Minnesota Patent Litigation Wrap-Up — June 2020

Co-Authored by: Ryan Petty, Ph.D.

This post continues our monthly summary of substantive orders in patent litigation in the District of Minnesota.

Wilson v. Corning Inc., 13-210 (DWF/TNL), 2020 U.S. Dist. LEXIS 105942 (D. Minn. Jun 17, 2020)

Plaintiff Wilson asserted claims against defendant Corning for breach of contract, trade secret misappropriation, and correction of inventorship on two of Corning's provisional patent applications stemming from a previous confidential disclosure agreement ("CDA") between the parties on the development of cell culture devices. In an interference proceeding at the Patent Trial and Appeal Board ("PTAB"), the Board held that claims of Wilson's Patent No. 8,809,044 were invalid as anticipated and obvious in view of prior art, a judgment upheld by the Federal Circuit. Corning then brought a renewed motion for summary judgment, alleging that the prior art identified by the PTAB were evidence that the information was public knowledge, and thus Wilson's claims were collaterally estopped.

Judge Frank held that even if estoppel applied, there were numerous issues of material fact that precluded summary judgment. He began by noting that the PTAB's decision does not address whether the information, including that in the specification, of the now-invalid '044 patent qualified as confidential information under the CDA. Moreover, the definition of confidential information under the CDA was not limited to patentable information. And even then, the CDA contained a notification provision which Corning allegedly breached that stands completely independent of the information disclosed in the prior art.

Judge Frank then turned to the trade secret misappropriation claim, noting Minnesota's trade secret law requires that information be "not generally known" to qualify as a trade secret. Whether information was disclosed as prior art, he explained, does not necessarily mean the information was "generally known" under Minnesota law.

Finally, on correction of inventorship for Corning's two provisional applications, Judge Frank held that there were numerous factual disputes on conception and the precise information disclosed. None of these were decided by, or even before, the PTAB. Thus, Judge Frank denied Corning's renewed motion for summary judgment on all claims.

Willis Elec. Co. v. Polygroup Macau Ltd., 15-cv-3443 (WMW/KMM), 2020 U.S. Dist. LEXIS 107874 (D. Minn. June 19, 2020)

Plaintiff Willis Electric Co. ("Willis") moved to compel depositions of defendants' witnesses who reside in Hong Kong or China—to occur in the United States, which Magistrate Judge Menendez denied. Willis then appealed to Judge Wright who affirmed the magistrate judge's ruling. Judge Wright noted that the magistrate judge addressed the potential impact of COVID-19—at which time the severity and scope was yet to be realized. She emphasized the general rule that a deposition of a corporation through its officers should occur at the corporation's principal place of business, which here included Hong Kong. Willis argued that the magistrate judge legally erred by considering the locations of the parties and not the counsel. But Judge Wright rejected this, noting that a party's location is relevant to determining where a deposition should occur as evidenced by, for example, Federal Rule of Civil Procedure Rule 45(c)(1). Ultimately, at the time of the magistrate judge's ruling, travel from the United States to Hong Kong and vice versa appeared equally impacted by COVID-19, and thus the ruling was neither clearly erroneous nor contrary to law.

Authors: Ryan Petty & Joseph Herriges