United States District Court, D. Minnesota
John R. Wilson and Wilson Wolf Manufacturing Corporation, Plaintiffs,
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
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”) 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.
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,  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.
December 26, 2017, the PTAB issued a final judgment in an
interference action filed by Greg Martin and Allison
Tanner 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.)
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).
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