EXPERT MICROSYSTEMS, INC. v. University of Chicago

MEMORANDUM AND ORDER RE: MOTION FOR SUMMARY JUDGMENT

Plaintiff Expert Microsystems (“EM”) brought this action against defendants the University of Chicago (“UC”) and ARCH Development Corporation (“ARCH”) for correction of inventorship, 35 U.S.C. § 256 , and ownership of United States Patents Numbers 5,987,399 (“'399 patent”) and 6,202,038 (“'038 patent”). Defendants now move for summary judgment pursuant to Federal Rule of Civil Procedure 56(c).

I. Factual and Procedural Background

Plaintiff EM is a small California corporation that provides systems for monitoring assets and equipment as well as related consulting services. (First Am. Compl. (“FAC”) ¶ 1.) EM is the successor entity to ExperTech — a sole proprietorship of current EM President Randall L. Bickford — which was part of a joint venture created to obtain prime contracts with NASA. (Id. ¶ 25.) From 1995 through 1996, as part of the process of preparing the proposal for the NASA contract, Bickford allegedly disclosed proprietary information to UC employees Stephan W. Wegerieh and Kenneth C. Gross concerning Bickford’s concept for a method of performing a regression sequential possibility ratio testing (“regression…