Opinion
No. 01 Civ. 10086 (RCC).
February 17, 2005
OPINION ORDER
Plaintiff Dr. Frederic A. Stern ("Plaintiff" or "Stern") commenced this suit for correction of inventorship of United States Patent 4,599,353 ("the '353 Patent" or "the Patent"), pursuant to 35 U.S.C. § 256, and fraud, unjust enrichment, and breach of fiduciary duty arising under New York common law. The '353 Patent protects the discovery that periodic applications of prostaglandins to the eyes of primates reduces intraocular pressure without causing a substantial initial increase in pressure or resistance to the treatment. The Patent has lead to the development of prescription drug treatment of glaucoma in humans. Defendant Columbia University ("Columbia") is the owner of the '353 Patent and Defendant Dr. Laszlo Bito ("Bito") is listed as the Patent's sole inventor (collectively "Defendants"). Defendants move for summary judgment pursuant to Federal Rule of Civil Procedure 56. For the reasons explained, Defendants' motion is granted.
I. Background
Unless otherwise noted, the following facts are not in dispute. Glaucoma patients typically experience increased fluid pressure in their eyes, known as intraocular pressure, which damages the optic nerve and can eventually lead to blindness. Plaintiff's Rule 56.1 Statement (hereinafter "Pltf. 56.1") ¶¶ 1-2. Dr. Bito, now a recognized expert in the field of glaucoma research, joined the Columbia faculty in the Department of Ophthalmology in 1966 and began researching the relationship between intraocular eye pressure and prostaglandins, which are a type of chemical compound known as eicosanoids. Id. ¶¶ 3, 6, 10. At that time there were scientific reports that prostaglandins produced an undesirable increase in intraocular pressure. Id. ¶ 4.
In 1977, Dr. Bito and others published the results of his experiments showing that a single low dose of a prostaglandin could reduce intraocular pressure in rabbit eyes without a substantial initial increase in pressure. Id. ¶¶ 13-14. Dr. Bito directed a subsequent study on rabbits, however, that demonstrated periodic topical applications resulted in tachyphylaxis or drug tolerance. Id. ¶ 15. In 1978, Dr. Bito, along with medical student Carl Camras, topically administered prostaglandins to the eyes of owl monkeys with glaucoma and found a single dose resulted in the reduction of intraocular pressure. Id. ¶ 16. Stern argues that the owl monkey studies also demonstrated an initial spike in intraocular pressure and that, as a result, Dr. Bito decided to "chuck" the data. Id. ¶¶ 16, 13. Defendants submit that owl monkeys were simply not the appropriate model to study the human eye's reaction to prostaglandins treatment. Id. ¶ 16. Based on experiments that he and others performed between 1977 and 1981, Dr. Bito believed that rhesus monkey and cats would be useful models to continue studying the effects of prostaglandins on intraocular pressure. Id. ¶ 17.
In the spring of 1981, while taking a research elective during his last year as a medical student at Columbia, Stern carried out experiments under Dr. Bito's supervision. Id. ¶ 19. Stern admits that prior to his work with Dr. Bito he had no previous experience in ophthalmology or glaucoma research, had never done any research with prostaglandins, and had never performed experiments using cats or rhesus monkeys. Id. ¶¶ 36-38. In Dr. Bito's lab, Stern topically applied a single dose of prostaglandin to the eyes of rhesus monkeys and cats, which was found to reduce intraocular pressure. Id. ¶ 18. Stern used animals already trained for lab use and applied prostaglandins that were already available in Dr. Bito's lab, in the amounts, and in the same manner, as had been used in earlier rabbit and owl monkey experiments. Id. ¶¶ 42, 43. Stern did no further work with prostaglandins after he left Dr. Bito's lab and graduated. Id. ¶¶ 46, 47, 49. Specifically, he did not do any work regarding the periodic application of prostaglandins. Id. ¶ 46.
