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03/20/89 Roger Lee Heath, v. Elias R. Zenkich Et Al.

March 20, 1989

ROGER LEE HEATH, PLAINTIFF-APPELLANT

v.

ELIAS R. ZENKICH ET AL., DEFENDANTS-APPELLEES



APPELLATE COURT OF ILLINOIS, FIRST DISTRICT, FIRST DIVISION

540 N.E.2d 776, 184 Ill. App. 3d 761, 132 Ill. Dec. 854 1989.IL.355

Appeal from the Circuit Court of Cook County; the Hon. Albert Green, Judge, presiding.

APPELLATE Judges:

JUSTICE CAMPBELL delivered the opinion of the court. MANNING, P.J., and BUCKLEY, J., concur.

DECISION OF THE COURT DELIVERED BY THE HONORABLE JUDGE CAMPBELL

Plaintiff, Roger Lee Heath, appeals the judgment of the trial court which held that the benefits of the inventorship of the BI-PAK 2 and BI-PAD belong to defendant, Elias R. Zenkich, owner of codefendant Zenex Corporation. Heath seeks reversal of the judgment as well as a declaration that he is the inventor of the BI-PAK 2 and BI-PAD devices and entitled to the respective patent applications which had been filed by defendants and any patents issued or issuing from those applications. The sole issue on appeal is whether the trial court properly determined that Zenkich, not Heath, first conceived the inventions and, thus, is entitled to the benefits of inventorship. For the following reasons, we affirm the judgment of the trial court.

The record indicates that in the early 1970's, Zenco Engineering Corporation, a predecessor corporation to Zenex, hired Heath as a machinist. During Heat's affiliation with Zenex, the BI-PAK 2 and the BI-PAD were developed. The BI-PAK 2 is a device which permits defibrillation of a patient during physiological monitoring by using one pair of preapplied and preconnected electrodes for both defibrillation and physiological monitoring. The BI-PAD is a grounding pad for use during electrosurgical procedures. Both the BI-PAK 2 and the BI-PAD were subsequently manufactured and sold by Zenex. The patent application for the BI-PAD was filed on December 20, 1976, and the application for the BI-PAK 2 was filed on February 27, 1978. Both applications named Zenkich as inventor. At Zenkich's request, Heath assisted Zenkich's patent attorney in the preparation of both patent applications. Heath claimed that he did not file patent applications in his own name because he believed that the applications had been filed in Zenkich's name, the BI-PAK 2 and BI-PAD had been on sale for more than one year and pursuant to 35 U.S.C. section 102(b) (1976), he was barred from filing applications for letters patent in his own name. When Heath asked Zenkich to file an affidavit with the Patent and Trademark Office to correct the name of the inventor on the applications or to at least name him as a joint inventor, Zenkich refused, stating he believed himself to be the sole inventor of the two devices.

As a result, Heath filed his complaint in the circuit court of Cook County seeking equitable and declaratory relief. Count I sought an order compelling Zenkich "to file appropriate documentation in the United States Patent and Trademark Office setting forth the facts regarding inventorship, as found by [the circuit court]" for the BI-PAD device. Count II sought a similar order for the BI-PAK 2 device. Count III sought a declaratory judgment that Heath was either the sole inventor or a joint inventor of the two devices and also sought a declaration as to Heath's ownership rights in the two patent applications, the inventions and the patents which may issue. Count IV sought an order compelling Zenex and Zenkich to execute documentation necessary to vest in Heath the ownership rights to the inventions, patent applications and the patents which may issue. Zenex and Zenkich moved to dismiss the complaint for failure to state a claim upon which relief may be granted and for lack of subject matter jurisdiction. The circuit court dismissed counts I and II for failure to state a claim upon which relief can be granted, dismissed count III for both failure to state a claim upon which relief can be granted and for lack of subject matter jurisdiction, and dismissed count IV for lack of subject matter jurisdiction. Heath appealed, and in Heath v. Zenkich (1982), 107 Ill. App. 3d 207, 437 N.E.2d 675, this court reversed the trial court and remanded the cause for further proceedings on the grounds that the trial court had improperly declined to exercise jurisdiction over counts III and IV, count III was a proper subject for declaratory judgment, and counts I and II sought remedies for the alleged violation of Heath's ownership rights in the two inventions.

