Opinion
No. 1:19-cv-366-JPM No. 1:19-cv-368-JPM
01-07-2021
EDWARD BUIEL CONSULTING, LLC, D/B/A COULOMETRICS, LLC, and EDWARD BUIEL, Plaintiffs, v. ADRIAN YAO, and ENPOWER, INC., Defendants.
FILED UNDER SEAL - SUBJECT TO PROTECTIVE ORDER
FILED UNDER SEAL
ORDER GRANTING IN PART AND DENYING IN PART DEFENDANTS' MOTION FOR SUMMARY JUDGMENT
ORDER DENYING AS MOOT DEFENDANTS' MOTION TO BIFURCATE AND TO HOLD BENCH TRIAL ON INVENTORSHIP
Before the Court is the Motion for Summary Judgment filed by Defendants Adrian Yao and Enpower, Inc. ("Defendants"). (ECF No. 90.) Also before the Court is Defendants' Motion to Bifurcate and to Hold Bench Trial on Inventorship. (ECF No. 180.) For the reasons stated below, Defendants motion for summary judgment is DENIED-IN-PART and GRANTED-IN-PART. Additionally, Defendants motion to bifurcate is DENIED AS MOOT.
I. BACKGROUND
A. Procedural Background
Plaintiffs filed their Second Amended Complaint on December 20, 2019, alleging that Defendants misappropriated Plaintiffs' trade secrets and utilized these trade secrets to file patent applications that resulted in U.S. Patent Nos. 10,038,193 ("'193 Patent") and 10,069,145 ("'145 Patent") (collectively, "Patents at Issue"). (ECF No. 1-1.) In addition to injunctive and monetary relief, Plaintiffs request that Dr. Edward Buiel ("Dr. Buiel") be added as a named inventor to the Patents at Issue. (Id.) Trial was originally scheduled for June 29, 2021 (ECF No. 15) before being reset to October 19, 2020 (ECF No. 51), then continued to January 11, 2021 (ECF No. 140) and then to a date to be determined (ECF No. 192) in accordance with the Eastern District's administrative orders and guidance in relation to the COVID-19 pandemic. On July 31, 2020, Defendants filed a motion for summary judgment on the issues of trade secret misappropriation and inventorship. (ECF No. 90.) Plaintiffs filed their response in opposition to this motion on August 21, 2020. (ECF No. 112.) Defendants filed their reply to Plaintiffs' response on August 28, 2020. (ECF No. 120.) Defendants also filed a motion to bifurcate and to hold bench trial on the issue of inventorship on December 16, 2020. (ECF No. 180.) Plaintiffs filed a response in opposition to this motion on December 30, 2020. (ECF No. 198.) The Court heard arguments on the pending motions on December 21, 2020. (ECF No. 192.)
B. Factual Background
1) Timeline of Events
Defendant Adrian Yao ("Yao") is a materials science engineer who founded Big Delta Systems, Inc. ("BDS") in 2014, which developed chemistry-agnostic technologies for manufacturing lithium-ion battery electrodes and cells. (ECF No. 94 at PageID 4024.) Defendants develop these batteries with the goal of having increased energy and power densities at reduced costs. (ECF No. 98-9 ¶ 3.) Defendants received recognition and investment as early as September 2014 for some of their work done in this field. (Id. ¶ 5-7.) According to Yao, Defendants' intellectual property strategy in 2015 was to "regularly file provisional patent applications, obtain a freedom to operate analysis, convert provisional applications filed on promising innovations to non-provisional applications, and ultimately generate revenue through IP licensing." (Id. ¶ 8.) In 2015, Defendants filed a provisional patent application entitled "Slow Die Co-Extrusion Apparatus and Electrode with Three Dimensional Current Collectors" ("2015 Application"). (ECF Nos. 64-1, 64-2.) The 2015 Application recited that "[c]o-extruding multiple layers of different compositions can be beneficial for achieving advanced electrode architectures for energy storage and energy conversion devices as well as achieving a multi-layered device [sic] such as batters and supercapacitors." (ECF No. 64-1 at PageID 2024.) The 2015 Application also notes alternative embodiments in which "complex electrode structures [can] be manufactured in a single-step coating process wherein multiple materials can be co-extruded within the same electrode coating." (Id. at PageID 2026.)
Big Delta Systems is now known as EnPower, Inc.
In 2015, Defendants received a Defense Logistics Agency ("DLA") Small Business Innovation Research ("SBIR") Phase I grant for "Development of Multi-Layer Electrode Platform for high performance Li-ion batteries using low-cost manufacturing process." (ECF No. 98-9 ¶ 22.) In November 2015, Defendants engaged Iontensity—a prototyping lab for toll-coating and lithium-ion cells—for their services. (ECF Nos. 95-4, 95-5; 120-1 at PageID 10723.) On November 24, 2015, Dr. Buiel and one of his colleagues attended a training on slurry preparation at Iontensity. (ECF No. 95-5 at PageID 4644.) In December 2015, Defendants filed an National Science Foundation ("NSF") SBIR Phase I grant application entitled "Development of Multi-Layer Electrode Platform for high performance Li-ion batteries using low-cost manufacturing process." (ECF No. 98-9 ¶ 22.) Following funding of the Phase I grant, Defendants continued development work and prototyping before eventually filing an NSF SBIR Phase II grant application on February 27, 2017. (Id. ¶¶ 23-29.) The focus of Defendants' work at the time was towards "producing large scale cell prototypes to demonstrate [the value of the multilayered advanced electrode technology] empirically while also scaling up [their] proprietary manufacturing process to a level of scale and maturity that will be necessary to make BDS's value proposition adoptable from the standpoint of economics and performance[.]" (ECF No. 69-5 at PageID 2622.) With respect to multilayer slot-die coating, the Phase II application recognizes that such a coating would be possible, but perhaps not feasible:
Note that Defendants have provided a Bates # citation (AY076405), but do not appear to have docketed the NSF SBIR Phase I Grant Application. It is similarly not identified in Defendants' Response to Order Directing Parties to Identify Filings and Exhibits.
