Josef Maatuk v. Emerson Electric, Inc. et al
Filing
90
Memorandum Opinion and Order: Defendant Therm-O-Disc's 87 Motion for summary judgment is GRANTED. IT IS SO ORDERED. Magistrate Judge Thomas M. Parker on 2/4/2019. (D,JJ)
IN THE UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
EASTERN DIVISION
JOSEF MAATUK,
Plaintiff,
v.
EMERSON ELECTRIC, INC., et. al.,
Defendants.
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Case No. 1:16-CV-03023
MAGISTRATE JUDGE
THOMAS M. PARKER
MEMORANDUM OF OPINION AND
ORDER
Introduction
Plaintiff, Joseph Maatuk, sued Therm-O-Disc (“TOD”)1 after he learned that the U.S.
Patent and Trademark Office granted TOD U.S. Patent No. 7,775,105 (the “’105 patent”).
Maatuk alleged that he should have been a co-inventor on the ’105 patent, because it was based
on designs and trade secrets that he disclosed to TOD, and TOD employees Prasad Khadkikar
and Bernd Zimmermann, while TOD was determining whether to license a multi-function liquid
sensor that he invented (the “Sensor”). Maatuk’s complaint sought: (1) correction of
inventorship, under 35 U.S.C. § 256; (2) $500,000 or more in damages for TOD’s
misappropriation of trade secrets; and (3) $500,00 or more in damages for TOD’s unjust
1
Maatuk also sued Emerson Electric, Inc., and TOD employees Prasad Khadkikar and Bernd
Zimmermann. ECF Doc. 1, Page ID# 1. However, the District Court for the Central District of
California dismissed Emerson, Khadkikar, and Zimmermann as defendants before transferring Maatuk’s
case to this court, because: (1) Maatuk’s complaint did not state a claim against Emerson; and (2) the
court lacked personal jurisdiction over Khadkikar or Zimmermann. ECF Docs. 12, 13, and 28.
enrichment. ECF Doc. 1, Page ID# 11–14. In his correction of inventorship claim, Maatuk
stated that he:
was damaged by the fact that he was not listed as a co-inventor of
Patent 7,775,105 when the application for this patent was filed. The loss of
potential for recognition, the loss of ability to practice the invention, and loss of
licensing revenue, and also the loss of the ability to “swear back” the invention of
Patent 7,775,105 as a reference with relation to rejections under 35 U.S.C. § 103,
relating to other patent applications, and loss of the ability to claim continuity
from the application for Patent 7,775,105 to other patent applications, are all ways
in which Dr. Maatuk was damaged by [TOD’s] legally unsound decision not to
list Dr. Maatuk as a co-inventor of the invention of Patent 7,775,105.
Id. at 12. Maatuk stated that he was “entitled to have Patent 7,775,105 corrected to list
Dr. Maatuk as an inventor of [the ’105] patent.” Id. Further, Maatuk sought to recover his legal
costs and “such other relief . . . as the Court should deem to be fair and equitable.” Id. at 14–15.
On March 17, 2017, TOD moved: (1) for summary judgment on all Maatuk’s claims,
based on laches, the statute of limitations, collateral estoppel, and equitable estoppel; and
(2) judgment on the pleadings on Maatuk’s common law unjust enrichment claim, based on
preemption under the Ohio Uniform Trade Secret Act. ECF Docs. 47–48. On January 24, 2018,
this court: (1) denied TOD summary judgment on Maatuk’s correction of inventorship claim;
(2) granted TOD summary judgment on Maatuk’s misappropriation of trade secrets and unjust
enrichment claims; and (3) alternatively granted TOD judgment on the pleadings on Maatuk’s
common law unjust enrichment claim. ECF Docs. 66 and 69.
TOD now seeks summary judgment on Maatuk’s correction of inventorship claim,
asserting that Maatuk is not entitled to a correction of inventorship under 35 U.S.C. § 256,
because he did not contribute to the conception of the invention in the ’105 Patent. Additionally,
TOD contends that even if, Maatuk proved he contributed to the invention, he is not entitled to
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any damages. Maatuk and TOD consented to magistrate judge jurisdiction on May 30, 2018.
ECF Docs. 74 and 76.
Because Maatuk has failed to produce evidence sufficient to create a genuine issue of
material fact that he contributed to the invention described in the ’105 Patent, and TOD is
entitled to judgment as a matter of law on Maatuk’s correction of inventorship claim, TOD’s
motion for summary judgment must be GRANTED.
II.
Facts
A.
Maatuk’s and TOD’s 1997–1999 Discussions
The following facts are undisputed or established by the Rule 56 evidence. In 1997,
Maatuk, doing business as Max-Em Engineering, and TOD entered into a confidentiality
agreement, so that TOD could evaluate Maatuk’s multi-functional liquid sensor technology (the
“Sensor”) for a potential licensing agreement. ECF Docs. 66 and 88-1, Page ID# 1094, 1592–94.
Between 1997 and 1999 Maatuk corresponded with TOD employees Prasad Khadkikar and
Bernd Zimmermann, and provided TOD information regarding the Sensor, including providing
TOD with a sample probe, prototype schematics for the Sensor, and information on constructing
prototypes of the Sensor. ECF Docs. 87-3–87-4 and 88-2–88-4, Page ID# 1479, 1487, 1596–
1624. During that time, Maatuk did not discuss or disclose to TOD, Khadkikar, or Zimmermann
any trade secrets related to turbidity sensing. ECF Doc. 87-5, Page ID# 1493–98.
Maatuk communicated with TOD employees, including Khadkikar and Zimmermann, via
letters, email, and phone between 1997 and 1999. In a December 1997 letter, Maatuk stated that
he sent a sample piece of his liquid level sensing probe and stated that it was made by laminating
one layer with copper traces to a mylar layer. ECF Doc. 88-2, page ID# 1596. He stated that the
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probe could also be made using vacuum deposition, screen printing, a mold, or a combination of
those methods. Id.