When trial commenced in October 1987, Scott Saulters, former Zenex employee who worked directly under Heath's direction, testified that the BI-PAK 2 was developed by Heath from an idea Saulters had suggested to Heath after watching a television program entitled "Space 1999." From the television program, Saulters got the idea that the same electrodes could be used to both monitor and to defibrillate the heart. Saulters identified several drawings and sketches of the BI-PAK 2, including one that was dated June 22, 1976, and initialed by Heath, as well as a more detailed drawing of the BI-PAK 2, signed by Heath and witnessed by Saulters at Heath's request on October 8, 1976. However, Saulters admitted that he had never seen Heath actually draw any of the sketches and drawings and had not been privy to all of the conversations between Heath and Zenkich. In addition, Saulters identified a prototype of the BI-PAK 2 which had allegedly been prepared by Heath in December 1976. Saulters admitted that all of the work on the prototype had not been done in his presence.

Next, the evidence deposition of Dr. Alon Winnie, professor and chairman of the department of anesthesia at the University of Illinois Medical Center, was introduced into evidence. Dr. Winnie stated that in late 1976, on his first visit to Zenex, Heath had shown him the BI-PAK 2 on which he was working. According to Dr. Winnie, Heath had made the prototype and Zenkich had referred to the device as Heath's "toy."

Zenkich then testified as an adverse witness and stated that the first BI-PAK 2 was constructed in the early 1970's and the BI-PAD was first built in the "early 70's, 3, 4, 5."

Next, Heath testified that he had invented both the BI-PAK 2 and BI-PAD and proceeded to describe in detail the functions of each. Heath then identified and discussed several exhibits which were introduced into evidence: (1) sales handout, entitled "Electrosurgically Speaking," dated December 8, 1975, and describing the TERRAPAD, the former name for the BI-PAD, "by Roger Lee Heath"; (2) sales handout, entitled "Electrosurgically Speaking," dated December 8, 1975, and also describing the TERRAPAD "by Roger Lee Heath"; (3) drawing of a defibrillator with a cord running from the defibrillator to electrodes which attach to the patient, dated June 22, 1976, and initialed by Heath; (4) drawing of the BI-PAK 2, witnessed by Saulters on October 8, 1976, and signed by Heath; (5) prototype of the BI-PAK 2 built by Heath; (6) sales handout, entitled "Layout BI-PAK 2," dated February 17, 1977, and stating "by Roger Lee Heath"; and (7) preliminary layout of the BI-PAK 2, dated February 17, 1977, stating "by Roger Lee Heath."

On cross-examination, Heath stated that Zenkich had prepared some of the drawings of parts for the BI-PAD which were used by outside sources to produce the parts. The parts were then shipped back to Zenex, where the products were assembled. Heath claimed that Zenkich had nothing to do with the assembly of the BI-PAK 2 prototype. In fact, Heath stated that he did not even believe Zenkich was aware that he was building a prototype. Heath further stated that he had told Saulters and others that he had invented the BI-PAK 2 and BI-PAD, but neglected to tell the patent attorney when he worked with him on the patent applications.

Heath then rested his case and Zenkich testified on his own behalf, stating that he is the sole owner of Zenex, which manufactures medical products in the patient monitoring field which are sold to hospitals, doctors, clinics and paramedics. Zenex was formerly known as Zenco Engineering Co. and Medizenco. Zenkich indicated that there were no formal procedures regarding the development of new products at Zenex "because I didn't deem it necessary to have it since it's a small company, my own company, I thought I could do as I see fit to my company and my employees and ...


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