In connection with his work in Dr. Bito's lab, Stern wrote a paper reporting the results of his experiments in which he is listed as the author and Dr. Bito is listed as the sponsor of the research. Id. ¶ 44. Dr. Bito suggested that Stern submit this paper to Columbia's Department of Ophthalmology and, as a result, Stern received the Edith and Denton McKane Memorial Award when he graduated. Id. Dr. Bito and Stern also worked together to modify the paper for publication in a peer-reviewed journal. Id.; see also F.A. Stern and L.Z. Bito, "Comparison of the Hypotensive And Other Ocular Effects of Prostaglandins E2 and F2a On Cat and Rhesus Monkey Eyes," published in Investigative Ophthalmology Visual Science, May 1982, at Niles Decl. Tab. 6. The draft of the article Dr. Bito and Stern submitted to the journal is the same draft that Dr. Bito later submitted to the FDA in support of his notice of claimed investigational exemption for a new drug ("IND") in February 1982. Pltf. 56.1 ¶¶ 59, 60. In the IND, Dr. Bito explained that Stern was responsible for the day-to-day studies reflected in the paper. Id. ¶ 61. The published version of the article was also included in Columbia's application for the '353 Patent. Id. ¶ 45.
The parties agree that after Stern completed his experiments the question of tachyphylaxis remained. Id. ¶ 20. During the summer and fall of 1981, Dr. Bito and others conducted experiments demonstrating that the periodic application of prostaglandins did not cause tachyphylaxis in primates. Id. ¶ 22. Dr. Bito argues that he conceived the invention claimed in the '353 Patent during this course of experiments. Oct. 11, 2002 Bito Dep. at 17-18. Stern claims, however, that during his course of research he also participated in the conception, design, and planning of these later experiments.
In May 1982, Dr. Bito applied for the '353 Patent. Id. ¶ 23. The '353 Patent contains the results of four experiments. Id. ¶ 26. Experiment 1 reports on the single dose studies on owl monkeys that Dr. Bito and others performed in the late 1970s. Id. Experiment 2, in which Stern participated, reports on single dose studies performed in the spring of 1981 on rhesus monkeys and cats. Id. ¶ 27. Experiment 3 was conducted in the late summer of 1981, after Stern graduated, and consisted of repeated topical application of prostaglandins in the eyes of cats and rhesus monkeys. Id. As noted above, Stern contends that he participated in the planning and design of Experiment 3. Id. Experiment 4 concerns studies with prostaglandins and their derivatives. Id. ¶ 29.
After several rejections and amendments, the Patent and Trademark Office issued the '353 Patent on July 8, 1986. Stern claims to be the co-inventor of claims one, three, five, and nine through twelve. The first claim explains that the Patent contains:
[a] method for treating hypertension or glaucoma in a primate subject's eye comprising periodically contacting the surface of the eye with an amount of an eicosanoid or an eicosanoid derivative effective to reduce intraocular pressure in the eye without any substantial initial increase in said pressure and to maintain reduced intraocular pressure.
'353 Patent, Claim 1. Claims three, five, nine, and ten are dependent on claim one and define the type of eicosanoid or derivative thereof to be used. Pltf. 56.1 ¶ 24. These substances were used in Dr. Bito's laboratory prior to Stern's work there. Id. Claims eleven and twelve are also dependent on claim one and recite the appropriate range of effective doses. Id. ¶ 25. Again, these doses were used in Dr. Bito's laboratory before Stern began his research there. Id. Stern claims, however, that he actually determined the effective dosages. Id.
Columbia granted an exclusive license under the '353 Patent to a predecessor of Pharmacia Corporation. In 1996, Pharmacia and its affiliates launched Xalatan, a prescription-only topical glaucoma treatment. Dr. Stern did not learn of the '353 Patent until the spring of 2001 when he was contacted by a party involved in an infringement suit based on the Patent. Id. ¶¶ 30-31.
II. Discussion
A. Summary Judgment Standard
Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c); Anderson v. Liberty Lobby, 477 U.S. 242, 247 (1986); SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1116 (Fed. Cir. 1985) (en banc). In the context of the pending motion, summary judgment is proper if the evidence, when viewed in the light most favorable to the non-moving party, fails to establish the inventorship of an omitted inventor by clear and convincing evidence. Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1327 (Fed. Cir. 2004) (citing Teleflex Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1323 (Fed. Cir. 2002)).