Advanced electrode architectures such as those featuring functional gradients have been hypothesized and modeled in the early 2000s to show improved power performance at increased energy densities, addressing the fundamental power versus energy tradeoff that plagues all batteries alike [footnotes deleted]. Despite the desire to manufacture graded electrodes, there is currently still no feasible manufacturing process to produce such coatings. Some research facilities are and have attempted multilayer slot-die manufacturing, [footnote deleted] such as the process used in some x-ray film manufacturing, but this technique is highly dependent on utilizing different solvents between layers, and tuning solvents properties to not mix with one-another after casting. Given that N-methyl-2-pyrrolidone (NMP) is the primary solvent and one of the few solvents capable of dissolving the most commonly used polyvinylidene fluoride (PVdF) polymer binder) used on the cathode side, such solvent tailoring is not a practical approach to receive mass adoption and manufacturing. Additionally, if an intermediate calendaring step is desired to achieve porosity engineering, it would be impossible with such multilayered slot-die coating processes.(ECF No. 69-5 at PageID 2622 (emphasis added) (footnotes omitted).) By this time however, Defendants were already using slurries with various viscosities. (ECF No. 120-1 ¶ 48.)
In early 2017, Dr. Neelam Singh reached out to Dr. Buiel on behalf of Defendants for assistance with a coating run. (ECF No. 113-1 at PageID 9620.) Plaintiffs responded with a quote of $3,850 for "[c]oating development work using Frontier Dynacoat pilot line slot-die coating system." (Id. at PageID 9622.) On February 9, 2017, the parties signed a Non-Disclosure Agreement ("NDA"). (ECF No. 113-6.) Yao then reached out again on February 24, 2017, expressing interest in hearing Dr. Buiel's thoughts and continuing to work together. (ECF No. 113-7 at PagID 9631.) After apparently not hearing back, Yao reached out to Dr. Buiel on March 3, 2017, stating that he was "very interested in establishing a consulting relationship with [him] and BDS." (ECF No. 113-7 at PageID 9632.) As part of his introductory email to Annette Finsterbusch, a corporate executive at BDS, Yao emphasized Dr. Buiel's expertise:
"Ed has a deep expertise in cell assembly, especially with 18650-type cylindrical cells, and has (very resourcefully) built out a battery manufacturing facility with smart investments in good equipment. Consulting is his primary business model, but Coulometrics is growing to the capability of significant manufacturing output. We believe his cell and formulations expertise would really help us towards our performance milestones."(ECF No. 113-7 at PageID 9632 (emphasis added).)
After the conception of this relationship, Plaintiffs regularly produced electrodes for Defendants. (See ECF No. 94-3.) Defendants paid Plaintiffs $18,500 per month in 2017 and $19,500 per month in 2018 for these services. (ECF No. 98-9 ¶ 81.) In March of 2017, Plaintiffs contend that Defendants were "focused on promoting their 'spray-on' electrode coating system to make multilayered electrodes for high-energy, high-power batteries—a system that Defendants had been trying to develop since 2015—as shown in the proposal for an NSF award Defendants submitted on February 27, 2017." (ECF No. 112 at PageID 9223.) Plaintiffs argue that "trade secret information shared with Yao included Plaintiffs' specific configuration for the shims and slot dies, the chamfered edges, the specific slurry formulations, the precise slurry mixing instructions, the necessary viscosities to create the large, high surface-area intermediate interface between the layers (the interpenetrating interphase layer), and the combination of hard carbon, graphite, and other electrode components to yield the desired specific batter performance." (Id. at PageID 9227.)
Email traffic between Yao and Dr. Buiel in late March and early April of 2017 show discussion of some of Dr. Buiel's suggestions and edits to Plaintiffs' planned coating runs that eventually led to a phone call discussion. (ECF No. 113-11.) Yao reached out again on April 5 to set up a phone call to "get [his] thoughts on [their] technology approach" and "get [his] feedback." (ECF No. 113-12 at PageID 9786.) Around this time, Dr. Buiel learned that Defendants were trying to produce multilayer electrodes, and suggested that they try multi-cavity slot-die coating at Frontier Industrial Technology ("Frontier"). (ECF Nos. 66-3 at PageID 2157; 94 at PageID 4026; 113-13.) On April 11, 2017, Dr. Buiel received an email from Rajesh Mehta from the National Science Foundation regarding reviews of Defendants' Phase II grant proposal. (ECF No. 113-14.) Dr. Buiel describes his understanding of Defendants' proposal and what he views as a conflict of interest:
What is good about their proposal?
1 - I think multilayer electrodes with different compositions of materials could be a good idea if they could control, for example:
1. Where Silicon is located in an anode electrode could be very important
2. The porosity of the electrode and how this could affect battery life
3. Composition of carbon black (more closer to electrode, less outside)
4. Adding layer on outside to cathode
5. etc.
(ECF No. 113-14 at PageID 9791-9792 (emphasis added).)
In order to make this work, they need to make real cells, high quality cells, and do state-of-the-art testing. I told them about what I think they should do and I think they listened very closely and do want to follow some of these ideas. I think it could lead to valuable technology but now I feel more conflicted then [sic] ever. Especially once I heard how much they intend to include us in their plans (build cells, complete testing, provide guidance).
Based on all of this, I don't think I should complete a review because if they do get an award, and decide to use us as they mentioned on the call, this would be an obvious conflict of interest. I also think the proposal, as written, is not worthy of support but they could be on the right track and maybe this should be another proposal. I'm not sure. Just feeling that I should not be too involved because of the level of involvement they are expecting from us which is now much more apparent after the call.
Following a call on April 11, 2017 between Dr. Buiel and Yao, Dr. Buiel introduced Yao to his contact at Frontier Industrial, noting that "Adrian [is] interested in coating two layers at the same time." (ECF No. 113-13 at PageID 9788.) Frontier offers a service where customers can pay for coatings on a coating line using a multi-cavity slot-die. (ECF No. 120-1 ¶ 49.) Plaintiffs did not have a non-disclosure agreement with Frontier and Dr. Buiel's introductory email was not subject to any non-disclosure agreement. (Id. ¶¶ 50-51.)
