Docket No. 2018-1028
PROST, WALLACH, HUGHES
February 22, 2019
Brief summary: DC dismissal of Coda’s complaint seeking correction of inventorship (§ 256) of several Goodyear patents and applications, and trade secret misappropriation claims as time barred, was vacated and remanded.
Summary: Coda appealed DC dismissal of its complaint seeking correction of inventorship (§ 256) of several Goodyear patents alleging “that Goodyear misappropriated Coda’s trade secrets.” Coda alleged in 2008 General Motors (“GM”) “wrote to Goodyear suggesting that it contact Coda” about Coda’s self-inflating tire (“SIT”) technology. Before Goodyear and Coda first met in Jan. 2009, the parties “executed a nondisclosure agreement restricting use of disclosed information to cooperation” in developing the technology. The parties then met again in June 2009, where Goodyear’s representative Mr. Benedict (who was also present at the Germany meeting) “requested that he and his team be allowed to spend some time alone with the prototype, during which he photographed it without permission.” Goodyear (Mr. Benedict) then went “silent” until Dec. 2009 when another Goodyear employee contacted Coda about the technology, stating that Mr. Benedict was asked at a meeting “if we have looked into this with SIT Coda” and his “response was oddly vague”. Goodyear also filed its own patent application in Dec. 2009 which issued as US 8,042,586 on Oct. 11, 2011 (first published as an application in June 2011), naming Mr. Benedict and one other Goodyear employee as inventors. In 2015, Coda moved to add Mr. Hrabal as an inventor and remove Goodyear’s inventors, which was denied by the DC because Coda’s original complaint “did not plausibly show that Mr. Hrabal was the sole inventor…or that he ‘contributed in any way, much less a novel way’”. The DC also dismissed Coda’s “trade secret-misappropriation claim as time-barred under Ohio’s four-year statute of limitations” since, e.g., “the subsequent silence from Goodyear, and the independent contact from a Goodyear employee concerning Goodyear’s internal meeting-‘should have been sufficient notice to plaintiffs that something might have been amiss’” and Coda should have known of the June 2011 publication date. The FC panel opinion also explains that Coda requested permission to file an amended complaint alleging additional inventorship details (e.g., “the specific location of the tire’s pump tube and how that location differed from the prior art”, according to the DC “with amazing clarity”), which was denied by the DC. The FC panel explained that inventorship errors under § 256 include misjoinder and nonjoinder that, through these, “complete substitution of inventors” is possible. The FC panel found Coda’s correction of inventorship claims “plausible” (“Plaintiffs need only ‘nudge[] their claims across the line from conceivable to plausible’” (Twombly, US 2007); “a contribution to one claim is enough” (Ethicon, FC 1998)), and that the DC should have “convert[ed the] motion into one for summary judgment…giving [Coda] a reasonable opportunity to present all pertinent material.” The FC panel also found that the DC erred in dismissing Coda’s trade secret claims because the DC was focused on “the merits of [Goodyear’s] statute-of-limitations defense” rather than “the complaint’s sufficiency”. The FC panel also found the DC should have entered Coda’s amended complaint.
Federal Circuit summaries 