In a February 1998 letter, Maatuk thanked Zimmermann for setting a meeting between
him and TOD and expressing interest in a “multi-function sensor.” ECF Doc. 88-4, page
ID# 1622. Maatuk attached to his letter infringement search results, differentiating his
technology from patents describing other multi-function sensor technology. Id. He also attached
the results from three experiments, studying signal strength in probes using different size heaters.
Id. at 1623. Maatuk noted that his studies showed that he could reduce electromagnetic
interference by using low impedance heaters, a low-cost capacitor, or fiber-optic technology. Id.
at 1622, 1624.
In a March 27, 1998, letter, Zimmermann identified three critical variables for probe
testing (heater wire size, film type, and probe coating), and asked Maatuk to review the proposed
design of experiment. ECF Doc. 88-2, Page ID# 1605–06. Zimmermann specifically noted that
he did not include junction spacing or copper trace width as variables. Id. at 1606. Zimmermann
stated that each probe in the experiment would be seven inches long, have five traces, and have
junctions spaced one inch apart. Id. at 1605.
In a March 29, 1998, letter, Maatuk noted that he had reviewed Zimmermann’s proposal
for electromagnetic interference testing and signal noise reduction. ECF Doc. 88-3, Page
ID# 1611–12. Maatuk noted that, if Zimmermann placed the junctions in the seven-inch probe
one inch apart, the probe would have seven copper traces instead of five. Id. at 1611. Maatuk
noted that additional studies and developments were needed to determine how to accurately read
liquid levels for a six-inch probe with 5 traces, and that further work was needed in order to use
the trace and heater connections as thermocouple joints. Id. at 1612.
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On April 8, 1998, TOD account manager David Connell wrote an internal e-mail, stating
that a client was interested in Maatuk’s multiple thermocouple liquid level sensor, if it could
“measure liquid level, liquid temperature, and vapor temperature.” ECF Doc. 88-2, page
ID# 1600. Connell noted that the client was also interested in measuring fuel identification and
vapor leakage, as well as potentially adapting the technology to measure brake fluid,
transmission fluid, coolant, and windshield wiper fluid. Id. Connell also noted that the client
used tin traces, rather than copper traces, in its fuel tanks to avoid corrosion. Id. On April 9,
1998, Connell sent a follow-up letter to the client, stating that: (1) TOD was looking at
manufacturing a level sensing device, which could also measure liquid temperature, vapor
temperature, vapor leakage, and liquid type; and (2) the device would also self-calibrate, have no
moving parts, be small and flexible, and be “cost advantageous.” Id. at 1601. Connell also sent
an e-mail to Maatuk, stating that the client was interested in his liquid level sensor and wanted to
meet to discuss its potential. Id. at 1602.
In an April 19, 1998, letter to Khadkikar, Maatuk stated that he would adapt his
multi-function liquid level sensor technology to measure liquid level for seven types of fuel,
fluid temperature, and fuel thermal properties. Id. at 1597. He stated that TOD should consider
using vacuum deposition and lamination to produce probes for testing. Id.at 1598. Maatuk
noted that the multi-function technology could measure, fuel, engine oil, coolant, and brake
fluids, and that developing technology to measure vapor leakage would cost an additional
$100,000 and take 6 to 12 months. Id. at 1599.
In a June 17, 1998, letter to Maatuk, Zimmermann stated that TOD was in the process of
specifying the liquid level sensor probes to a prototype supplier; however, the supplier could not
connect a constantan strip to the probe. Id. at 1603. Zimmermann stated that he believed the
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constantan strip could be attached to the copper traces using “special welding techniques.” Id.
With his letter, Zimmermann attached a schematic drawing for the liquid sensor probe. Id. at
1603–04.
In a June 21, 1998 letter to Zimmermann, Maatuk stated that the drawing should note that
the design was confidential and proprietary to Max-Em Engineering, and that Max-Em
Engineering would own any technology improvement that might be discovered during testing.
Id. at 1607. Further, Maatuk requested additional information on how Zimmermann planned to
attach the “Constantine wire to the tip of the copper traces,” how Zimmermann would insulate
the sides of the heater, the top thin coating that Zimmermann planned to sue, and the plastic that
the prototype supplier would use. Id. Maatuk noted that he would give Zimmermann additional
suggestions on end leakages from the probe during a phone call. Id. at 1608. Maatuk sent
another letter on June 22, 1998, noting that he spoke with Zimmermann over the phone, and that
Zimmermann would enter a non-disclosure agreement with the supplier and change Therm-ODisc Inc. “Proprietary” to “Confidential” on the drawing. ECF Doc. 88-3, Page ID# 1614.
Maatuk also noted that he provided TOD with confidential information not in the public domain,
including “how to use a heater wire as a common wire and measure liquid properties.”2 Id.
Zimmermann confirmed the change in wording on the drawing and the execution of a
confidentiality agreement with the supplier in a June 24, 1998, letter. ECF Doc. 88-2, Page
ID# 1609.
On April 30, 1999, Zimmermann sent an e-mail to Maatuk, asking for input on a data set
containing test results for use of a liquid level sensor in a fuel compressor. ECF Doc. 88-3, Page
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Maatuk’s letter indicates that he listed other confidential information that he provided TOD; however,
Maatuk provided only the first and last pages of what appears to be a four-page letter. See ECF Doc. 883, Page ID# 1614–15 (jumping from page 39 to page 42).
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ID# 1618. Zimmermann noted that the liquid level in the compressor was tested in a range from
“full” to “empty” (approximately 6 cm), and that the spacing for the four thermocouple junctions
in the sensor was approximately 15 mm. Id. Zimmermann stated that he was concerned that
output from each thermocouple changed under varying operating conditions. Id. Zimmermann
also noted that the data set was confidential to TOD and TOD’s client.