Defendants paid $8,000 for coatings of multi-layer electrodes at Frontier in May and June of 2017. (Id. ¶ 52.) Yao mixed slurries coated at Frontier using materials sourced by Defendants and shipped directly to Frontier's facility. (Id. ¶ 53.) Scott Zweirlein, a Frontier employee, recommended to Defendants the use of a slurry viscosity of 2000-6000 cP for a dual-layer coating. (Id. ¶ 54.) Defendants kept Dr. Buiel in the loop regarding their coating runs at Frontier's facilities and reached out regarding a formal contract agreement to have Plaintiffs build cathodes (See, "May 10, 2017 Email from Yao to Dr. Buiel", ECF No. 113-18 at PageID 9809 ("This way we can use our existing capabilities to quickly iterate multilayer anode designs, scale up these coatings to roll format using Frontier, and then assemble them into cells with matching cathodes built by you.").) Using slurries with viscosities below those claimed as part of the fourth trade secret identified by Plaintiffs, Defendants successfully performed multilayer anode coating at Frontier on June 1-3. (ECF No. 120-1 ¶ 56.) Defendants rented necessary equipment, such as a multi-cavity slot-die and slurry pump cart, from Frontier at a rate of $5000/rental, in order to run multi-layer slot-die coatings performed at Plaintiffs' facilities. (Id. ¶ 59-61.) They also purchased a V-block needed to mount the multi-cavity slot-die on the coating line because Plaintiffs did not have it at the time. (ECF No.112 at PageID 9229.) On July 28, 2017, Defendants filed the patent application that ultimately issued as the '193 Patent. (ECF No. 94 at PageID 4027.) Defendants also filed a continuation application on April 24, 2018 for what ultimately issued as the '145 Patent. (Id.)
2) Identification of Trade Secrets
Plaintiffs identify five "precise and quantifiable" trade secrets. (ECF No. 116 ¶ 1.) The first trade secret consists of specific die shim designs having a specific chamfer ("TS #1"). (Id. ¶ 2.) The second and third trade secrets ("TS #2" and "TS #3", respectively) consist of the combination of one of two specific anode or cathode slurry formulations with certain mixing procedures. (Id. ¶¶ 3,5; ECF No. 56 at PageID 1775.) TS #s 2 and 3 require a specific active material, specific conductive carbon, and specific binder. (ECF No. 116 ¶¶ 4, 6.) The fourth trade secret consists of a multi-layer electrode with a specific interphase layer produced using a multi-cavity slot-die and a specific range of electrode slurry viscosities ("TS #4"). (Id. ¶ 7.) The fifth trade secret consists of the use of a combination of hard carbon and graphite as the active materials in an electrode slurry ("TS #5"). (Id. ¶ 8.) Plaintiffs also contend that the Court should consider these trade secrets collectively as a process. (ECF No. 112 at PageID 9234.)
II. LEGAL STANDARD
A. Summary Judgment
A party is entitled to summary judgment "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). "A fact is 'material' for purposes of summary judgment if proof of that fact would establish or refute an essential element of the cause of action or defense." Bruederle v. Louisville Metro Gov't, 687 F.3d 771, 776 (6th Cir. 2012).
"In considering a motion for summary judgment, [the] court construes all reasonable inferences in favor of the non-moving party." Robertson v. Lucas, 753 F.3d 606, 614 (6th Cir. 2014) (citing Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986)). "The moving party bears the initial burden of demonstrating the absence of any genuine issue of material fact." Mosholder v. Barnhardt, 679 F.3d 443, 448 (6th Cir. 2012) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986)). "Once the moving party satisfies its initial burden, the burden shifts to the nonmoving party to set forth specific facts showing a triable issue of material fact." Mosholder, 679 F.3d at 448-49; see also Fed. R. Civ. P. 56(e); Matsushita, 475 U.S. at 587. "When the non-moving party fails to make a sufficient showing of an essential element of his case on which he bears the burden of proof, the moving parties are entitled to judgment as a matter of law and summary judgment is proper." Martinez v. Cracker Barrel Old Country Store, Inc., 703 F.3d 911, 914 (6th Cir. 2013) (quoting Chapman v. UAW Local 1005, 670 F.3d 677, 680 (6th Cir. 2012) (en banc)) (internal quotation marks omitted).
In order to "show that a fact is, or is not, genuinely disputed," a party must do so by "citing to particular parts of materials in the record," "showing that the materials cited do not establish the absence or presence of a genuine dispute," or showing "that an adverse party cannot produce admissible evidence to support the fact." L.R. 56.1(b)(3); Bruederle, 687 F.3d at 776 (alterations in original) (quoting Fed. R. Civ. P. 56(c)(1)); see also Mosholder, 679 F.3d at 448 ("To support its motion, the moving party may show 'that there is an absence of evidence to support the nonmoving party's case.'" (quoting Celotex, 477 U.S. at 325)). "Credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge[.]" Martinez, 703 F.3d at 914 (alteration in original) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986)). "The court need consider only the cited materials, but it may consider other materials in the record." Fed. R. Civ. P. 56(c)(3). "[T]he district court has no 'duty to search the entire record to establish that it is bereft of a genuine issue of material fact.'" Pharos Capital Partners, L.P. v. Deloitte & Touche, 535 Fed. Appx. 522, 523 (6th Cir. 2013) (per curiam) (quoting Tucker v. Tennessee, 539 F.3d 526, 531 (6th Cir. 2008), abrogation recognized by Anderson v. City of Blue Ash, 798 F.3d 338 (6th Cir. 2015)).
