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Serdarevic v. Advanced Medical Optics

September 25, 2007

OLIVIA N. SERDAREVIC, M.D., PLAINTIFF,
v.
ADVANCED MEDICAL OPTICS, INC., FRANCIS A. L'ESPERANCE, JR., M.D., STEPHEN L. TROKEL, M.D., AND VISX, INC., DEFENDANTS.



The opinion of the court was delivered by: Denise Cote, District Judge

OPINION AND ORDER

This patent case concerns a dispute over the inventorship of technology used in laser vision correction. The plaintiff, Olivia N. Serdarevic, M.D. ("Serdarevic"), describes herself as a world renowned ophthalmic surgeon and works from her office in New York. She did her residency in the early 1980s at the Edward S. Harkness Eye Institute ("Harkness") at Columbia Presbyterian Medical Center. Serdarevic alleges that during this period she was an inventor of certain technology that defendants Francis A. L'Esperance, Jr., M.D. ("L'Esperance") and Stephen L. Trokel, M.D. ("Trokel"), both of whom were prominent ophthalmologists and attending physicians at Harkness, have patented without acknowledging her as the inventor or co-inventor of the technology. The six patents-at-issue each arise from applications filed in 1983, and were issued between 1987 and 1998. The patents have been assigned to defendant VISX, Inc. ("VISX"), a wholly owned subsidiary of defendant Advanced Medical Optics, Inc. ("AMO") (collectively, "corporate defendants").*fn1

Serdarevic filed this action on September 15, 2006. In her Second Amended Complaint, Serdarevic seeks correction of inventorship, claiming that she is the sole inventor of the subject matter claimed in one of the patents and a joint inventor on the remaining five patents. The Second Amended Complaint also asserts claims for unjust enrichment and fraud against Trokel.*fn2 The defendants have moved for summary judgment, or in the alternative, dismissal of Serdarevic's complaint.

They argue primarily that Serdarevic's inventorship claims are barred by the doctrines of laches and equitable estoppel and that her claims for unjust enrichment and fraud are barred by the statute of limitations. Serdarevic has filed a cross-motion for discovery pursuant to Rule 56(f) of the Federal Rules of Civil Procedure.

The defendants' motions are treated as summary judgment motions rather than motions to dismiss because the defendants' arguments require the Court to consider facts outside the pleadings and because the plaintiff has had an opportunity to submit evidence opposing summary judgment. As described below, the plaintiff has not shown that she is entitled to discovery and the summary judgment motions are granted.

BACKGROUND

Where facts are genuinely in dispute, the evidence is taken in the light most favorable to the plaintiff. For the purposes of this motion, it is assumed that Serdarevic was in fact an inventor of technology described in each of the patents-in-suit.

The inventions at issue here were discovered between 1981 and 1985. Serdarevic includes the following patents in this suit:

▫ 4,665,913 ("'913 Patent"), issued on April 28, 1992

▫ 5,188,631 ("'631 Patent"), issued on January 27, 1998

▫ 5,207,668 ("'668 Patent"), issued on April 7, 1998

▫ 5,108,388 ("'388 Patent"), issued on May 19, 1987

▫ 5,711,762 ("'762 Patent"), issued on February 23, 1993

▫ 5,735,843 ("'843 Patent"), issued on May 4, 1993

The first three patents name L'Esperance as their sole inventor, while the latter three name Trokel. As Serdarevic admits, all of the patents have been assigned to VISX.

Serdarevic's Efforts to Secure Inventorship Rights Serdarevic asserts that she learned of the patents-in-suit in October 1998, nearly eight years before filing this lawsuit, when a representative of the Apollo Company ("Apollo") approached her to request a license on the theory that she was an omitted co-inventor on the patents. See Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1466 (Fed. Cir. 1998) (holding that wrongfully omitted co-inventor could license patent to third party absent an agreement to the contrary among co-inventors). On the advice of her attorney, she ended discussions with Apollo in order to retain patent counsel and investigate other options.

In January 1999, Serdarevic retained two patent attorneys at the law firm Patton Boggs ("Patton Boggs"). In March 1999, Patton Boggs wrote to VISX and Summit Technology, Inc. ("Summit"), VISX's major competitor, asserting that Serdarevic had inventorship rights in the '913 and '338 Patents and several other patents that the defendants concede were "genealogically related" to the patents-in-suit. Patton Boggs requested negotiation to add Serdarevic's name to the patents, an accounting for her share of past royalties, and an agreement to permit Serdarevic to share in future income from the patents. VISX's counsel responded in April, requesting documentation of Serdarevic's claim of inventorship. In June 1999, Patton Boggs responded with a four-page letter that asserted that all of the present patents-in-suit were the product of Serdarevic's investigative work and argued that if Serdarevic were added as an inventor or co-inventor on the '388 and '762 Patents, among others, she would be able to support VISX's efforts to respond to a reexamination of the '388 Patent*fn3 and to assist VISX in prosecuting its lawsuit against one competitor. The letter advised VISX that Serdarevic might choose to assist its competitors if VISX did not resolve her claim in a mutually beneficial manner.

While the letter referred to "compelling" documentary evidence of the inventorship and corroborative testimonial evidence, it did not attach the documents or identify the witnesses. Patton Boggs met with VISX'S counsel in September 1999.*fn4 On November 5, VISX's counsel reminded Patton Boggs that it had agreed in the September meeting to provide documentation of Serdarevic's claims "promptly." It inquired, "When may we expect to receive the promised material?" As reflected in another letter from VISX's counsel, in a conversation on December 10, Patton Boggs promised to send the documentation or to advise VISX "that there are no such documents." Patton Boggs counsel responded on December 13 with a note that read, "I will be unable to get back to you until after the first of the year due to everyone's crowded holiday schedule."

Despite these threats and promises in 1999, neither Patton Boggs nor Serdarevic contacted VISX again until after the complaint in this action was filed in 2006. During these intervening years, Patton Boggs never provided any ...


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