Expert on Dispute over Inventorship Permitted to Rely on Section 102(f) to Establish Purported Inventor Did Not Make Significant Contribution to the Invention

May 23, 2012

In this dispute over inventorship of a patent, Affymetrix ("Affymetrix") and Gregory Kirk ("Mr. Kirk") sought to correct U.S. Patent Nos. 7,510,481 and 7,612,020 to add Mr. Kirk as one of the inventors on the patents. The patents are directed to a method and an apparatus for conducting genetic testing using microarrays and are assigned to the defendant, Illumina, Inc. ("Illumina"). The plaintiffs contended that Mr. Kirk is a joint inventor because of certain information he disclosed in an email to one of the named inventors several months before the first patent application was filed.

The plaintiffs filed a motion in limine to preclude Illumina's expert from testifying at trial on the ground that his opinions were neither relevant nor helpful. In its motion, the plaintiffs divided Illumina's expert report into three parts: (1) an opinion that Mr. Kirk did not contribute a "complete and operative invention"; (2) an opinion on Mr. Kirk's contribution to "decoding"; and (3) an opinion on the "organization and structure" of Mr. Kirk's emails.

The district court addressed each part of the opinion. On the first opinion, the plaintiffs asserted that the expert was relying on the standard for an invalidity defense pursuant to 35 U.S.C. § 102(f), which was not an issue in the case. In response, Illumina acknowledged that the standard for invalidity was not appropriate and that plaintiffs did not need to prove that Mr. Kirk conceived of a "complete and operative invention." The district court concluded: "Although defendant concedes that Mrksich [defendant's expert] cannot give an ultimate opinion regarding § 102(f), it argues that Mrksich's opinions regarding the deficiencies of Kirk's email are also relevant to showing that Kirk did not make a significant contribution to the invention, as required by § 256. I agree. Both statutes require a determination of inventorship, though § 102(f) may include additional elements. Plaintiff Affymetrix acknowledged the similarity of the standards throughout the proceedings in Illumina, Inc. v. Affymetrix, Inc., Case Nos. 09 Case Nos. 09-cv-277-bbc and 09-cv-655-bbc (W.D. Wis.), and sometimes treated the two as essentially interchangeable. E.g., Case No. 09-cv-277-bbc, dkt. #217. Thus, I see no prejudice to plaintiffs if Mrksich is permitted to testify regarding the significance of Kirk's contribution in the email, so long as Mrksich limits his specific criticisms to those included in his expert report. Of course, plaintiffs are free to show on cross examination or with their own evidence that Mrksich's criticisms lack merit."

With respect to the "decoding" issue, plaintiffs argued that it was irrelevant because they were not claiming that Mr. Kirk contributed any ideas regarding decoding. Illumina asserted in response that the issue was critical to understanding Mr. Kirk's intellectual abilities in the field and that the expert should be able to testify that Mr. Kirk's ideas on decoding were different than Illumina's and would not even work. The district court concluded: "Because plaintiffs are not claiming that Kirk contributed a "decoding" idea to the claimed inventions, I see little relevance to Mrksich's proposed testimony. Defendant seems to want to show that Kirk's ideas about decoding are so bad that it calls into question his claim about other aspects of the invention, but defendant has not shown that the ideas are so closely related that the unsoundness of one idea means that the others are unsound as well. Accordingly, I conclude that any relevance of this testimony is substantially outweighed by the danger of unfair, prejudice, confusion of the issues, and waste of time. Fed. R. Evid. 403."

Finally, turning to the "organization and structure" issue, the district court found that Illumina did not respond to the issue and therefore granted the motion to exclude this testimony on the basis that it was not opposed.

Affymetrix, Inc v. Illumina, Inc., Case No. 11-cv-184-bbc (W.D. Wisc. May 9, 2012)

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