The decisive "question is whether 'the evidence presents a sufficient disagreement to require submission to a [fact finder] or whether it is so one-sided that one party must prevail as a matter of law.'" Johnson v. Memphis Light Gas & Water Div., 777 F.3d 838, 843 (6th Cir. 2015) (quoting Liberty Lobby, 477 U.S. at 251-52). Summary judgment "'shall be entered' against the non-moving party unless affidavits or other evidence 'set forth specific facts showing that there is a genuine issue for trial.'" Rachells v. Cingular Wireless Employee Servs., LLC, No. 1:08CV02815, 2012 WL 3648835, at *2 (N.D. Ohio Aug. 23, 2012) (quoting Lujan v. Nat'l Wildlife Fed'n, 497 U.S. 871, 884 (1990)). "[A] mere 'scintilla' of evidence in support of the non-moving party's position is insufficient to defeat summary judgment; rather, the non-moving party must present evidence upon which a reasonable jury could find in her favor." Tingle v. Arbors at Hilliard, 692 F.3d 523, 529 (6th Cir. 2012) (quoting Liberty Lobby, 477 U.S. at 251). "[I]n order to withstand a motion for summary judgment, the party opposing the motion must present "affirmative evidence" to support his/her position." Mitchell v. Toledo Hosp., 964 F.2d 577, 584 (6th Cir. 1992) (citing Liberty Lobby, 477 U.S. at 247-254; Street v. J.C. Bradford & Co., 886 F.2d 1472, 1479 (6th Cir. 1989)). "[C]onclusory assertions, unsupported by specific facts made in affidavits opposing a motion for summary judgment, are not sufficient to defeat a motion for summary judgment." Rachells, 2012 WL 3648835, at *2 (quoting Thomas v. Christ Hosp. and Med. Ctr., 328 F.3d 890, 894 (7th Cir. 2003)). Statements contained in an affidavit that are "nothing more than rumors, conclusory allegations and subjective beliefs" are insufficient. See Mitchell, 964 F.2d at 584-85.
B. Trade Secret Misappropriation
The Tennessee Uniform Trade Secrets Act ("TUTSA") prohibits the misappropriation of trade secrets, providing for both injunctive relief as well as damages. See Tenn. Code Ann. §§ 47-25-1703, 1704. For information to qualify as a "trade secret," (1) the information must derive independent economic value from not being generally known or ascertainable by proper means, (2) others must be able to obtain economic value from the information's disclosure or use, and (3) reasonable efforts must have been made to maintain the secrecy of the information. See Tenn. Code Ann. §§ 47-25-1702(4); see also Williams-Sonoma Direct, Inc. v. Arhaus, LLC, 304 F.R.D. 520, 527 (W.D. Tenn. 2015) (quoting J.T. Shannon Lumber Co. v. Barrett, No. 2:07- cv-2847-JPM-cgc, 2010 WL 3069818, at *4 (W.D. Tenn. Aug. 4, 2010)). Among other ways, a trade secret is "misappropriated" if it is disclosed or used without consent by a person who knows or has reason to know that the person's knowledge of the trade secret was acquired "under circumstances giving rise to a duty to maintain its secrecy or limit its use[.]" Tenn. Code Ann. § 47-25-1702(2)(B)(ii)(b).
III. ANALYSIS
A. Material Factual Disputes Exist with Respect to Trade Secrets 1-4 that Preclude Grant of Summary Judgment
For a successful TUTSA claim, Plaintiffs must show that they were in possession of a trade secret, and that Defendants misappropriated that trade secret by disclosing or using it without consent or with reason to know that they had were under a duty to maintain its secrecy or limits its use. BDT Prod., Inc. v. Lexmark Int'l, Inc., 124 F. App'x 329, 333 (6th Cir. 2005). Thus, the questions before the Court are whether a reasonable jury could find that Plaintiffs met each of the statutory requirements for a trade secret, and if they did, then whether Defendants misappropriated said trade secrets. Here, Plaintiffs present sufficient factual evidence and testimony with respect to TS #s 1, 2, 3 and 4 that a reasonable jury could find that they were in possession of a trade secret and that Defendants misappropriated at least one of those trade secrets.
1) Whether Plaintiffs Misappropriated a Trade Secret is a Factual Question
Section 47-25-1702 of TUTSA provides the following definition for misappropriation:
(2) 'Misappropriation' means:
(A) Acquisition of a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means; or
(B) Disclosure or use of a trade secret of another without express or implied consent by a person who:
(i) Used improper means to acquire knowledge of the trade secret; or
(ii) At the time of disclosure or use, knew or had reason to know that the person's knowledge of the trade secret was:
a. Derived from or through a person who had utilized improper means to acquire it;
b. Acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use; or
c. Derived from or through a person who owed a duty to the person seeking relief to maintain its secrecy or limit its use; or
T.C.A. § 47-25-1702(2) (emphasis added).(iii) Before a material change of the person's position, knew or had reason to know that it was a trade secret and that knowledge of it had been acquired by accident or mistake[.]
Section 47-25-1702(4) adds that a trade secret is defined broadly, meaning "information, without regard to form, including, but not limited to, technical, nontechnical or financial data, a formula, pattern, compilation, program, device, method, technique, process or plan[.]" T.C.A. § 47-25-1702(4). This definition of a trade secret is broader than the standard version of the Uniform Trade Secret Act. Hinson v. O'Rourke, 2015 WL 5033908, slip op at *5 (Tenn. Ct. App. Aug. 25, 2015).
If Plaintiffs are in possession of a trade secret, they must show that Defendants disclosed or used the alleged trade secrets, and at the time of disclosure or use, had reason to know that those trade secrets were acquired under circumstances giving rise to a duty to maintain secrecy or limit use, as stated in TUTSA § 47-25-1702(2)(B)(ii)(b). T.C.A. § 47-25-1702(2)(B)(ii)(b).
Defendants argue that "Plaintiffs have not identified and cannot identify any evidence that Defendants have improperly used or disclosed TS #1, TS #2, TS #3, or TS #4." (ECF No. 94 at PageID 4029.) Defendants have produced their coating library and schematics of their die shim as corroborating evidence for this proposition. (Id.) Furthermore, they argue that "Plaintiffs have pointed to no evidence that any of Defendants' multi-layer coatings used the die shim designs, combined formulations and mixing procedures, or viscosities that Plaintiffs claim as trade secrets." (Id.) Furthermore, with respect to each individual trade secret, Defendants contend that: "For TS #1, Defendants have used only (1) the nonproprietary die shims rented from Frontier and (2) their own die [sic] shims", "[f]or TS #2 and TS #3, Defendants have never used or disclosed the alleged formulation or alleged mixing procedures, either alone or in combination" and "[f]or TS #4, Defendants have not used or disclosed the alleged viscosities." (ECF No. 94 at PageID 4029-4030.)