While Maatuk was discussing licensing the Sensor to TOD, the U.S. Patent and
Trademark Office (“USPTO”) awarded him two patents for liquid sensor technology. ECF
Docs. 87-7–87-8, Page ID# 1510–30; see also ECF Doc. 87-3–87-4, Page ID# 1479, 1487. On
March 24, 1998, the USPTO issued U.S. Patent No. 5,730, 026, titled “Microprocessor-Based
Liquid Sensor and Ice Detector” (“the ’026 Patent”). ECF Doc. 87-7, Page ID# 1510–18. On
June 1, 1999, the USPTO issued U.S. Patent No. 5,908,985, also titled “Microprocessor-Based
Liquid Sensor and Ice Detector” (“the ’985 Patent”). ECF Doc. 87-8, Page ID# 1520–30.
In late July or August 1999, TOD informed Maatuk that it decided not to license his
liquid sensor technology. ECF Docs. 15-1 and 87-4, Page ID# 241, 1487. Thereafter, Khadkikar
and Zimmermann did not communicate further with Maatuk, except about this lawsuit and a
prior lawsuit between Maatuk and TOD. ECF Docs. 87-3–87-4, 87-12, and 88-3, Page
ID# 1479, 1487, 1558–59, 1616–18.
B.
Invention of the Multi-Function Sensor
On December 10, 2003, Khadkikar and Zimmermann jointly conceived of a multifunction sensor that combined and integrated a turbidity sensor with a liquid level sensor (the
“multi-function sensor”). ECF Docs. 87-3–87-4, Page ID# 1479, 1487. On April 15, 2004,
Khadkikar prepared a written record documenting the conception of the multi-function sensor.
ECF Docs. 87-3 and 87-9, Page ID# 1479–80, 1532–34. On April 21, 2004, Khadkikar and
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Zimmermann applied for a provisional patent for the multi-function sensor. ECF Docs. 1 and
87-3–87-4, Page ID# 27, 1480, 1487. On March 9, 2005, Zimmermann prepared a TOD
invention disclosure form, disclosing the invention of a “multi-function liquid level sensor,”
which integrated a turbidity sensor into a liquid level sensor probe. ECF Doc. 87-8 and 87-10,
Page ID# 1488, 1536–40. Zimmermann stated that the multi-function sensor could be “used in
dishwasher and washing machine applications, therefore requiring only a single perforation in
the bottom of the sump/tub.” ECF Doc. 87-10, Page ID# 1536.
On August 17, 2010, the USPTO granted TOD the ’105 Patent and listed Khadkikar and
Zimmermann, as joint inventors. ECF Doc. 1, Page ID# 17. The ’105 patent describes a
multi-function sensor that “incorporates a fluid level sensor module [or a fluid flow rate sensor],
a turbidity sensor module, a temperature sensor module, and a pressure sensor module.” ECF
Doc. 1, Page ID# 17. The patent states that “[a] turbidity sensor module is . . . integrally
included on the multi-function sensor,” and every claim in the patent recites a multi-function
sensor combining a turbidity sensor with a fluid level sensor or a fluid flow rate sensor. Id. at 17,
33–34. The ’105 patent discloses that each of the sensor modules integrated into the
multi-function sensor were commercially available or already known in the prior art and
previously published patent documents. Id. at 28–33. Specifically, the patent stated that: (1) the
liquid level sensor module was described in U.S. Patent No. 6,546,796 and U.S. Patent
No. 6,862,932; (2) the turbidity sensor module was commercial available from Fairchild
Semiconductor and Optek Technology, Inc.; (3) the pressure sensor module was described in
U.S. Patent No. 6,546,796; (4) the temperature sensor module was commercially available from
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Panasonic; and (5) the fluid flow rate sensor module was described in U.S. Patent Application
No. 10/963,750.3 Id.
Maatuk never disclosed to Khadkikar and Zimmermann the idea of integrating a turbidity
sensor with a liquid level sensor or fluid flow sensor into a single sensor package, and he also did
not disclose the way the ’105 patent measured turbidity and flow rate. ECF Docs. 87-3–87-5,
Page ID# 1481, 1489, 1493–95. In his deposition, Maatuk stated that Khadkikar and
Zimmermann never disclosed to him that they were working on a multi-function sensor that
included a fluid flow sensor or a turbidity sensor. ECF Doc. 87-5, Page ID# 1498. Maatuk
learned about Khadkikar and Zimmermann’s efforts to invent a multi-function sensor integrating
a turbidity sensor with other sensors when he learned about the ’105 patent in October 2014. Id.
at 1497–98. In their declarations, Khadkikar and Zimmermann stated that: (1) they conceived of
the multi-function sensor at least four years after their last contact with Maatuk; (2) they did not
collaborate with Maatuk in conceiving the multi-function sensor; and (3) Maatuk did not
participate in or contribute to the conception of the multi-function sensor. ECF Docs. 87-3 and
87-4, Page ID# 1481, 1489.
In a December 21, 2018, declaration, Maatuk stated that he conceived of a “multifunction liquid sensor that [could] measure fluid level, temperature, and pressure leakage” before
contacting TOD in 1997. ECF Doc. 88-7, Page ID# 1657. He asserted that he made several
contributions to the ’105 patent. ECF Doc. 88-7, Page ID# 1659–61. Specifically, Maatuk
stated that the claims in the ’105 patent incorporate several elements of his designs that are:
(1) shown in a diagram attached to a June 1998 letter from Zimmermann to Maatuk, showing the
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TOD owned U.S. Patent Nos. 6,546,796 and 6,862,932. ECF Docs. 47-6 and 47-16. TOD also owned
U.S. Patent Application No. 10/963,750, which the USPTO granted as U.S. Patent No. 7,333,899 on
February 19, 2008. ECF Doc. 87-11, Page ID# 1542.
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schematics for a liquid level sensor probe; and (2) recited in a March 1998 letter from
Zimmermann, describing the critical variables in the design of Maatuk’s probe so that a
prototype could be constructed for testing. ECF Doc. 88-7, Page ID# 1659–61; see also ECF
Doc. 88-2, Page ID# 1604–06. He stated that such elements included the thermocouple junction
spacing described in claims 1 and 2, the electric circuit and heat source spacing described in
claim 5, the mounting of a fluid level sensor on a substrate that was electrically insulating the
heater and thermocouples of the fluid level sensor in claim 6, the different coatings of the multifunction sensor in claim 7, the properties of the substrate for mounting the plurality of the first
thermocouple and the placement of the heat source in claim 8, the placement of the traces for the
first and second thermocouples and heaters in claim 9, the multi-function sensor comprised of a
temperature sensor and a pressure sensor module wherein the temperature sensor module
comprises a thermocouple junction and the pressure sensor module comprises a thermocouple
junction in claim 10. ECF Doc. 88-7, Page ID# 1659–61.