B. '353 Patent Claim Construction
The legal scope of a patent claim must be known before determining whether the correct inventors were named. Trovan, Ltd. v. Sokymat SA, 299 F.3d 1292, 1302 (Fed. Cir. 2002); United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (holding claim construction is required only "when the meaning or scope of technical terms and words of art is unclear and in dispute"). The purpose of claim construction is to determine "the meaning and scope of the patent claims." Markman v. Westview Instruments, 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). The court must give the disputed terms "their ordinary and accustomed meaning as understood by one of ordinary skill in the art." Dow Chem. Co. v. Sumitomo Chem. Co. Ltd., 257 F.3d 1364, 1372 (Fed. Cir. 2001); see also Optical Prods. Dev. Corp. v. Dimensional Media Assocs., Inc., 134 F. Supp. 2d 320, 326 (S.D.N.Y. 2001) (explaining "the hypothetical person of ordinary skill in the art is presumed, as a matter of law, to know of all prior art references in the same or analogous fields, regardless of his or her specific level of educational or vocational training") (citing In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991)).
The task of construction begins with an examination of the intrinsic sources. Intrinsic evidence includes the patent itself, including the claims and specification, and the prosecution history. It is "the most significant source of the legally operative meaning of disputed claim language." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). The words and phrases of the claims are to be given their ordinary and customary meaning. Novo Nordisk A/S v. Becton Dickinson Co., No. 96 Civ. 9506 (BSJ), 2000 WL 294852, at *1 (S.D.N.Y. Mar. 21, 2000). Any special definition must be clearly stated in the specification or history. Vitronics Corp., 90 F.3d at 1582; see also Intellectual Prop. Dev. v. UA Columbia Cablevision of Westchester, Inc., No. 94 Civ. 6296 (SS), 1998 WL 142346, at *21 (S.D.N.Y. Mar. 26, 1998) ("[T]he subjective intent of the inventor when using a particular term is of no probative weight in defining the scope of the claim . . . except as documented in the specification.").
The claims "must be read in view of the specification, of which they are a part." Markman, 52 F.3d at 979. The specification is defined by statute as the portion of the patent that includes the description of the invention. It "shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same." 35 U.S.C. § 112, ¶ 1. The claims define the limits of the invention. They must "particularly point out and distinctly claim" what the applicant regards as the invention. 35 U.S.C. § 112, ¶ 2; Johnson Elec. N. Am. Inc. v. Mabuchi Motor Am. Corp., 77 F. Supp.2d 446, 450 n. 2 (S.D.N.Y. 1999) (explaining the claims are also technically part of the specification, but "general usage distinguishes between the specification and the claims as separate parts of the patent"). The prosecution history, which may include the record of proceedings before the PTO, the patentee's representations regarding the scope of the patent, and a review of the prior art, should also be considered. Vitronics Corp., 90 F.3d at 1582 (finding prosecution history to be "of critical significance in determining the meaning of the claims").
Stern claims to be a co-inventor of the Patent's independent claim one and dependent claims three, five, and nine through twelve. The parties' only dispute is the meaning of the phrase "to maintain reduced intraocular pressure" in claim 1. Stern contends the phrase should be read to mean reduction of intraocular pressure between periodic applications. Pltf. Claim Construction Brief at 6. Defendants assert the phrase should be interpreted as "maintenance of reduced intraocular pressure throughout the course of treatment without development of tachyphylaxis, i.e., throughout the period of time that the claimed method is being used to treat glaucoma." Def. Reply Claim Construction Brief at 3.
Stern contends Defendants' definition requires the insertion of two distinct phrases — "through the course of treatment" and "without the development of tachyphylaxis" — without support of the specification. Stern also argues that Defendants' construction of the phrase is unduly limiting because "any drug otherwise falling under the '353 Patent which demonstrated any tolerance over time would fall outside the scope of the patent." Pltf. Claim Construction Brief at 6. The phrase was added by an amendment purportedly in effort to distinguish the claimed invention from the 1977 rabbit experiments that showed prostaglandins could reduce intraocular pressure. Plaintiff submits that Defendants tried to distinguish the patented invention from the rabbit experiments by arguing the earlier experiments produced an initial increase, followed by a decrease, followed by another increase in intraocular pressure. '353 Patent File History at C0005299-5300, at Niles Decl. Tab 3. The '353 Patent, on the other hand, "provides a decrease which is sustained by periodic administration of prostaglandins." Id. C0005300. Plaintiff contends the plain meaning of the claims and Defendants' argument to the PTO supports the conclusion that reduction in intraocular pressure need only be maintained between periodic applications.
