Miller et al v. Treado et al

MOTION for Summary Judgment

D. Mass.June 15, 2007

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS PETER J. MILLER, CLIFFORD HOYT, and CAMBRIDGE RESEARCH AND INSTRUMENTATION, INC., Plaintiffs, v. PATRICK TREADO and CHEMIMAGE CORP., Defendants CIVIL ACTION NO. 05 10367 RWZ DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT Defendants ChemImage Corporation and Patrick Treado (collectively, “Defendants”) respectfully move for summary judgment that Plaintiffs Peter J. Miller (“Miller”) and Clifford Hoyt (“Hoyt”) are not co-inventors of U.S. Patent No. 6,734,962 (the “‘962 Patent”). Plaintiffs have repeatedly acknowledged to this Court that the co-inventorship allegations in Count 1, the only count still pending in this action, are limited to claims 1-6 of the ‘962 Patent. Moreover, the law is plain that Plaintiffs cannot prevail unless they prove, by clear and convincing evidence, that Miller and Hoyt made a significant contribution to a patentable aspect of claims 1-6. Levin v. Septodont, Inc., 34 Fed. Appx. 65, 72; 63 U.S.P.Q.2d 1395, 1400 (4th Cir. 2002); Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1461 (Fed. Cir.), cert. denied, 525 U.S. 923 (1998). In this case, the undisputable evidence demonstrates that: i) Plaintiffs filed their Complaint originally alleging, inter alia, that claims 1, 3 and 4 of the ‘962 Patent are Case 1:05-cv-10367-RWZ Document 134 Filed 06/15/2007 Page 1 of 3 2 unpatentable for obviousness under 35 U.S.C. §103, ii) on September 25, 2006, the United States Patent and Trademark Office (“PTO”) found that claims 1-6 of the ‘962 Patent were unpatentable for obviousness, and consequently those claims were deleted from the patent. Defendants’ expert Dr. Edward Yeung also has confirmed what Plaintiffs have admitted and the PTO found, namely that claims 1-6 of the ‘962 Patent are unpatentable for obviousness. Thus, in this case, it is beyond dispute that the system described in claims 1-6 is unpatentable. Even assuming arguendo, for purposes of this motion, that Plaintiffs Miller and Hoyt made contributions to claims 1, 3 and 4 of the ‘962 Patent, there is no dispute that these contributions did not make the claimed inventions patentable. Accordingly, for the reasons set forth in this motion and in Defendants’ supporting memorandum, there are no issues of material fact and Defendants are entitled to summary judgment on Count 1 of the Complaint as a matter of law. Respectfully submitted, PATRICK TREADO AND CHEMIMAGE CORP. By their attorneys, /s/ Anthony J. Fitzpatrick Anthony J. Fitzpatrick (BBO #564324) Christopher S. Kroon (BBO #660286) DUANE MORRIS LLP 470 Atlantic Avenue, Suite 500 Boston, MA 02210 Telephone: 857.488.4220 Fax: 857.488.4201 e-mail: ajfitzpatrick@duanemorris.com cskroon@duanemorris.com Paul D. Weller (admitted pro hac vice) Morgan, Lewis & Bockius LLP 1701 Market Street Philadelphia, PA 19103 Telephone: 215.963.5530 Case 1:05-cv-10367-RWZ Document 134 Filed 06/15/2007 Page 2 of 3 3 Fax: 215.963.5005 e-mail: pweller@morganlewis.com June 15, 2007 CERTIFICATE PURSUANT TO LOCAL RULE 7.1 I certify that counsel for the parties have conferred on June 15, 2007, in an attempt to resolve or narrow the issues presented by this motion. Counsel for the Plaintiffs indicated they would oppose this motion. /s/ Anthony J. Fitzpatrick Anthony J. Fitzpatrick CERTIFICATE OF SERVICE I, Christopher S. Kroon, Esquire, hereby certify that this document filed through the ECF system will be sent electronically in accordance with the District of Massachusetts electronic filing procedures to the registered participants as identified on the Notice of Electronic Filing and paper copies will be sent to those indicated as non-registered participants on June 15, 2007. /s/ Christopher S. Kroon Christopher S. Kroon Case 1:05-cv-10367-RWZ Document 134 Filed 06/15/2007 Page 3 of 3