IP Law Daily Despite loss at PTAB, biotech firm can pursue claims against Corning in Minnesota court
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Thursday, June 18, 2020

Despite loss at PTAB, biotech firm can pursue claims against Corning in Minnesota court

By David Yucht, J.D.

Even if issue preclusion applied based on Board’s ruling in a related matter, the court concluded that there were issues of fact that precluded summary judgment.

An intervening ruling by the Patent Trial and Appeal Board in an interference proceeding between biotechnology firm Wilson Wolf Manufacturing Corp. and two inventors employed by Corning Inc., invalidating all 45 claims of a Wilson Wolf–held patent relating to methods and devices that improve cell culture efficiency, did not preclude Wilson Wolf from going forward with a civil action against Corning for breach of contract, misuse of trade secrets, and correction of inventorship. According to the federal district court in Minneapolis, genuine issues of material fact precluded summary judgment (Wilson v. Corning Inc., June 17, 2020, Frank, D.).

Wilson Wolf is a biotechnology firm that develops and manufactures cell-culture devices. Corning is a multinational corporation that operates several divisions in areas of technology, including life sciences, display technologies, and environmental technologies. Wilson Wolf alleged that Corning obtained Wilson Wolf’s cell-culture technology under a confidentiality agreement and that Corning subsequently developed products using this technology as its own. Wilson Wolf claimed that the information it shared with Corning was reflected Wilson’s ’651, ‘347, and ‘814 Provisional Patent Applications, as well as a Small Business Innovation Research (SBIR) grant application filed with the National Institute of Health (NIH). Wilson Wolf sued Corning in federal court in Minnesota for breach of contract, trade secret misappropriation, and correction of inventorship. A previous motion for summary judgment brought by Corning was denied. Here, before the court was Corning’s renewed motion for summary judgment.

PTAB ruling. While suit was pending in Minnesota, Corning successfully sued Wilson Wolf obtaining a judgment from the PTAB that Wilson Wolf’s ‘044 patent was invalid. A previously registered patent anticipated claims in the ‘044 patent and ‘044 patent claims were determined to be obvious. The Federal Circuit Court of Appeals rejected Wilson Wolf’s appeal regarding this patent.

Issue preclusion. Issue preclusion prevents the relitigation in a separate suit by the same parties of "an issue of ultimate fact" which has been adjudicated by the entry of a valid, final judgment. Corning moved for summary judgment in the Minnesota case arguing that the ruling of the PTAB precluded Wilson’s arguments here because the issue before the PTAB was identical to the issue presented here. Wilson countered that the issues raised here were not precluded by the PTAB decision because Wilson’s trade secrets and Confidential Information went beyond the information disclosed in the ’044 Patent. Wilson also argued that the only issue "actually litigated" before the PTAB was whether a prior patent disclosed an "ambient gas" limitation. The court found that even if issue preclusion applied here, there were numerous issues that precluded summary judgment. Consequently, the court decided not to rule on issue preclusion.

Breach of contract. The court denied Corning’s motion as to the breach of contract claim. Wilson asserted that Corning violated a confidentiality agreement by using Wilson’s technologies for its own purposes. The court found that Corning overstated the findings of the PTAB decision. The court disagreed with Corning’s position that the PTAB decision established that the information Wilson Wolf claimed was confidential "could not possibly meet the contractual definition of ‘Confidential Information,’" The PTAB decision merely found that claims of the ’044 Patent were either anticipated by a prior patent or rendered obvious. This finding left issues of material fact unresolved. The PTAB decision did not address whether the information in the now-invalidated ’044 Patent qualified as "Confidential Information" under Corning’s contract with Wilson. The court noted that nothing in the Confidentiality Agreement required Confidential Information to be patentable. Additionally, the PTAB Decision did not address whether the information in the now-invalidated ’044 Patent was the same information disclosed in the three Provisional Applications at issue here. The PTAB also did not decide whether Corning’s alleged failure to provide Wilson Wolf contractually required notice that it was using possibly confidential information violated the contract. or whether Corning’s alleged use of Confidential Information led to Corning’s development of products.

Trade secrets. The court also denied Corning’s motion as to Wilson’s trade secrets claim. Even assuming issue preclusion applied, the court concluded that there were issues of fact that precluded summary judgment. These factual issues, which were not before the PTAB, included disputes as to whether the information and combinations Wilson alleged to be trade secrets were identical to the information disclosed in the now-invalidated ’044 Patent and whether the fact that a previously registered patent disclosed certain claim limitations in the ’044 Patent meant that this information was "generally known."

Inventorship. Corning’s motion regarding the correction of inventorship claim was also denied. Wilson sought a declaratory judgment of invalidity, or correction of inventorship regarding a Corning patent. The court concluded that there were factual issues, which had not been decided by the PTAB, precluding summary judgment. These factual issues included disputes as to whether the information in the ’044 Patent was synonymous with the information disclosed in the three Provisional Applications and whether the information disclosed in these applications was inventive. Additionally, the issue of whether the information Wilson disclosed to Corning contributed to the Corning patent at issue was yet to be resolved.

This case is No. 0:13-cv-00210-DWF-TNL.

Attorneys: Devan V. Padmanabhan (Padmanabhan & Dawson, PLLC) for John R. Wilson and Wilson Wolf Manufacturing Corp. Bradley R. Love (Barnes & Thornburg LLP) for Corning Inc.

Companies: Wilson Wolf Manufacturing Corp.; Corning Inc.

MainStory: TopStory Patent TradeSecrets GCNNews MinnesotaNews

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