Informatics Applications Group, Inc. v. Shkolnikov
836 F. Supp. 2d 400
E.D. Va.2011Background
- TIAG sues former TIAG employee Shkolnikov and his company KEYnetik for misappropriating TIAG technology and disclosing it in patents and on KEYnetik’s site.
- Shkolnikov served TIAG as CTO and senior engineer; he signed independent contractor and employment agreements including an Assignment Agreement.
- Assignment Agreement classifies Company Developments and Proprietary Information as TIAG property; employee developments are excluded unless created in TIAG duties.
- TIAG filed U.S. Patent No. 7,002,553 ('553 Patent) during Shkolnikov’s TIAG employment; TIAG alleges Goeringer contributed to the technology but was omitted as inventor and later assigned to TIAG.
- KEYnetik was formed in 2005; subsequent patent applications list Shkolnikov as inventor and KEYnetik as assignee; TIAG alleges this violated the Employment and Assignment Agreements.
- TIAG asserts Counts I–VI (breach of contract, conversion, misappropriation of trade secrets, breach of fiduciary duty, and fraud) plus a Section 256 claim to correct inventorship of the '553 Patent.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether TIAG has standing to pursue a Section 256 correction | TIAG gained ownership interest via assignment after the Amended Complaint. | Assignment after filing defeats standing and would retroactively manufacture jurisdiction. | TIAG has standing; assignment after suit cures jurisdiction defects for amendment. |
| Whether TIAG states a plausible Section 256 claim despite terminal disclaimer | Section 256 can correct inventorship even if patent is unenforceable due to terminal disclaimer. | Terminal disclaimer renders the patent unenforceable and defeats a Section 256 claim. | Section 256 claim pleaded plausibly; does not require adjudicating patent validity. |
| Whether the breach of contract claim is timely as to the '553 Patent | Injury accrues when ownership issues arise; the assignment and disclosure may relate to later breaches. | '553 Patent' breach occurred no later than filing and is time-barred. | Untimely as to the '553 Patent. |
| Whether TIAG plausibly states breach of contract as to the '146 Patent and related applications | Those applications involve Company Developments developed during TIAG employment. | They are not clearly shown as Company Developments on the face of the documents. | Plaintiff pleads plausible breach of contract as to the '146 Patent and related applications. |
| Whether TIAG’s remaining claims (conversion, misappropriation, fiduciary duty, and fraud) are timely and pled adequately | TIAG timely alleged misappropriation and related torts arising from later patent activity. | Some claims are time-barred or inadequately pled under Rule 9(b) and contract construction. | Conversion timely for '146/'669/'949/'606 applications; misappropriation timely for several patents; fraud timely for some but untimely for '553 and related items; fiduciary duty timely as to the '606 Patent; venue as to KEYnetik addressed. |
Key Cases Cited
- Chou v. Univ. of Chicago, 254 F.3d 1347 (Fed.Cir. 2001) (standing requirements for Section 256 claims)
- Franks Casing Crew and Rental Tools, Inc. v. PMR Technologies., Ltd., 292 F.3d 1363 (Fed.Cir. 2002) (correction of inventorship may occur on unenforceable patents; jurisdictional concerns)
- Oregon Health & Science Univ. v. Vertex Pharms., Inc., 233 F.Supp.2d 1282 (D. Or. 2002) (Section 256 standing and patent-related relief considerations)
- Hunter v. Custom Bus. Graphics, 635 F.Supp.2d 420 (E.D. Va. 2009) (statute of limitations and continuing breaches; misappropriation context)
- Raybestos-Manhattan, Inc. v. Rowland, 460 F.2d 697 (4th Cir. 1972) (trade secrets and reasonable secrecy measures)
- MicroStrategy, Inc. v. Biz. Objects, S.A., 331 F.Supp.2d 396 (E.D. Va. 2004) (elements of trade secret misappropriation under VUTSA)
- United Leasing Corp. v. Thrift Ins. Corp., 247 Va. 299 (Va. 1994) (broad interpretation of conversion and property rights in VA)
- Ortho Pharm. Corp. v. Smith, 959 F.2d 936 (Fed.Cir. 1992) (patent-related double-patenting and terminal disclaimer implications)
- Guthrie v. Flanagan, 2007 WL 4355320 (E.D. Va. 2007) (discussed continuing breach doctrine limitations)
- Dixon v. Chou, n/a (n/a) (cited for standing and Article III considerations)