In response, Plaintiffs allege that their trade secrets were disclosed to Yao under the NDA, including "Plaintiffs' specific configuration for the shims and slot dies, the chamfered edges, the specific slurry formulations, the precise slurry mixing instructions, the necessary viscosities to create the large, high surface-area intermediate interface between the layers (the interpenetrating interphase layer), and the combination of hard carbon, graphite, and other electrode components to yield [sic] the desired specific batter performance." (ECF No. 112 at PageID 9227.) It is undisputed that the parties were in a working relationship that involved Dr. Buiel's expertise, guidance, and connections, which assisted Defendants in their pursuit. (See, e.g., ECF No. 112-24.) Plaintiffs argue that this relationship and the expertise provided by Dr. Buiel led Defendants to "pivot" away from spray coating to the multicavity slot-die coating process. (ECF No. 112 at PageID 9231.)
This pivot is the circumstantial evidence that Plaintiffs use to argue that it is the entirety of the five trade secrets, viewed collectively as a process, that is protected and that was misappropriated. (ECF No. 112 at PageID 9234.) Plaintiffs allege that Defendants "heavily modified [the patent] application filed in July 2017 to reflect dual-layer slot die coating, where the second layer is applied directly to the first layer without drying." (ECF No. 112 at PageID 9237). It is these changes that they purport are evidence that Defendants misappropriated trade secrets—by modifying a patent application to reflect insights gained from Dr. Buiel. (Id.) Plaintiffs further point out that these changes were made after Defendants began collaborating with Dr. Buiel and that it is implausible that "Yao and others developed all the complex concepts, formulas, and processes contained in the two patents at issue and mastered" them "within a matter of a few months." (Id.)
While Defendants ask the Court to look at only each individual trade secret, Plaintiffs ask that the Court consider the entirety of the "process." (ECF No. 112 at PageID 9234.) Defendants argue that "Plaintiffs have never asserted that they possess the chamfered edge claimed as part of TS #1", "never identified a single document that contains the formulations they claim as part of TS #2 and TS #3", and have not identified any evidence that Defendants have disclosed "the use of slurries having a specific range of viscosities in multi-cavity slot-die coating to create multilayer batteries having an interphase layer" as part of TS #4. (ECF No. 120 at PageID 10699-10700.) With respect to TS #4, Defendants add that the use of multicavity slot-die coating to create multilayered lithium-ion battery electrodes and use of slurries with specific ranges for slot-die coating was known prior to their interaction with Plaintiffs. (ECF No. 116 ¶¶ 46, 47.) Conversely, Plaintiffs concede that individual portions of each alleged trade secret may not be protected, and instead ask the Court to consider "the entirety of the process—the use of all of the steps of the process together"—something that "Defendants' own NSF application flatly stated [] was impossible." (ECF No. 112 at PageID 9235.) This is consistent with Plaintiffs' identification of trade secrets, which notes that "Buiel/CM had developed a specific configuration and process for using a multi-cavity slot die design to produce a multi-layer electrode with specific structure, properties, and composition which produced superior results than that which was available to the public." (ECF No. 56 at PageID 1769.) The entirety of the process is something that can be subject to trade secrecy and the Court is free to consider the alleged trade secrets collectively. See NexPay, Inc. v. Comdata Network, Inc., 2018 WL 4185374, at *14 (M.D. Tenn. Aug. 30, 2018) (Finding a material factual dispute as to "whether the concept of funding at authorization and the model NexPay developed for implementing this concept, together, consist of more than simply a broad, unprotectable 'idea.'"); Williams-Sonoma Direct, Inc. v. Arhaus, LLC, 109 F.Supp.3d 1009, 1013 (W.D. Tenn. 2015) (Noting that bid selection processes, negotiating processes, and pricing information can all be valuable information subject to trade secrecy.); see also Hickory Specialties, Inc. v. B&L Labs., Inc., 592 S.W.2d 583 (Tenn. Ct. App. 1979).
Here, a reasonable jury could find that Plaintiffs were in possession of trade secrets that they disclosed to Defendants as part of the consulting relationship, which Defendants utilized to eventually file a patent application. Furthermore, Plaintiffs have put forth sufficient factual evidence in the form of emails, testimony, and circumstantial evidence to suggest that they were in possession of something more than a mere trivial difference or advance in formula or operation. Accordingly, it will be up to the fact-finder to determine: 1) Whether Plaintiffs were in possession of a protectable trade secret and 2) Whether Defendants disclosed or used that trade secret (i.e., misappropriation). Summary judgment is DENIED on the issue of whether Defendants misappropriated trade secrets 1-4.
2) Whether Plaintiffs Took Reasonable Measures to Protect Their Trade Secret(s) is a Factual Dispute that Precludes Summary Judgment
Defendants also argue that Plaintiffs cannot be in possession of trade secrets because they failed to mark that information as confidential or proprietary and failed to take reasonable measures to protect that information. (ECF No. 94 at PageID 4032.) Defendants cite to several cases that purportedly hold that the implied duty of confidentiality is voided by express agreement. (See ECF No. 94 at PageId 4032.) Contractual agreements are, however, a state law issue, and none of the cases cited discuss this proposition under Tennessee law. For example, Defendants' citation of BDT Prod. leaves out the key first portion of the sentence: "Under Oregon law, though it recognizes implied duties of confidentiality under its version of the UTSA, implied duties are voided by express agreements on the same duty." BDT Prod., 124 Fed. Appx. at 335 (citing Union Pac. R.R. Co. v. Mower, 219 F.3d 1069, 1074-75 (9th Cir. 2000)). Similarly, Defendants citations to Convolve, Inc. and Marketel Int'l, Inc. discuss this topic under California law. (ECF No. 94 at PageID 4032.) Accordingly, the Court does not find sufficient legal basis to supplant any implied duty of confidentiality solely with the terms of a non-disclosure agreement.
The parties entered a mutual non-disclosure agreement on February 9, 2017 (the "NDA"), which defines "confidential information" as follows:
'Confidential Information' means any information disclosed by the Disclosing Party to the Recipient, either directly or indirectly, in writing, orally or by inspection of tangible objects, including, without limitation, business plans, customer data, customer lists, actual or potential customers, contractors, vendors, strategic partners, employees, designs, documents, drawings, engineering
information, financial analysis, hardware configuration information, inventions, market information, marketing plans, processes, actual or potential investors, products, product plans, research, services, specifications, software, source code, trade secrets or any other information that the Disclosing Party identifies as 'confidential,' 'proprietary' or some similar designation or that reasonably appears to be confidential or proprietary because of legends or other markings, the circumstances of disclosure, or the nature of the information itself. Confidential Information also includes information disclosed to the Disclosing Party by third parties.(ECF No. 6-3 at PageID 706 (emphasis added).)
