CardiAQ Valve Techs., Inc. v. Neovasc Inc., No. 14-CV-12405-ADB, 2016 WL 1642573 (D. Mass. Apr. 25, 2016)
Neovasc began its business relationship with CardiAQ in June, 2009, by providing services and supplies for the development of CardiAQ’s TMVI heart valve device. Though the relationship lasted only 10 months, the parties exchanged hundreds of technical emails and had regular calls during that period. The parties met again in court when CardiAQ sued Neovasc in the District of Massachusetts before Judge Burroughs claiming, among other things, that Neovasc’s employees surreptitiously used CardiAQ’s confidential information to develop a competing valve device and to patent a related method.
The patent at issue is U.S. Patent No. 8,579,964 (“the ‘964 patent”), which issued on November 12, 2013, to Neovasc. The ‘964 patent teaches a method of anchoring a valve to the heart and names two Neovasc engineers as inventors. In its complaint, CardiAQ contended that its founders invented the subject matter of 28 claims of the ‘964 patent, either by themselves or in collaboration with Neovasc’s employees, and sought correction of inventorship under 35 U.S.C. § 256.
Neovasc moved for summary judgment on CardiAQ’s claim for correction of inventorship arguing that (1) CardiAQ never communicated to Neovasc the specific method of anchoring found in Claim 1 of the patent; and (2) that the information CardiAQ communicated to Neovasc was incorporated into the prior art before Neovasc filed the application that issued as the ‘964 patent. These arguments, however, failed to persuade the court.
First, the court found that Neovasc would not be entitled to summary judgement, even if it could show that it alone conceived of the anchoring method disclosed in Claim 1 (which the court noted was a disputed fact for trial), because making such a determination asks the court to ignore the full invention and focus only on a single component. A joint inventor, however, “need not contribute to every single element of every single claim in the patent,” and therefore Neovasc’s narrow focus on a particular limitation in Claim 1 was an insufficient basis to grant summary judgment.
Second, the court dismissed Neovasc’s argument that CardiAQ’s purported contribution to the invention could not support an inventorship claim because of the “prior-publication rule.” Neovasc asserted that CardiAQ had made public information it communicated to Neovasc and this information constituted prior art that cannot give rise to joint inventorship. The court found this argument unavailing because the evidence showed that Neovasc was actively using CardiAQ’s confidential information before it was made public. For example, Neovasc sketched what would later become its TMVI valve device and communicated the ideas for its patent before all but one of CardiAQ’s publications were released and in the midst of the parties’ collaboration. In short, the court found that CardiAQ could have contributed to the conception of the invention before its information became public and was incorporated into the prior art.
In reaching the decision to deny Neovasc summary judgment, Judge Burroughs also distinguished a recent D. Mass case before Judge Saris, in which the defendant’s motion for summary judgment on plaintiff’s correction of inventorship claim was granted. In University of Utah v. Max-Planck-Gesellschaft Zur Foerderung Der Wissenschaften e.V., the University alleged joint inventorship of the defendant’s patent because a University professor had shared a draft publication with the defendant describing a “critical structure characteristic” that was found in the defendant’s patent. In assessing the University’s claim for correction of inventorship, Judge Saris considered three factors:
(1) the length of time between the disclosure of the draft publication to the defendant and its disclosure to the public;
(2) the amount of information disclosed to the defendant in the draft publication; and
(3) the extent of the parties’ communication.
The court found that a three-week period between sharing the draft article and publication could support a claim for joint inventorship, but the fact that the entire publication was later made public and that the parties had no further communication about the article led Judge Saris to hold that, once the article went to press, it was “assimilated into the storehouse of knowledge that comprises ordinary skill in the art.” In distinguishing CardiAQ Valve Techs., Inc. v. Neovasc Inc., Judge Burroughs found that CardiAQ’s publicly shared information was only a small portion of the information shared with Neovasc and that the parties extensively communicated about many exchanged documents, the vast majority of which were never made public.
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