Polyzen, Inc. v. Radiadyne, LLC
5:11-cv-00662
| E.D.N.C. | Feb 18, 2015Background
- Polyzen and RadiaDyne began collaborating in 2007 to design and commercialize a rectal medical balloon; parties executed a 2008 Development & Commercialization Agreement (2008 DCA) allocating IP rights.
- Polyzen filed provisional and later utility patent applications; U.S. Patent No. 7,976,497 issued to Polyzen (inventors listed as Polyzen employees) claiming a multi-layer medical balloon device.
- The 2008 DCA defined and assigned the "RadiaDyne Product" as the "specific design of rectal balloon catheter" (incorporating Polyzen's Balloon Process Technology) to RadiaDyne; Device Process Technology and certain process/material specifications were assigned to Polyzen.
- RadiaDyne forwarded several Polyzen documents (design drawings/specs) to a third-party manufacturer (Dielectrics); some documents contained both design drawings and material/thickness specifications (Note 1 on DIE 279).
- RadiaDyne sued for breach of the 2008 DCA and counterclaims; court consolidated related suits and addressed cross motions for partial summary judgment on breach and trade-secret misappropriation.
Issues
| Issue | Plaintiff's Argument (Polyzen) | Defendant's Argument (RadiaDyne) | Held |
|---|---|---|---|
| Whether Polyzen's ownership/assignment of the '497 patent breached the 2008 DCA | Polyzen: filing/obtaining the patent did not breach; patent is Polyzen's IP | RadiaDyne: the '497 patent claims the "specific design" assigned to RadiaDyne, so Polyzen's claiming/assignment to itself breached | Court: Breach. The '497 claims are product-design claims falling within RadiaDyne Product; Polyzen's assignment to itself breached the DCA; summary judgment for RadiaDyne on breach of contract |
| Whether filing a patent alone constitutes ownership breach | Polyzen: mere filing doesn't equal ownership or breach | RadiaDyne: assignment/record ownership matters; Polyzen recorded itself as assignee | Court: Filing alone is not dispositive, but Polyzen's record assignment of the patent to itself (as assignee) breached the agreement |
| Whether paragraph 6.d of the DCA limits RadiaDyne to a mere license rather than ownership | Polyzen: 6.d creates only an exclusive/nonexclusive license framework, not transfer of ownership | RadiaDyne: 6.d allows licensing for third-party manufacturing but does not negate the DCA's express assignment of RadiaDyne Product ownership to RadiaDyne | Court: 6.d does not override the DCA's plain assignment of ownership to RadiaDyne; paragraph 6.d governs licensing for third-party manufacture and is inapplicable here |
| Whether documents sent to Dielectrics (DIE 119, 276, 277, 279) support trade-secret misappropriation | Polyzen: the documents (including DIE 279 Note 1) include confidential material/process specs and are trade secrets; RadiaDyne misappropriated them by disclosure | RadiaDyne: most documents depicted RadiaDyne-owned product design, so no misappropriation; DIE 279 lacks proof of commercial value as a trade secret | Court: Partial. Summary judgment for RadiaDyne as to DIE 119, 276, 277 (RadiaDyne-owned design so no misappropriation). DIE 279 (Note 1 material/thickness/specs) raises genuine fact issues as to whether those specs are Polyzen trade secrets; claim survives summary judgment |
Key Cases Cited
- Celotex Corp. v. Catrett, 477 U.S. 317 (summary judgment burdens and standards)
- Markman v. Westview Instruments, Inc., 517 U.S. 370 (claim construction principle: claims define patent scope)
- Phillips v. AWH Corp., 415 F.3d 1303 (claim construction and claim-scope analysis)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (look to claim language to define invention)
- Minco, Inc. v. Combustion Eng'g, Inc., 95 F.3d 1109 (assignment transfers patent title)
- Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245 (product vs. process patents distinction)