Defendants submit that Plaintiff's view that the avoidance of tachyphylaxis and the maintenance of intraocular pressure are distinct goals is incorrect because if tachyphylaxis occurs the drug loses its effectiveness and the reduction of intraocular pressure is lost. Further, they point to three instances in the specification in which the phrase "to maintain reduced intraocular pressure" is defined to include the avoidance of tachyphylaxis. See '353 Patent, col. 2, ll.56-58 ("Repeated application, preferably daily, provides long-term reduction of intraocular pressure, without development of tachyphylaxis."); id. col. 3, ll. 4-10 ("Periodic application of eicosanoids reduces elevated intraocular pressure levels to normal values which continues during the course of treatment without development of tachyphylaxis."); id. col. 12, ll. 3-6 ("The main focus of this experiment was the demonstration that Pgs can be used to maintain lower intraocular pressure over a prolonged period of time without the development of tachyphylaxis or tolerance.").
The Court finds the plain meaning of the disputed phrase and the intrinsic evidence support the Defendants' proposed construction. The phrase at issue was the basis for the PTO's eventual issuance of the Patent. Before the PTO approved the Patent, Columbia had to insert the following italicized language into the claim: "A method for treating hypertension or glaucoma in a primate subject's eye comprising periodically contacting the surface of the eye with an amount of an eicosanoid or an eicosanoid derivative effective to reduce intraocular pressure in the eye without any substantial initial increase in said pressure and to maintain reduced intraocular pressure." Accordingly, the Court finds that the maintenance of reduced intraocular pressure and the corresponding prevention of tachyphylaxis through periodic application of prostaglandins is integral to the '353 Patent. Plaintiff's suggestion that the phrase should be interpreted as maintaining lowered intraocular pressure and avoiding tachyphylaxis only between each dosage does not make sense and is not supported by the Patent itself. See, e.g., '353 Patent, col. 2, ll.56-58 ("Repeated application, preferably daily, provides long-term reduction of intraocular pressure, without development of tachyphylaxis."). Accordingly, since Defendants' proposed construction of the phrase in claim one is supported by the Patent itself and encompasses the terms' ordinary meaning, the Court adopts Defendants' proposed construction.
C. Co-Inventorship Claim
"Patent issuance creates a presumption that the named inventors are the true and only inventors." Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998) (citing Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed. Cir. 1997)). A party seeking correction of inventorship "must meet the heavy burden of proving its case by clear and convincing evidence [that] corroborate[s] the alleged joint inventor's conception." Eli Lilly Co. v. Aragdigm Corp., 376 F.3d 1352, 1358 (Fed. Cir. 2004) (citing Ethicon, 135 F.3d at 1461); see also Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1318 (Fed. Cir. 2004) (citing Hess, 106 F.3d at 979-80). "Reliable evidence of corroboration preferably comes in the form of physical records that were made contemporaneously with the alleged prior invention." Trovan, Ltd. v. Sokymat SA, 299 F.3d 1292, 1302 (Fed. Cir. 2002). Independent circumstantial evidence may also corroborate. Id. at 1303. Whether the co-inventor's testimony has been sufficiently corroborated is evaluated under a "rule of reason analysis," which requires a court to consider "all pertinent evidence . . . so that a sound determination of the credibility of the inventor's story may be reached." Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993).
The alleged co-inventor does not have to demonstrate that he made a contribution equal in importance to the contribution made by the listed inventor. See 35 U.S.C. § 116 (2000) ("Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent."). Yet, "a person is a joint inventor only if he contributes to the conception of the claimed invention." Eli Lilly Co., 376 F.3d at 1359 (citing C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352 (Fed. Cir. 1998)); Fina Oil Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997) (explaining the claimed joint inventor must make a contribution that is "not insignificant in quality"); Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994).