C.
Practice of the ’105 Patent
TOD claims that it never practiced the ’105 patent. ECF Doc. 87-1, Page ID# 1459. In
his deposition, TOD representative Ralph Bishop testified that TOD never manufactured or sold
a multi-function sensor covered by the ’105 patent, licensed the ’105 patent, or enforced the ’105
patent against a third party. ECF Doc. 87-6, Page ID# 1506–08.
In his response brief, Maatuk asserts that TOD practiced the ’105 patent by conducting
market research in an attempt to commercialize the multi-function sensor. ECF Doc. 88, Page
ID# 1580–82. Specifically, Maatuk points to several TOD documents, including: (1) a 1998
market report by Frost & Sullivan, Inc., predicting that the U.S. market for fuel level sensors
would grow from 12.9 million units with a value of $38.8 million in 1992 to 15.3 million units
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with a value of $46 million in 2002; (2) an undated TOD quotation form addressed to Copeland
Corporation and stating that TOD would sell oil level sensors at prices ranging from $25 per unit
for 10,000 units to $15 per unit for 100,000 units; (3) a March 23, 2001, consulting work bill for
modeling and studying a multiple thermocouple liquid level sensor (“MTLLS”); (4) a May 1999
proposal noting that TOD requested a technical review to determine suitable materials for the
substrate/coating/encapsulation system for a MTLLS in a compressor environment; (5) an
October 1996 TOD project request to develop improved flow rate and water level sensor systems
for washing machines, which was terminated in January 1998 due to lack of client interest; (6) a
November 1998 TOD project request to develop an MTLLS for measuring oil level inside
Copeland’s specter compressor, which Copeland request be placed on hold; (7) a June 2003
TOD project request to adapt the MTLLS for dishwasher applications, which was closed due to
customer disinterest; (8) a June 2009 TOD project request to determine whether TOD’s liquid
level sensor could differentiate between liquid and powder detergents; and (9) a June 2009 TOD
project request to determine whether TOD’s liquid level sensor could monitor the water level and
temperature in a horizontal washer. ECF Doc. 88-5, Page ID# 1626–41.
D.
Expiration of the ’105 Patent
On May 7, 2018, and August 10, 2018, TOD sent correspondence to Maatuk informing
him that the maintenance fee for the ’105 patent was due on August 17, 2018, as TOD did not
intend to pay the maintenance fee. ECF Docs. 87-1 and 88, Page ID# 1460, 1581. TOD notified
Maatuk that he could pay the maintenance fee to keep the ’105 patent from lapsing, even though
he was not listed as an inventor on or owner of the ’105 patent. ECF Docs. 87-1 and 88, Page
ID# 1460, 1581. Maatuk states in his response brief that he attempted to pay the $3,760
maintenance fee; however, he sent only $3,750. ECF Doc. 88, Page ID# 1581–82. Maatuk
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asserts that the USPTO notified him of the error only after the ’105 patent lapsed and said that
the ’105 patent could only be judicially re-instated. Id. at 1582.
III.
Law and Analysis
A.
Summary Judgment Standard
Summary judgment is proper when “the movant shows that there is no genuine dispute as
to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ.
P. 56(a); Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1338–39 (Fed. Cir. 2016).
The moving party must demonstrate the “basis for its motion, and identify[] those portions of the
pleadings, depositions, answers to interrogatories, and admissions on file, together with the
affidavits, if any, which it believes demonstrate the absence of a genuine issue of material fact.”
Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986) (quotation omitted). The nonmoving party
may not simply rely on his pleadings, but “must set forth specific facts showing that there is a
genuine issue for trial.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986) (quotation
omitted). A reviewing court must determine whether the evidence that the nonmoving party
relies upon “presents sufficient disagreement to require submission to a jury or whether it is so
one-sided that one party must prevail as a matter of law.” Id. at 251–52. In evaluating the
evidence presented on a summary judgment motion, courts must draw all reasonable inferences
in favor of the nonmoving party. Id. at 255. Nonetheless, a court need not accept unsupported or
conclusory statements as true. See TechSearch, LLC v. Intel Corp., 286 F.3d 1360, 1372 (Fed.
Cir. 2002) (“[U]nsupported or conclusory averments are insufficient to avoid summary
judgment.”).
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B.
Liberal Construction for Pro Se Litigants
Pleadings by pro se litigants are liberally construed and held to less stringent standards
than formal pleadings by lawyers. Ottah v. Fiat Chrysler, 884 F.3d 1135, 1141 (Fed. Cir. 2018).
Nevertheless, there are limits to the liberal construction pro se pleadings may receive. A pro se
litigant must state a plausible claim for relief and cannot rely on conclusory allegations. Id.
(citing Walker v. Schult, 717 F.3d 119, 124 (2d Cir. 2013)); McZeal v. Sprint Nextel Corp., 501
F.3d 1354, 1359 n.2 (Fed. Cir. 2007). Further, the court may not: (1) rewrite a complaint to
include claims that were never presented, Barnett v. Hargett, 174 F.3d 1128 (10th Cir. 1999);
(2) construct the plaintiff's legal arguments for him, Small v. Endicott, 998 F.2d 411 (7th Cir.
1993); (3) “conjure up unpled allegations,” McDonald v. Hall, 610 F.2d 16, 19 (1st Cir. 1979); or
(4) create a claim for Plaintiff, Clark v. Nat’l Travelers Life Ins. Co., 518 F.2d 1167, 1169 (6th
Cir. 1975). See also Beaudett v. City of Hampton, 775 F.2d 1274, 1278 (4th Cir. 1985) (noting
that holding otherwise would “transform the district court . . . to the improper role of an advocate
seeking out the strongest arguments and most successful strategies for a party”).