Defendants contend that "where purported trade-secret owners fail to mark pursuant to the terms of a confidentiality agreement, there is no trade secret misappropriation." (ECF No. 94 at PageID 4032.) Per the terms of the NDA however, this is not the end of the inquiry. Whether Defendants' disclosures, either via emails, phone calls, or other meetings, reasonably appeared to be confidential or proprietary such that they were subject to the NDA is a question for the fact-finder.
Similarly, Defendants argue that Plaintiffs failed to implement safeguards or "take any measures to protect the secrecy of their information beyond the signing of non-disclosure agreements." (ECF No. 94 at PageID 4034.) To support this contention, Defendants point out that Plaintiffs did not mark documents despite having a marking policy, did not appropriately train employees with regards to confidential information, allowed Yao to take materials in and out of the facility, and allowed Yao to work alongside their own employees at their facility. (Id.) Plaintiffs rebut this contention by noting that they had employees sign confidentiality agreements, provided guidance in an employee handbook, and argue that Defendants have mischaracterized their own obligation with respect to the NDA. (ECF No. 112 at PageID 9240.) Again, the reasonableness of Plaintiffs' actions or inactions with respect to protecting the confidentiality of its disclosures is a question for a jury. See, e.g., Niemi v. NHK Spring Co., Ltd., 543 F.3d 294, 303 (6th Cir. 2008) ("The question before us is whether the instant record, viewed in the light most favorable Niemi, contains sufficient evidence to enable a reasonable fact finder to conclude that Niemi took reasonable steps to safeguard the secrecy of his method, such that New Mather's alleged unauthorized use of the information could be deemed a breach of good faith[.]"). Accordingly, summary judgment is DENIED with respect to whether any of Plaintiffs' disclosures could have reasonably appeared to be confidential so as to subject Defendants to the NDA, and whether Plaintiffs took reasonable measures to protect the secrecy of their information.
B. Summary Judgment is Granted on TS #5 Because it was Publicly Available
Defendants argue that TS #5 was "readily ascertainable from the public domain prior to Defendants' interaction with Plaintiffs." (ECF No. 116 ¶ 66.) Plaintiffs summarily dispute this fact, as they do with several others, relying on a long string citation but providing no explanation of the factual basis for a dispute, and providing no particularity. This response is insufficient. "Statements by a party with no citation to particular parts of the record in response to properly supported facts will not be considered." Sledge v. Indico Sys. Res., Inc., 2016 WL 815348 at *2 (W.D. Tenn. Feb. 29, 2016). To dispute a fact, a party can either cite to particular parts of materials in the record or show that materials cited do not establish the absence of a genuine dispute of material fact. Id. The Court does not have a "duty to 'scour the record' in search of facts, nor to speculate about potential genuine disputes." (Id.) (internal citations omitted). The Sixth Circuit has stated that the burden to identify and point out the evidence is with the party disputing facts, not with the Court. Wimbush v. Wyeth, 619 F.3d 632, 638 n.4 (6th Cir. 2010).
For example, Plaintiffs' Response to ¶ 66 of Defendant's Statement of Undisputed Facts, which is identical to their responses to many other statements of fact, states: "RESPONSE: Disputed. (See AY050009, AY050001 and AY021510-AY021511, attached as Exhibit M to Pls' Opp'n Resp. and Mem. of Law; Dep. of Adrian Yao, attached as Exhibit J to Pls' Opp'n Resp. and Mem. of Law, at p. 48, line 13 through p. 50, line 19; p. 53, line 19 through p. 60, line 11; and p. 73, line 13 through p. 77, line 15; Buiel-0051487-Buiel-0051488, attached as Exhibit N to Pls' Opp'n Resp. and Mem. of Law; US10069145 4-20-20 Plaintiff's Claim Review—Confidential—AEO, attached as Exhibit O to Pls' Opp'n Resp. and Mem. of Law; US10038193 4-20-20 Plaintiff's Claim Review - Confidential—AEO, attached hereto as Exhibit P to Pls' Opp'n Resp. and Mem. of Law; Buiel-0005226-Buiel-0005229, attached as Exhibit P; AY-028917-AY028919, attached as Exhibit R to Pls' Opp'n Resp. and Mem. of Law; Buiel0051487-Buiel-0051488, attached as Exhibit N to Pls' Opp'n Resp. and Mem. of Law; Buiel0051505 and Frontier-000128, attached as Exhibit S to Pls' Opp'n Resp. and Mem. of Law; AY050001, AY021510-AY021511, and AY049998, attached as Exhibit T to Pls' Opp'n Resp. and Mem. of Law; see also AY028919-AY028929, AY028735-AY028738, and AY-053267, AY053281, attached as Exhibit U; Frontier000240-42, attached as Exhibit V; Exhibit W to Pls' Opp'n Resp. and Mem. of Law, at p. 98, line 17 through p. 100, line 13; AY027643-AY027647, attached hereto as Exhibit X; Exhibit Z at AY052594, AY052597-AY052598, and AY052601)." --------
"Information that is public knowledge or that is generally known in an industry cannot be a trade secret." Ruckelshaus v. Monsanto Co., 467 U.S. 986, 1002 (1984); see also Dice Corp. v. Bold Techs, 556 F. App'x 378, 385 (6th Cir. 2014) (A trade secret is "information that derives independent economic value from not being generally known and not being readily ascertainable by proper means".). In 1999, Dr. Buiel published a paper entitled "Li-insertion in hard carbon anode materials for Li-ion batteries." (ECF No. 97-4.) This paper proposes the use of "a mixture of hard carbon and MCMB", a form of graphite carbon, for lithium-ion battery anodes and explains that such combinations increase battery performance and reduce lithium plating compared to MCMB alone. (ECF Nos. 97-4, 120-1 ¶ 67.) The paper also asserts that "[t]hese composites also boast higher rate capabilities and longer cycle life when compared to pure MCMB." (ECF No. 97-4 at PageID 6048.) A materials supplier doing business as Long Time Electronic Materials Co., advertises the use of a combination of HC-6 hard carbon and MCMB for lithium-ion battery anodes and includes with their advertising graphs showing increased performance over MCMB alone. (ECF No. 120-1 ¶ 68.) TS #5 consists of the use of a combination of hard carbon and graphite as the active materials in an electrode slurry. (Id. ¶ 8.) Because the information encompassed in TS #5 was publicly known as early as 1999, and because Plaintiffs have not put forth evidence to rebut clear evidence of public disclosure, no reasonable jury could find that the use of hard carbon and graphite as active materials in an electrode slurry comprised a trade secret. Accordingly, summary judgment on TS #5 is GRANTED to Defendants because the information was readily ascertainable in 1999.