"Conception is the touchstone of inventorship, the completion of the mental part of the invention." Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227-28 (Fed. Cir. 1994). It is the "formation in the mind of the inventor, of a definite and permanent idea of the complete and operate invention, as it is hereafter to be applied in practice."Hybritech, Inc. v. Monclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986) (internal citation omitted); see also Ethicon, 135 F.3d at 1460 (explaining an idea is sufficiently "definite and permanent" when "only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation"). "One who merely suggests an idea of a result to be accomplished, rather than means of accomplishing it, is not a joint inventor." Garrett Corp. v. United States, 422 F.2d 874, 880 (Ct.Cl. 1970); see also Sewall v. Walters, 21 F.3d 411, 416-17 (Fed. Cir. 1994); Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985) ("An inventor `may use the services, ideas and aid of others in the process of perfecting his invention without losing his right to a patent.'") (internal citations omitted). Contribution to an invention in the form of an explanation of the current "state of the art" does not amount to contribution to conception. Hess, 106 F.3d at 981. Similarly, "[o]ne does not qualify as a joint inventor by merely assisting the actual inventor after conception of the claimed invention." Ethicon, 135 F.3d at 1460;see also Trovan, 299 F.3d at 1302; Fina Oil, 123 F.3d at 1473.
As will be demonstrated below, a review of the items that Stern argues support his claim for co-inventorship demonstrates a lack of any clear and convincing corroborating evidence that he contributed to the conception of the '353 Patent, i.e., that he made a contribution to the finding that periodic topical applications of prostaglandins would maintain a reduction of intraocular pressure over the course of the drug treatment. See Linear Tech. Corp., 379 F.3d at 1327.
1. NIH Grant Applications
To receive federal funding for his research, Dr. Bito submitted proposals to the National Institute of Health ("NIH") in January 1981. Niles Decl. Tab 8. Stern claims the application did not include any reference to any experiments seeking to determine whether prostaglandins could be used to reduce intraocular pressure in primates. Pltf. 56.1 ¶ 54. Stern also claims he completed these experiments during the course of his lab work under Dr. Bito's direction and thereby prompted the ideas that culminated in the '353 Patent.
In fact, the 1981 NIH Application demonstrates that Dr. Bito intended to pursue research on the relationship between prostaglandins and intraocular pressure in primates. See, e.g., 1981 NIH Application, at Niles Decl. Tab 8, C0006706 (indicating rhesus monkeys would be used), C0006742-43 (indicating past findings regarding rhesus monkey eyes' similarities to human eyes and planned future experiments). The Court finds that nothing in the 1981 NIH application supports a finding that Stern contributed to the conception of the invention.
2. Lab Notebook
Dr. Bito asked Stern to record his experiments and findings in a grey lab notebook that was to be kept in the lab. Defendants claim the notebook was destroyed when Dr. Bito retired. Stern makes various insinuations that Dr. Bito destroyed the notebook to prevent a co-inventor's status from being revealed. What Stern ignores, however, is that even if his lab notebook did still exist it could not, on its own, corroborate his claim of co-inventorship. See Hahn v. Wong, 892 F.2d 1028, 1033 (Fed. Cir. 1989) (explaining alleged co-inventor would need more than lab notebooks to substantiate his claims); see also Haile Dep. 162:9-163:7 (Plaintiff's expert explaining she did not know of patent case in which lab notebook on its own supported co-inventorship claim), at Murray Decl.
3. Rhesus Monkey Paper
As explained above, Stern wrote a paper summarizing his work in Dr. Bito's lab that qualified him for the McKane Memorial Award and, after undergoing revisions with Dr. Bito, was eventually published inInvestigative Ophthalmology Visual Science. Stern claims that each version of the paper, while similar in substance, is a separate piece of corroborating evidence substantiating his claims for co-inventorship. Stern argues the McKane Award version of the paper was the first document to report on experiments with primates and prostaglandins that indicated prostaglandins may be used to treat glaucoma. Yet in his deposition, Stern stated he did not know who first thought to topically apply prostaglandins to primate eyes to reduce intraocular pressure. See Feb. 25, 2002 Stern Dep. 151:17-152:8, at Murray Reply Decl. Ex. C. Additionally, the McKane Award version of the paper cites an earlier article co-authored by Dr. Bito to support the proposition that prostaglandins could be useful in glaucoma treatment. See Frederic A. Stern, "Intraocular Pressure Lowering Effect of PGE2 and PGF2a in the Cat and Rhesus Monkey," Submitted in Consideration for the Edith and Denton McKane Memorial Award, at Niles Decl. Tab 5 C004373 n. 11 (citing Camras and Bito owl monkey paper for the proposition that prostaglandins might be useful to treat glaucoma). Plaintiff's own expert also agreed that there is no evidence that Stern was the first to think of topically applying prostaglandins to treat glaucoma. See Haile Dep. 171:16-24, at Murray Decl. Stern also believes the fact that he is listed as the first author is significant because in ophthalmology circles it signals who contributed most of the work. Pltf. 56.1 ¶¶ 81-83. Defendants have never disputed that Stern performed the experiments outlined in the rhesus monkey paper. See, e.g., Pltf. 56.1 ¶ 61 (stating that Dr. Bito told the FDA in 1982 that Stern was responsible for the day-to-day studies reflected in the rhesus monkey paper).