C.
Mootness
District courts must sua sponte inquire into their jurisdiction whenever jurisdiction may
be lacking. Special Devices, Inc. v. OEA, Inc., 269 F.3d 1340, 1343 (Fed. Cir. 2001). A case is
moot, and therefore federal courts lack jurisdiction over it, when the parties lack a legally
cognizable interest in the outcome. Humane Society of the U.S. v. Clinton, 236 F.3d 1320, 1331
(Fed. Cir. 2001). The expiration of a patent does not render the issue of inventorship moot, as
expired patents are not considered as having never existed and continue to have value beyond the
expiration point. Cf. Genetics Inst., LLC v. Novartis Vaccines & Diagnostics, Inc., 655 F.3d
1291, 1299 (Fed. Cir. 2011) (stating that a litigant seeking rights in an expired patent, if
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successful, could potentially bring an infringement action up to six years after the patent’s
expiration). Even if the right to enforce the ’105 patent would evade Maatuk if he is successful
in his correction of inventorship claim, his claim is not moot because there is a legally
cognizable reputation interest in being named an inventor to a patent. Cf. Shukh v. Seagate
Tech., LLC, 803 F.3d 659, 663 (Fed. Cir. 2005) (stating that an inventor omitted from a patent
may recover for reputational injury). Furthermore, the ’105 patent’s expiration does not moot
Maatuk’s case, because Maatuk could petition the Director of the USPTO to accept a delayed
payment for the maintenance fee on the expired ’105 patent. See 37 C.F.R. § 1.378 (“The
Director may accept the payment of any maintenance fee due on a patent after expiration of the
patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction
of the Director to have been unintentional.”). Accordingly, this court has jurisdiction to hear
Maatuk’s correction of inventorship claim notwithstanding the ’105 patent’s expiration.
D.
Correction of Inventorship
TOD argues that Maatuk has not produced sufficient evidence to show that he was a joint
inventor of the multi-function sensor in the ’105 patent. ECF Docs. 87 and 87-1, Page
ID# 1443–45, 1467–70. Specifically, TOD contends that Maatuk cannot show that he
contributed to Khadkikar and Zimmermann’s 2003 conception of the multi-function sensor,
because: (1) Maatuk did not communicate with TOD, Khadkikar or Zimmermann after 1999;
(2) he never disclosed to anyone at TOD the idea of integrating a turbidity sensor with a liquid
level sensor or fluid flow sensor into a single sensor package; and (3) he did not know about
Khadkikar and Zimmermann’s work on a multi-function sensor that included a turbidity sensor
and or flow sensor, until he learned of the ’105 patent in October 2014. Id. at 1445, 1467–69.
TOD also asserts that, even if the ’105 patent included Maatuk’s liquid sensor technology
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disclosed in the ’026 patent and ’985 patent, that information is not a “contribution to
conception” because it is in the prior art. Id. at 1445, 1469–70.
Maatuk responds that he presented sufficient evidence to create a genuine issue of
material fact that he was a joint inventor of the multi-function sensor in the ’105 patent. ECF
Doc. 88, Page ID# 1564–69, 1573–80, 1583–86. The gravamen of Maatuk’s argument is that he
should be considered a joint inventor because he disclosed to TOD, Khadkikar, and
Zimmermann certain processes for building a multi-function sensor that: (1) could measure
liquid level, temperature, and pressure leakage; and (2) used thermocouples and heaters in a
spaced relationship to measure pressure. Id. at 1573–80, 1583–84. He asserts that he also
disclosed to TOD the idea of including multiple functions on the same substrate. Id. at 1574,
1584. Although Maatuk acknowledges that his disclosures occurred between 1997 and 1999 and
did not relate to all of the ’105 patent’s claims, he contends that he was nevertheless a joint
inventor, because contributions do not need to occur at the same location and time and may be
limited only to parts of an invention. Id. at 1583–86. Furthermore, Maatuk argues that the ’026
and ’985 patents could not have been prior art for the ’105 patent, because they did not:
(1) describe multi-function sensors; or (2) enable a person skilled in the art to construct the
sensors they described. Id. at 1569, 1573, 1586.
TOD replies that Maatuk has not produced evidence showing that his alleged
contributions to the ’105 patent were “conceived in collaboration” with Khadkikar and
Zimmermann or that he contributed to the idea of combining a turbidity sensor with a liquid level
sensor or flow sensor. ECF Doc. 89, Page ID# 1667–69. Instead, TOD asserts that Maatuk has
only produced evidence showing that he conceived of a multi-function sensor that could measure
fluid level, temperature, and pressure leakage well before he worked with Khadkikar and
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Zimmermann. Id. at 1668. Furthermore, TOD argues that Maatuk has conceded that he did not
participate in conceiving the invention combining a turbidity sensor with other sensors, as
described in the ’105 patent. Id. Moreover, TOD contends that the undisputed record evidence
shows that the sensor modules in the device described in the ’105 patent were disclosed in earlier
patents or were already commercially available, as the ’105 patent states. Id. at 1668–69.
Under 35 U.S.C. § 256, an inventor erroneously omitted from an issued patent may bring
an action for correction of named inventor. Eli Lilly & Co. v. Aradigm Corp, 376 F.3d1352,
1358 (Fed. Cir. 2004); but see MCV, Inc. v. King-Seeley Thermos Co., 870 F.2d 1568, 1571 (Fed.
Cir. 1988) (holding that deceptive intent in failing to join an inventor would not permit
correction of inventorship and could invalidate the patent). To establish joint inventorship, the
plaintiff must show that he: (1) collaborated with the named inventors; and (2) contributed to the
conception of the invention. Eli Lilly & Co., 376 F.3d at 1358–59.
