Wilson v. Corning, Inc.

Background

John R. Wilson and Wilson Wolf Manufacturing Corporation alleged that Corning obtained their cell-culture technology under a confidentiality agreement, then used it to develop and commercialize products and to obtain patents claiming the technology as its own. The remaining claims were for breach of contract, correction of inventorship concerning three Corning patents, and trade-secret misappropriation.

The Patent Trial and Appeal Board issued a decision and judgment invalidating claims 1 through 45 of Wilson’s U.S. Patent No. 8,809,044. After the Board denied rehearing, the judgment was appealed to the Federal Circuit. The court had previously declined to treat the Board’s judgment as final for purposes of issue preclusion and denied Corning’s motion for summary judgment based on that judgment.

Motion to Stay

Corning asked the court to stay, or pause, the case while the Federal Circuit reviewed the Board’s judgment. Corning argued that the appeal could resolve factual issues, simplify the remaining claims, and conserve the parties’ and court’s resources. Wilson Wolf opposed the stay, arguing that the patentability issues before the Federal Circuit differed from the contract, trade-secret, and inventorship issues remaining in this case. Wilson Wolf also argued that the case was ready for trial and that further delay would cause prejudice.

The court concluded that a stay was warranted. Although the issues in the two proceedings were not identical, the court found significant overlap and determined that the Federal Circuit’s decision could simplify the remaining case. The court concluded that any prejudice from delay would be minimal and outweighed by the possibility of avoiding unnecessary litigation expenses and proceedings.

Request for Immediate Appeal

Corning separately asked the court to certify the finality issue for an immediate appeal under 28 U.S.C. § 1292(b). That statute allows certification of certain nonfinal orders when they involve a controlling legal question, there is substantial disagreement about the question, and an immediate appeal could materially advance the case.

The court denied this request. It determined that, because the case was being stayed pending the Federal Circuit’s review, an immediate appeal of the finality issue would not advance the litigation and could become moot after the Federal Circuit issued its decision.

Disposition

The court granted in part and denied in part Corning’s motion. It granted the motion as to the stay and stayed the case pending the Federal Circuit’s review of the Patent Trial and Appeal Board’s judgment. It denied the motion as to certification for interlocutory review under 28 U.S.C. § 1292(b).