C. Plaintiffs Cannot Prove Their Patent Inventorship Claims
Plaintiffs ask the Court to find that Dr. Buiel be declared to be a proper inventor of at least one claim of either the '145 Patent or the '193 Patent. (ECF No. 1-1 at PageID 585.) In their Motion for Summary Judgment, Defendants argue that Plaintiffs have not met their heavy burden to correct inventorship under 35 U.S.C. § 256 because: 1) Dr. Buiel's inventorship claims are uncorroborated and 2) Defendants have shown independent invention of the subject matter claimed in the Patents at Issue. (ECF No. 94 at PageID 4035-4038.)
1) Inventorship Legal Standard
The standard applied here differs from that applied for trade secret misappropriation. While trade secret misappropriation centers on inappropriate use or disclosure of information subject to trade secrecy, inventorship focuses on the conception of subject matter as recited in claims of the patent. Compare Stratienko v. Cordis Corp., 429 F.3d 592, 600 (6th Ci. 2005) with Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994). So long as the alleged trade secret misappropriation and the inventorship issues are not "inextricably intertwined", the Court can consider the issues separately. Shum v. Intel Corp, 499 F.3d 1272, 1277 (Fed. Cir. 2007) (Finding that state law fraud claims were inextricably intertwined with inventorship dispute.). Inventorship is established by determining who "conceived the subject matter at issue, whether that subject matter is recited in a claim in an application or in a count in an interference." Sewall, 21 F.3d at 415. Conception and inventorship are questions of law that are reviewed de novo, and any factual findings in reaching a conclusion are reviewed for clear error. Id.; see also Univ. of Colo. Found., Inc. v. Am. Cyanamid Co., 342 F.3d 1298, 1304 (Fed. Cir. 2003) ("The overall inventorship determination is a question of law, but it is premised on underlying questions of fact.").
"Conception is the touchstone of inventorship, the completion of the mental part of the invention." Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227 (Fed. Cir. 1994) (internal citation omitted). "Conception exists when a definite and permanent idea of an operative invention, including every feature of the subject matter sought to be patented, is known." Coleman v. Dines, 754 f.2d 353, 359 (Fed. Cir. 1985). Furthermore, conception is only complete when "the idea is so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation." Sewall, 21. F.3d at 415. "[T]he inventor must prove his conception by corroborating evidence, preferably by showing a contemporaneous disclosure. An idea is definite and permanent when the inventor has a specific, settled idea, a particular solution to the problem at hand, not just a general goal or research plan he hopes to pursue." Burroughs Wellcome, 40 F.3d at 1228. Section 116(a) of Title 35 provides the framework for joint inventorship, which provides as follows:
(a) Joint Inventions. When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.35 U.S.C. § 116.
The Federal Circuit has repeatedly held that a "person is a joint inventor only if he contributes to the conception of the claimed invention." Eli Lilly and Co. v. Aradigm Corp., 372 F.3d 1352, 1359 (Fed. Cir. 2004) (internal citations omitted). "Contributions to realizing an invention may not amount to a contribution to conception if they merely explain what was 'then state of the art', if they are too far removed from the real-world realization of an invention, or if they are focused solely on such realization." Id. at 1359 (internal citations omitted). Two parties can also be considered joint inventors under 35 U.S.C. § 116 where there is collaboration or concerted efforts. See Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., 973 F.2d 911, 917 (Fed. Cir. 1992) ("[J]oint inventorship under Section 116 requires at least some quantum of collaboration or connection.")
"Because a patent is presumed valid under 35 U.S.C. § 282, there follows a presumption that the named inventors on a patent are the true and only inventors." Gemstar-TV Guide Intern., Inc. v. Int'l Trade Com'n, 383 F.3d 1352, 1381 (Fed. Cir. 2004) (internal citation omitted).
Section 256 of Title 35 creates a cause of action for the correction of inventorship, and provides as follows:
Correction. Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.35 U.S.C. § 256.
"Section 256 creates a cause of action in the district courts for correction of non-joinder of an inventor on a patent provided the non-joinder occurred without deceptive intent." Eli Lilly and Co., 376 F.3d at 1358; see also MCV, Inc. v. King-Seeley Thermos Co., 870 F.2d 1568, 1570 (Fed. Cir. 1989) (Finding that section 256 creates a cause of action for correction of inventorship because it explicitly authorizes judicial resolution of co-inventorship contests over issued patents.). "The inventors as named in an issued patent are presumed to be correct." Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed. Cir. 1997). "The general rule is that a party alleging misjoinder or non-joinder of inventors must meet the heavy burden of proving its case by clear and convincing evidence, [citations deleted] and must provide evidence to corroborate the alleged joint inventor's conception." Eli Lilly and Co., 376 F.3d at 1358; see also Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1461 (Fed. Cir. 1998) (Finding that an alleged co-inventor must supply evidence to corroborate his testimony of conception).
2) Plaintiffs Have Not Put Forth Evidence to Corroborate Their Claims of Inventorship of at least one claim of either the '145 or '193 Patent.
While Plaintiffs have raised enough factual dispute with respect to their theory of trade secret misappropriation, they must clear a higher hurdle in order to do so with respect to inventorship. Inventorship is a legal question left largely to the Court to decide. Sewall, 21 F.3d at 415. Plaintiffs must show by clear and convincing evidence that Dr. Buiel conceived or directly contributed to at least one claim of at least one of the Patents at Issue. Hess, 106 F.3d at 980.
