `218, `534, `058, or `748 patents.IT IS SO ORDERED