Collaboration requires that the plaintiff’s “labors were joined with the efforts of the
named inventors,” and occurs only “when the inventors ha[d] some open line of communication
during or in temporal proximity to their inventive efforts.” Id. at 1359. Nevertheless, the
plaintiff need not have physically worked together with or at the same time as the named
inventors, or work with the named inventors on each of the patent’s claims. Vanderbilt Univ. v.
ICOS Corp., 601 F.3d 1297, 1303 (Fed. Cir. 2010); 35 U.S.C. § 116(a) (“Inventors may apply
for a patent jointly even though (1) they did not physically work together or at the same time,
(2) each did not make the same type or amount of contribution, or (3) each did not make a
contribution to the subject matter of every claim of the patent.”). Instead, the key inquiry is
whether the plaintiff and the named inventors worked under a common direction to arrive at a
definite and permanent idea of the invention as it will be used in practice. Vanderbilt Univ., 601
16
F.3d at 1302–3 (noting that the joint inventors must have worked “toward the same end”);
Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., 973 F.2d 911, 917 (Fed. Cir. 1992)
(“[T]here must be some element of joint behavior, such as collaboration or working under
common direction. * * * Individuals cannot be joint inventors if they are completely ignorant of
what each other has done until years after their individual independent efforts.”).
The plaintiff’s contribution to the conception of the invention must be significant when
measured against the dimension of the full invention. Eli Lilly & Co., 376 F.3d at 1359 (citing
Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997). The key inquiry here is
whether the contribution was part of the “inventive thought” in developing the subject matter of
the claims in the patent. See Vanderbilt Univ., 601 F.3d at 1302 (noting that each joint inventor
must have “ma[de] some contribution to the inventive thought and to the final result”); Ethicon,
Inc. v. United States Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998) (“[T]he critical
question for joint conception is who conceived . . . the subject matter of the claims at issue.”);
see also Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994)
(“[T]he test for conception is whether the inventor had an idea that was definite and permanent
enough that one skilled in the art could understand the invention.”). The plaintiff need not have
contributed the same amount to the invention, or even to all of the claims in the patent. 35
U.S.C. § 116(a); Eli Lilly & Co., 376 F.3d at 1358 (noting that there is no explicit lower limit on
inventive contribution required); Ethicon, Inc., 135 F.3d at 1460 (Fed. Cir. 1998) (“[E]ach needs
to perform only a part of the task which produces the invention.”). Nevertheless, a plaintiff does
not qualify as a joint inventor when: (1) he merely explained well-known principles or the state
of the art at the time of the invention, without having a firm idea of the claimed combination as a
whole; (2) his contribution was too far removed from the realization of the invention, such as
17
merely suggesting an idea instead of the means to accomplish it; or (3) his contribution was
merely focused on realizing the invention, after the named inventors conceived of it. Eli Lilly &
Co., 376 F.3d at 1359; Ethicon, Inc., 135 F.3d at 1460.
“Because the issuance of a patent creates a presumption that the named inventors are the
true and only inventors,” a person seeking correction of inventorship must establish that he was
an inventor by clear and convincing evidence. General Electric Co. v. Wilkins, 750 F.3d 1324,
1329 (Fed. Cir. 2014) (citations omitted). The plaintiff may not rely only upon his own
statements and testimony; rather, he must provide other evidence corroborating his allegations.
Eli Lilly & Co., 376 F.3d at 1358; Ethicon, Inc., 135 F.3d at 1461; Symantec Corp. v. Computer
Assocs. Int’l, Inc., 522 F.3d 1279, 1295 (Fed. Cir. 2008) (“An alleged co-inventor’s testimony,
standing alone, cannot rise to the level of clear and convincing evidence; he must supply
evidence to corroborate his testimony.”). “Corroborating evidence may be . . . records made
contemporaneously with the inventive process, circumstantial evidence of an independent nature,
or oral testimony from someone other than the alleged inventor.” Symantec Corp., 522 F.3d at
1295 (quotations omitted).
As a preliminary matter, the undisputed evidence establishes that the invention described
in the ’105 patent is the integration of a turbidity sensor with a fluid level sensor or a fluid flow
rate sensor and other sensors into a single multi-function sensor device. ECF Doc. 1, Page
ID# 17. The inclusion of the turbidity sensor in the device is integral to the invention, and each
claim in the ’105 patent recites the inclusion of a turbidity sensor. Id. at 17, 33–34. The
individual turbidity, fluid level, flow rate, temperature, and pressure sensor modules used in
constructing the device are not the inventions described in the ’105 patent, as each separate
sensor module was commercially available or existed in the prior art. Id. at 28–33.
18
Maatuk has not produced sufficient evidence for a reasonable jury to conclude that he
was a joint inventor of the multi-function sensor described in the ’105 patent. Anderson, 477
U.S. at 250–52; Akzo Nobel Coatings, Inc., 811 F.3d at 1338–39; Eli Lilly & Co., 376 F.3d at
1358–59; Fed. R. Civ. P. 56(a). Here, the undisputed record evidence shows that Maatuk did not
have an open line of communication with Khadkikar and Zimmermann during or in proximity to
Khadkikar and Zimmermann’s 2003 inventive efforts, as Maatuk had ceased collaborative
communication with TOD and its employees in 1999. Eli Lilly & Co., 376 F.3d at 1359; ECF
Docs. 87–87-4, 87-12, and 88-3, Page ID# 1479, 1487, 1558–59, 1616–18. Even if this court
determined that Maatuk’s 1997 through 1999 communications were proximate to Khadkikar and
Zimmermann’s inventive efforts, however, Maatuk has not produced any evidence that he
worked with Khadkikar and Zimmermann to arrive at a definite and permanent idea of a
multi-function sensor that integrated a turbidity sensor with other sensor modules. Eli Lilly &
Co., 376 F.3d at 1359; Vanderbilt Univ., 601 F.3d at 1302–03. Although Maatuk is correct in
noting that the collaboration prong does not require him to have worked on each claim in the
invention or at the same time as Khadkikar and Zimmermann, his own testimony – that he never
discussed integrating a turbidity sensor and was ignorant of Khadkikar and Zimmermann’s
inventive efforts until he learned of the ’105 patent in October 2014 – disproves any argument
that he collaborated with Khadkikar and Zimmermann in developing the invention described in
the ’105 patent. Vanderbilt Univ., 601 F.3d at 1302–3; Kimberly-Clark Corp., 973 F.2d at 917;
ECF Doc. 87-5, Page ID# 1493–98; see also ECF Docs. 87-3–87-4, Page ID# 1481, 1489. Thus,
Maatuk has not produced sufficient evidence to create a genuine issue of material fact that he
collaborated with Khadkikar and Zimmermann in developing the invention described in the
’105 patent.
