Wilson v. Corning, Inc.

Background

John R. Wilson and Wilson Wolf Manufacturing Corp. asserted claims against Corning Incorporated for breach of contract, trade-secret misappropriation, and correction of inventorship. Wilson was identified as Wilson Wolf’s founder and chief executive officer, and Wilson Wolf was described as a biotechnology firm that develops and manufactures cell-culture devices. Plaintiffs alleged that they shared confidential information and prototypes with Corning under a January 2004 Confidential Disclosure Agreement and that Corning later used their technology in developing the HYPERFlask and HYPERStack products.

The dispute involved several patent and provisional applications, including Wilson Wolf’s ’651 and ’814 applications, as well as Wilson’s ’044 Patent. In a 2017 proceeding, the Patent Trial and Appeal Board found that claims 1 through 45 of the ’044 Patent were anticipated by an earlier patent or would have been obvious based on that patent and a book. The Board then cancelled all claims of the ’044 Patent. The Federal Circuit rejected Wilson Wolf’s appeal, making the Board’s decision final.

Corning filed a renewed motion for summary judgment based on that final Board judgment. Corning argued that the invalidated patent claims involved the same concepts that Plaintiffs alleged were confidential information, trade secrets, and the basis for Wilson’s inventorship claims. Plaintiffs argued that the patent decision addressed patent-law questions, not whether information was confidential under the agreement, protected as a trade secret under Minnesota law, or sufficient to establish inventorship.

Issue preclusion

Issue preclusion is a rule that can prevent parties from relitigating an issue already decided in a valid and final judgment. The court explained that the analysis generally considers whether the parties were the same or legally connected, whether the issue is the same, whether it was actually litigated, whether a valid and final judgment decided it, and whether the determination was necessary to that judgment. The parties agreed that three of those requirements were satisfied, but disputed whether the issues were the same and whether they had actually been litigated before the Board.

The court did not decide whether issue preclusion applied. Instead, it assumed for purposes of the motion that it might apply and held that numerous material factual disputes still prevented summary judgment.

Breach of contract

The Confidential Disclosure Agreement defined confidential information as information relating to the sale, invention, and development of cell-culture devices and processes, including related expertise. It required the receiving party to limit disclosure, protect the information, and avoid using it outside the agreement’s stated purposes. The agreement also addressed publicly available information and required advance written notice before relying on that exception.

The court held that the Board’s decision did not establish that the information in the invalidated ’044 Patent could not qualify as confidential information under the agreement. The agreement did not require information to be patented or patentable. The court also found factual disputes about whether the information in the ’044 Patent was the same as the information disclosed in the ’651 Provisional Application and the ’814 Patent Application, whether Corning breached the agreement by failing to give required notice, and whether Corning’s alleged use of the information contributed to the development of the HYPERFlask and HYPERStack products. The court therefore denied summary judgment on the breach-of-contract claim.

Trade-secret misappropriation

Under Minnesota’s Trade Secrets Act, a plaintiff seeking trade-secret protection must show that the information was not generally known or readily ascertainable, had independent economic value because it was secret, and was subject to reasonable efforts to maintain its secrecy.

The court found factual disputes about whether the alleged trade secrets and combinations were identical to information in the invalidated ’044 Patent. It also found disputes about whether the Board’s findings that certain patent claims were anticipated or obvious established that the information was generally known under Minnesota trade-secret law. Because those issues were not decided by the Board, the court denied summary judgment on the trade-secret misappropriation claim.

Correction of inventorship

Correction of inventorship concerns whether the listed inventors on a patent accurately include everyone who contributed to the invention’s conception. The court explained that a person claiming to be an omitted inventor must prove the contribution by clear and convincing evidence, supported by corroborating evidence. A joint inventor may contribute a different type or amount of work, but merely explaining known principles or the state of the art is not enough.

The court found factual disputes about whether the information in the ’044 Patent was the same as information in the ’651 Provisional Application and the ’814 Patent Application, whether the information disclosed in those applications was inventive, and whether information Plaintiffs disclosed to Corning contributed to Corning’s patents. The court therefore denied summary judgment on the correction-of-inventorship claim.

Disposition

The court denied Corning’s Renewed Motion for Summary Judgment Based on Final Intervening Patent Trial and Appeal Board Judgment. The order did not determine whether Plaintiffs ultimately would prevail on their contract, trade-secret, or inventorship claims; it ruled that the identified factual disputes prevented judgment as a matter of law at that stage.