The crux of Defendants' argument is that "Dr. Buiel has provided no evidence corroborating his inventorship allegations beyond his own testimony." (ECF No. 94 at PageID 4036.) They add that Dr. Krause's opinion is based on a "fundamental misunderstanding of Defendants' roll-coating/electrospray process", in which Dr. Krause "incorrectly thought Defendants' process involved (1) spraying a first layer, (2) solvent removal and/or drying, and (3) spraying a second layer." (Id. at PageID 4036-4037.)
Corroboration of an asserted inventor's testimony is done under a "rule of reason analysis", in which the Court evaluates all pertinent evidence so that a sound determination of the credibility of the inventor's story may be reached. Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993). Corroborating evidence may take many forms, but "preferably comes in the form of records made contemporaneously with the inventive process." Gemstar-TV Guide Intern., Inc., 383 F.3d at 1382 (internal citation omitted). Circumstantial evidence and oral testimony from someone other than the alleged inventor may also corroborate the alleged inventor's testimony. Trovan, Ltd. v. Sokymat SA, 299 F.3d 1292, 1302 (Fed. Cir. 2002).
Plaintiffs argue that summary judgment at this stage is inappropriate because a jury should be in position to weight the evidence and determine whether Dr. Buiel should be listed as a co-inventor of the Patents at Issue. (ECF No. 112 at PageID 9242.) To support this contention, Plaintiffs point to some circumstantial evidence, including the fact that the parties were engaged in a collaborative effort and relied at least in part on Dr. Buiel's expertise and guidance during that collaborative effort. (Id.) Plaintiffs also point to a "pivot" in Defendants' endeavors that allegedly hinged on disclosures made by Dr. Buiel, arguing that "Defendants' work had focused solely on spray-coating until Buiel explained to them what was required for preparation of consistent, reliable multilayer electrodes, how to prepare them in order to achieve the necessary large, intermediate intermixed and interpenetrating layer and what materials and processes would allow production of the fast-charging, commercially-viable batteries." (Id.) Plaintiffs contend that Dr. Buiel did more than provide well-known principles; he contributed ideas concerning the inventive concepts of the Patents at Issue. (ECF No. 112 at PageID 9242-9243.) These ideas, Plaintiffs argue, are reflected in Defendants' NSF Phase II Proposal of December 2017 which corroborated Defendants' "pivot" to the methods recommended to Defendants by Dr. Buiel in April of 2017. (Id. at PageID 9243.)
While these arguments may pass muster under the factual inquiry in trade secret misappropriation claims, they are insufficient for a claim of inventorship. Plaintiffs have not provided a limitation-by-limitation analysis of what contributions or portions of claims were conceived by Dr. Buiel. (See "Inventorship Contentions", ECF Nos. 56-1, 56-2.). They largely rely on the "pivot" theory and surrounding circumstances. To the extent they make specific assertions about Dr. Buiel's contributions, Plaintiffs argue that Dr. Buiel informed Defendants about the interphase layer and that they incorporated his trade secrets into their patents. (ECF Nos. 56-1, 56-2, 112 at PageID 9243.) Without more, this is simply insufficient to meet the "clear and convincing" burden for correcting inventorship under 35 U.S.C. § 256. For example, Plaintiffs point to statements to Dr. Yao about revisions to patent applications, but fail to identify with particularity Dr. Buiel's contributions to those changes. (See ECF No. 113 at PageID 9243 ("Defendant Yao's statements to Frontier relative to methodologies involving Buiel or multicavity slot die coatings, along with Defendants' presentations to investors, are indicative of how reliant Defendants were on the know-how and processes that Plaintiffs had developed and which are now claimed by Defendants as their own patentable ideas.").) Relying on Dr. Buiel's know-how to advance and improve a technology is wholly different from Dr. Buiel's direct input to limitations of claims in a patent. But Plaintiffs have not provided such an analysis; instead, they merely reiterate wholesale summaries of Dr. Buiel's alleged contributions. (See ECF No. 56-1 at PageID 1798 (Claim 1: Dr. Buiel conceived of using a slot die, then a multi-cavity slot die, combined with specific formulas designed to control the viscosities of slurry coating mixtures...Dr Buiel conceived of and developed the coating processes and has scanning electron microscope (SEM) photographs from as early as 2007 which document his conception and development of the intermixed layer between layers of different particulate size.").)
At best, Plaintiffs' identification of amendments or changes to Defendants' patent applications presents some circumstantial evidence. In their Inventorship Contentions, however, Plaintiffs do not point out with particularity how any potential trade secrets were incorporated into the Patents at Issue through revisions made after collaborating with Dr. Buiel. (ECF Nos. 56-1, 56-2.) Furthermore, Plaintiffs' reliance on SEM images that allegedly depict the claimed interphase layer is misplaced, because Plaintiffs have not explained the circumstances under which those images were created, when they were created and what their relevance is. (ECF No. 56-1 at PageID 1801.) They provide no metadata or corroboration of these images, and the date provided on one of the referenced photographs actually indicates that it was taken on April 16, 2020, which is well after this litigation began. (ECF No. 56-1 at PageID 1802.) Plaintiffs' expert, Dr. Krause, did not review these SEM images and Plaintiffs argue that he did not need to do so in order to form an opinion. (ECF No. 120-1 ¶ 106.) In contrast, Defendants have produced both testimony and corroborating evidence of scanning electrode micrographs of cross-sections of multilayer electrodes, along with imagery of the interlocking fingers claimed in the patents. (ECF Nos. 98-9 ¶ 54, 69-27.)
Plaintiffs have not provided evidence that rises to the "clear and convincing" standard required for changes to inventorship. Accordingly, summary judgment is GRANTED on the issue of inventorship. The Court does not reach Defendants' assertion of independent invention of the claimed subject matter.
IV. CONCLUSION
For the reasons stated above, Defendants' motion for summary judgment is GRANTED-IN-PART and DENIED-IN-PART. Defendants' motion is GRANTED on the issues of TS #5 and inventorship and DENIED with respect to TS #s 1, 2, 3 and 4. The Court having granted summary judgment on the issue of inventorship, Defendants' motion to bifurcate and to hold a bench trial on inventorship is now DENIED AS MOOT. IT IS SO ORDERED, this 7th day of January, 2021.
/s/ Jon P. McCalla
JON P. McCALLA
UNITED STATES DISTRICT JUDGE