19
Maatuk also has not pointed to any evidence sufficient for a reasonable jury to conclude
that he contributed to the invention described in the ’105 patent. Anderson, 477 U.S. at 250–52;
Akzo Nobel Coatings, Inc., 811 F.3d at 1338–39; Eli Lilly & Co., 376 F.3d at 1358–59; Fed. R.
Civ. P. 56(a). Any allegation that Maatuk contributed to the conception of a multi-function
sensor integrating a turbidity sensor with other sensor modules is disproved by his own
testimony that he did not discuss turbidity sensors with Khadkikar and Zimmermann. ECF Doc.
87-5, page ID# 1493–98. Thus, Maatuk cannot show that he contributed to the “inventive
thought” in developing a multi-function sensor integrating a turbidity sensor with other sensors.
Vanderbilt Univ., 601 F.3d at 1302; Ethicon, 135 F.3d at 1460; Burroughs Wellcome Co., 40
F.3d at 1228. Furthermore, Maatuk’s testimony – that he contributed to Khadkikar and
Zimmermann’s inventive process by disclosing to them (1) the use of thermocouples and heaters
in a spaced relationship to measure pressure; (2) a multi-function sensor that combined liquid
level, temperature, and pressure sensing modules; and (3) the idea of combining multiple
functions on the same substrate – is insufficient to survive summary judgment, because he has
not produced any corroborating evidence showing that he disclosed these ideas to TOD as part of
the inventive process in developing the device described in the ’105 patent. Eli Lilly & Co., 376
F.3d at 1358; Ethicon, Inc., 135 F.3d at 1461; Symantec Corp., 522 F.3d at 1295; ECF Doc. 887, Page ID# 1657–61. Here, the letters and other documents Maatuk points to as corroborating
evidence establish only that he described details regarding the sensors that he had individually
conceived of before contacting TOD and are not related to the conception of a multi-function
sensor that integrates a turbidity sensor with other sensor modules. See generally ECF Docs. 882–88-3.
20
Even if this court were to determine that Maatuk’s documents corroborated his testimony
that he made a contribution to the ’105 patent, he has nonetheless failed to produce evidence
showing that his contribution was significant when measured against the dimension of the full
invention. Eli Lilly & Co., 376 F.3d at 1359; Fina Oil & Chem Co., 123 F.3d at 1473. First,
Maatuk’s disclosure of using thermocouples and heaters in a spaced relationship to measure
pressure is not a significant contribution, as the ’105 patent relies on pressure sensing technology
that was already known in the prior art and does not claim the invention of a pressure sensor. Eli
Lilly & Co., 376 F.3d at 1359; Ethicon, Inc., 135 F.3d at 1460; ECF Doc. 1, Page ID# 28–33.
Second, Maatuk’s testimony that he disclosed a multi-function sensor integrating a liquid level,
temperature, and pressure sensor modules and the inclusion of multiple functions on the same
substrate fail to show a significant contribution because those disclosures merely contributed, if
at all, to the means to accomplish the device that Khadkikar and Zimmermann conceived of, and
did not contribute to the invention itself, i.e. the idea of a multi-function sensor integrating a
turbidity sensor with other sensor modules. Eli Lilly & Co., 376 F.3d at 1359; Ethicon, Inc., 135
F.3d at 1460. Thus, Maatuk has not produced evidence sufficient for a reasonable jury to
conclude that he made a significant contribution to the invention described in the ’105 patent.
Anderson, 477 U.S. at 250–52; Akzo Nobel Coatings, Inc., 811 F.3d at 1338–39; Eli Lilly & Co.,
376 F.3d at 1358–59; Fed. R. Civ. P. 56(a).
In sum, Maatuk has failed to produce evidence sufficient for a reasonable jury to
conclude that he was a joint inventor of the multi-function sensor described in the ’105 patent.
Accordingly, TOD is entitled to summary judgment as a matter of law on Maatuk’s correction of
inventorship claim. Fed. R. Civ. P. 56(a); Anderson, 477 U.S. at 250–52; Akzo Nobel Coatings,
Inc., 811 F.3d at 1338–39; Eli Lilly & Co., 376 F.3d at 1358–59.
21
E.
Damages
TOD argues that, even if Maatuk produced sufficient evidence to show that he was a joint
inventor of the ’105 patent, he nevertheless is not entitled to money damages. ECF Docs. 87 and
87-1, Page ID# 1443–44, 1465–67. TOD asserts that Maatuk cannot show that TOD unjustly
benefitted from its control of the ’105 patent, because: (1) joint inventors and owners do not have
to account to each other for their use and licensing of a patent; (2) TOD never manufactured,
commercialized, or sold a multi-function sensor covered by the ’105 patent; and (3) TOD never
licensed or enforced the ’105 patent. ECF Docs. 87 and 87-1, Page ID# 1443–44, 1465–66.
Furthermore, TOD contends that Maatuk cannot show that he suffered any losses due to not
being named an inventor, because he: (1) did not allege any financial losses; and (2) testified that
his damages theory did not include any losses to him, but his effort to recover for TOD’s
allegedly improper gains and cost savings. ECF Docs. 87 and 87-1, Page ID# 1443, 1466–67.