Nothing in any version of the rhesus monkey paper demonstrates any contribution by Stern to the conception of '353 Patent regarding the periodic application of prostaglandins to maintain reduced intraocular pressure. Even if it did, "co-authors may not be presumed to be coinventors merely from the fact of co-authorship." In re Katz, 687 F.2d 450, 455 (C.C.P.A. 1982); see also Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985).
4. Dr. Bito's Evaluation of and Recommendation on Behalf of Stern
When Dr. Bito evaluated Stern's work, he stated that Stern did an "excellent job of reviewing literature, [he] wrote the entire first draft of the manuscript, and very significantly contributed to the subsequent revisions and editing . . . [and he] learned [the] kind of thinking that is required for the design of experiments." Niles Decl. Tab 13. In August 1982, Dr. Bito wrote a letter of recommendation to the University of Washington on Stern's behalf stating Stern's work was "an integral part of our studies on the development and use of eicosanoids for the treatment of glaucoma." Niles Decl. Tab 20. While Dr. Bito clearly appreciated the quality of Stern's work, neither of these statements can be read as contemporaneous evidence that Stern conceived the '353 Patent.
5. Dr. Bito's Consultancy Agreement with Alcon
In June 1981 Dr. Bito entered into a consultancy agreement with Alcon Laboratories. From this, Stern argues conception of the '353 Patent must have been complete when he graduated in May 1981 and, therefore, Stern must have contributed to the conception of the invention. The only thing the record actually supports regarding Dr. Bito's consultancy agreement with Alcon is that the company engaged Dr. Bito because he was published in the areas of inflammation and glaucoma. See Dep. of Dr. Louis DeSantis, Alcon Vice President Product Support, 33:3-19, at Niles Decl. Tab 63. Contrary to Stern's suggestions, the record does not support the finding that Dr. Bito was eager to market his findings and rushed into an agreement with Alcon to do so. Id. 33:16-19 (Dr. DeSantis stating there was no specific aspect of glaucoma research that Alcon was interested in hearing about from Dr. Bito).
6. Dr. Bito's Receipt of Proctor Award
Dr. Bito received the Proctor Award in 2000, which is apparently the equivalent of the Nobel Prize in ophthalmology, for his work in glaucoma research. Stern finds three things in Dr. Bito's acceptance paper noteworthy. First, Dr. Bito noted that the 1978 owl monkey data was disappointing. Second, Dr. Bito did not mention the Stern and Bito rhesus monkey paper. And third, Dr. Bito acknowledged that medical students contributed to "concepts" resulting in the development of the glaucoma treatment Xalatan. Pltf. 56.1 ¶¶ 70-74. This paper does not provide corroborating evidence that Stern contributed to the conception of the '353 Patent. It simply demonstrates that owl monkeys were not the right model for Dr. Bito's prostaglandin research and that medical students performed experiments under Dr. Bito's direction.
D. State Law Claims
In his state law fraud claim, Stern contends that Defendants intentionally concealed the Patent application from him, knowing he was an omitted co-inventor. Complaint ¶¶ 41-46. In his breach of fiduciary duty claim, Stern claims that Bito, as his advisor and purported co-inventor, owed him a duty of listing him as a co-inventor. Id. ¶¶ 36-40. Finally, Stern claims the Defendants were unjustly enriched by receiving royalties from the Patent, in which Stern should have been included as a co-inventor. Id. Each of these claims requires a finding that Stern is in fact an omitted co-inventor. Since Stern cannot survive summary judgment on his claim for co-inventorship, his state law claims for fraudulent concealment, breach of fiduciary duty, unjust enrichment also fail.
III. Conclusion
For the reasons explained above, Defendants' motion for summary judgment is granted in its entirety. The Clerk of the Court is asked to close the case.
So Ordered: