Nichols Institute Diagnostics, Inc. v. Scantibodies Clinical Laboratory, Inc.

ORDER DENYING AS MOOT DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT PURSUANT TO 35 U.S.C. § 102 (f) FOR NONJOINDER OF CO-INVENTOR, DENYING REQUEST FOR STAY, AND ORDERING PLAINTIFF TO FILE AMENDED COMPLAINT

I. INTRODUCTION

Before the Court is Defendants’ Motion for Summary Judgment for Non-Joinder of Co-Inventor pursuant to 35 U.S.C. § 102 (f), which came on for hearing before the Court on August 26, 2002. For the reasons below, the Court denies Defendants’ motion and orders Plaintiff to file an amended complaint.

II. BACKGROUND

Nichols Institute Diagnostics, Inc. (“Nichols”) is the sole licensee of U.S. Patent No. 6,030,790 (“the ’790 Patent”). In its complaint, Nichols states a single claim for infringement of the ’790 Patent against Scantibodies Clinical Laboratory, Inc. and Scantibodies Laboratory, Inc. (“Scantibod-ies” or “Defendants”).

The subject matter of the ’790 Patent was also the subject matter of international patent application number WO 96/10041 (“the international application”), which was filed under the Patent Cooperation Treaty (“PCT”). The PCT provides a procedure for filing a patent application on the international level so that subsequent applications in…