Maatuk responds that TOD’s motion for summary judgment on the damages issue is
premature, because a trier of fact has not yet determined whether he was a joint inventor. ECF
Doc. 88, Page ID# 1582. He argues that a reasonable juror could conclude that he is entitled to
damages, because his omission as an inventor from the ’105 patent deprived him of the right to
practice, license, swear back, and claim continuity from the ’105 patent. Id. at 1566, 1583,
1585–86. Further, Maatuk asserts that “by not being listed on patent #105 as a co-inventor, [he
has] legal standing for financial damages due to reputational injuries.” Id. at 1574; see also id. at
1567, 1583, 1585. Moreover, Maatuk contends that TOD’s argument – that the ’105 patent had
no commercial value – is belied by TOD’s investments in and attempts to market the multifunction sensor, notwithstanding TOD’s failure to complete a sale. Id. at 1566–67, 1580–81.
22
In its reply, TOD reiterates its argument that Maatuk is not entitled to any damages
resulting from TOD’s, Khadkikar’s, or Zimmermann’s alleged use of the ’105 patent. Id. at
1669–70, 1672–74. Further, TOD argues that Maatuk’s complaint did not ask for any damages
compensating for his own losses as a result of not being named an inventor on the ’105 patent.
Id. at 1670. Moreover, TOD argues that Maatuk has not produced any evidence showing that he
suffered any compensable damages to his reputation, lost profits, or lost sales. Id. at 1670–72.
“A pleading that states a claim for relief must contain . . . a demand for the relief sought.”
Fed. R. Civ. P. 8(a)(3). In Falana v. Kent Displays, Inc., this court held that a counseled
plaintiff’s inclusion of the phrase “such and other further relief as the court may deem
appropriate” did not convert his claim seeking correction of inventorship and injunctive relief
into a claim for monetary damages. No. 5:08-cv-720, 2009 WL 1362603 *2 (N.D. Ohio 2009).
In Smith v. Hundley, the Eighth Circuit held that a pro se plaintiff’s request for “such other and
further relief as the Court may deem just and proper,” permitted the court to liberally construe
the plaintiff’s complaint seeking injunctive relief to also seek declaratory relief. 190 F.3d 852,
854 n.7 (8th Cir. 1999).
The statute enabling omitted inventors to sue for correction of inventorship does not
provide for monetary damages. See generally 35 U.S.C. § 256; see also 35 U.S.C. §§ 281–99
(not providing for damages for an omitted inventor in chapter entitled “remedies for
infringement of patent and other actions”). Maatuk relies on Shukh v. Seagate Tech., LLC, 803
F.3d 659 (Fed. Cir. 2015), to support his proposition that “an omitted co-inventor has a legal
standing to ask for monetary damages due to reputation injury.” ECF Doc. 88, Page ID# 1583.
In Shukh, the district court dismissed for lack of Article III standing a plaintiff’s correction of
inventorship claim because the court concluded that the plaintiff had no ownership or financial
23
interest in the patent when he automatically assigned his invention to his employer. 803 F.3d at
662. The Federal Circuit vacated the district court’s decision, holding that “concrete and
particularized reputational injury can give rise to Article III standing” to bring a correction of
inventorship action. Id. at 663–67. In doing so, the Federal Circuit noted that “pecuniary
consequences may well flow from being designated as an inventor,” but it did not address
whether an omitted inventor could recover monetary damages in his correction of inventorship
action. Id. at 663.
As a preliminary matter, Maatuk’s complaint does not demand monetary damages for his
correction of inventorship claim. Fed. R. Civ. P. 8(a)(3); see ECF Doc. 1, Page ID# 11–12, 14–
15. Nonetheless, this Court could construe Maatuk’s request for “such other relief . . . as the
Court should deem to be fair and equitable” and statement that he suffered reputational harm and
lost profits from using and licensing the ’105 patent, to state a claim for monetary damages to
compensate him for the reputational injury and lost profits that he suffered due to his omission as
in inventor. ECF Doc. 1, Page ID# 12, 15.
In any event, Maatuk is not entitled to damages on his correction of inventorship claim.
First, Maatuk is not entitled to damages because, as discussed above, he has not produced
sufficient evidence for a reasonable juror to find that he was a joint inventor. Second, even if
Maatuk could show that he was a joint inventor, he is not entitled to damages in his correction of
inventorship claim. Here, the remedy in a correction of inventorship action under 35 U.S.C.
§ 256 is to have the patent corrected to state the true inventors’ names, and Maatuk has not
pointed to any authority supporting his claim that his omission as an inventor entitles him to
monetary damages. 35 U.S.C. § 256; Shukh, 803 F.3d at 663–67; ECF Doc. 88, Page ID# 1583.
24
Accordingly, Maatuk is not entitled to monetary damages in his correction of inventorship
action.
Alternatively, even if this court were to construe the Federal Circuit’s statement
recognizing the pecuniary interests inherent in being named an inventor to confer a right to
recover monetary damages in a correction of inventorship action, Maatuk has not produced
sufficient evidence upon which a reasonable juror could rely to find that he is entitled to
monetary damages. Here, Maatuk has not produced any evidence, beyond his own conclusory
allegations, that he suffered actual damages, such as lost employment or other economic
consequences. Cf. Kamdem-Ouaffo v. PepsiCo Inc., 657 F. App’x 954 (Fed. Cir. 2016) (“But
reputational injury alone is not sufficient; rather, it must be tied to economic consequences, such
as loss of employment prospects.”); TechSearch, LLC, 286 F.3d at 1372. Maatuk’s evidence
showing that TOD had some commercial prospects for the invention in the ’105 patent –
including TOD’s bid to sell oil level sensors to Copeland – is inconsequential to show economic
harm to Maatuk, as TOD would not have had any duty to account to Maatuk had he been named
a joint inventor and such a bid had been accepted. See 35 U.S.C. § 262 (“In the absence of an
agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or
sell the patented invention . . . without the consent of and without accounting to the other
owners.”). Thus, Maatuk has not produced sufficient evidence to create a genuine issue of
material fact that he is entitled to damages, and grant TOD’s motion for summary judgment on
the damages issue.
IV.
Conclusion
Because Maatuk has not produced evidence sufficient for a reasonable jury to conclude
that he was a joint inventor of the ’105 patent, TOD’s motion for summary judgment on
25
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