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Wilson v. Corning, Inc.

United States District Court, D. Minnesota

May 25, 2018

John R. Wilson and Wilson Wolf Manufacturing Corporation, Plaintiffs,
v.
Corning, Inc., Defendant.

          Christopher A. Young, Esq., Devan V. Padmanabhan, Esq., Sri K. Sankaran, Esq., Tiffany A. Blofield, Esq., Paul J. Robbennolt, Esq., and Nadeem Schwen, Esq., Winthrop & Weinstine, PA, counsel for Plaintiffs.

          Bradley R. Love, Esq., Jeff M. Barron, Esq., and Paul Bryan Hunt, Esq., Barnes & Thornburg LLP; Annamarie A. Daley, Esq., Jones Day; Cara A. Lawson, Esq., Howard I. Shin, Esq., Kimball R. Anderson, Esq., Linda T. Coberly, Esq., Paula W. Hinton, Esq., and Robine Kirsty Morrison, Esq., Winston & Strawn, LLP, counsel for Defendant.

          MEMORANDUM OPINION AND ORDER

          DONOVAN W. FRANK UNITED STATES DISTRICT JUDGE

         INTRODUCTION

         This matter is before the Court on a Motion for Summary Judgment brought by Defendant Corning, Inc. (“Corning”) based on the intervening judgment of the U.S. Patent and Trial Appeal Board (“PTAB”)[1] and a Motion to Strike the Declaration of John R. Wilson (“Wilson”) also brought by Corning. (Doc. Nos. 498, 510.) In this action, Plaintiffs Wilson and Wilson Wolf Manufacturing Corp. (together, “Wilson Wolf”) assert claims against Corning for breach of contract, trade secret misappropriation, and correction of inventorship. On December 26, 2017, the PTAB issued a decision and judgment in an interference proceeding between Wilson and two Corning inventors invalidating claims 1-45 of Wilson's U.S. Patent No. 8, 809, 044 (the “'044 Patent”). (Doc. No. 501 (“Lawson Decl.”) ¶¶ 1, 2, Ex. A (“PTAB Judgment”), Ex. B (“PTAB Decision”).) Corning argues that the PTAB Decision is grounds for summary judgment in its favor on all of Wilson Wolf's claims because the concepts invalidated in the '044 Patent are the same alleged to constitute trade secrets and confidential information. Corning also argues that Wilson's declaration filed in opposition should be stricken. For the reasons discussed below, the Court denies Corning's motion for summary judgment and denies the motion to strike as moot.[2]

         BACKGROUND

         The facts of this case have been set forth in detail in prior orders. In short, Wilson Wolf alleges that Corning obtained Wilson Wolf's cell culture technology under a confidentiality agreement (the “CDA”) and then wrongfully used Wilson Wolf's technology to develop and commercialize its own products and to file for and obtain patents claiming Wilson Wolf's technology as its own. The claims remaining in this action include breach of contract, correction of inventorship with respect to three Corning patents, [3] and trade secret misappropriation. Specifically, Wilson Wolf seeks to correct the inventorship of the '209, '345, and '572 Patents, arguing that at a minimum, Wilson Wolf contributed to the conception of one or more of the claims in the respective patents. In addition, Wilson Wolf argues that Corning breached the CDA by developing and commercializing Corning's HYPERFlask and HYPERStack products, as well as by filing the '209, '572, and '345 Patents. Finally, Wilson Wolf asserts a trade secret misappropriation claim related to novel and confidential platform cell culture technology that Wilson Wolf shared with Corning.

         On December 26, 2017, the PTAB issued a final judgment in an interference action filed by Greg Martin and Allison Tanner[4] against Wilson with respect to the '044 Patent. Both sides were represented by counsel. The PTAB found claims 1-5, 7-10, 12-14, 16-20, 22, 23, 25, 26, 28-30, 39-42, 44, and 45 of the '044 Patent to be invalid as anticipated in view of U.S. Patent No. 6, 759, 245 (the “Toner Patent” or “Toner”). (PTAB Decision at 19.) In addition, the PTAB found the claims 6, 11, 15, 21, 24, 27, 31-32, 38, and 43 of the '044 Patent to be invalid as “obvious” in light of the combination of Toner Patent and a book by Professor R.I. Freshney, Culture of Animal Cells: A Manual of Basic Technique (Wiley-Blackwell, 4th ed. 2000) (“Freshney”). (PTAB Judgment at 2; PTAB Decision at 21; see also Lawson Decl. ¶ 4, Ex. D at App. 3-1, 3-3, 3-5.)

         DISCUSSION

         I. Summary Judgment

         Summary judgment is proper if there are no disputed issues of material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(a). The Court must view the evidence and the inferences that may be reasonably drawn from the evidence in the light most favorable to the nonmoving party. Weitz Co., LLC v. Lloyd's of London, 574 F.3d 885, 892 (8th Cir. 2009); Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998). The moving party bears the burden of showing that there is no genuine issue of material fact and that it is entitled to judgment as a matter of law. Enter. Bank v. Magna Bank of Mo., 92 F.3d 743, 747 (8th Cir. 1996). A party opposing a properly supported motion for summary judgment may not rest upon mere allegations or denials, but must set forth specific facts showing that there is a genuine issue for trial. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256 (1986). As the United States Supreme Court has stated, “[s]ummary judgment procedure is properly regarded not as a disfavored procedural shortcut, but rather as an integral part of the Federal Rules as a whole, which are designed ‘to secure the just, speedy, and inexpensive determination of every action.'” Celotex Corp. v. Catrett, 477 U.S. 317, 327 (1986) (quoting Fed.R.Civ.P. 1).

         II. Issue Preclusion

         The doctrine of issue preclusion provides that “when an issue of ultimate fact has been determined by a valid and final judgment, that issue cannot again be litigated between the same parties and another lawsuit.” Anderson v. Genuine Parts Co., Inc., 128 F.3d 1267, 1272 (8th Cir. 1997) (citation omitted). Issue preclusion prevents “repetitious lawsuits over matters which have once been decided and which have remained substantially static, factually and legally.” Olsen v. Mukasey, 541 F.3d 827, 831 (8th Cir. 2008) (citation omitted). In the Eighth Circuit, courts consider five factors to determine whether issue preclusion applies:

(1) the party sought to be precluded in the second suit must have been a party, or in privity with a party, to the original lawsuit; (2) the issue sought to be precluded must be the same as the issue involved in the prior action; (3) the issue sought to be precluded must have been actually litigated in the prior action; (4) the issue sought to be precluded must have been determined by a valid and final ...

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