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Hoang v. Abbott Laboratories

June 12, 2009


The opinion of the court was delivered by: Matthew F. Kennelly, District Judge


Diep X. Hoang filed a pro se suit against Abbott Laboratories (Abbott) and a number of current and former Abbott employees for patent infringement and to correct the inventorship listed on three patents.*fn1 Defendants have moved for summary judgment on all claims. For the reasons set forth below, the Court grants defendants' motion.


Because defendants have moved for summary judgment, the Court views the facts in the light most favorable to Hoang and draws reasonable inferences in her favor. See, e.g., Nat'l Athletic Sportswear, Inc. v. Westfield Ins. Co., 528 F.3d 508, 512 (7th Cir. 2008).

Abbott employed Hoang from 1993 until 2002. The individual defendants are current or former Abbott employees. Hoang and Abbott entered into two written employment agreements while she was employed at Abbott. The first agreement, executed on August 4, 1993, provided:

3. All discoveries, inventions, improvements, software and innovations, whether patentable, copyrightable or not (including all data and records pertaining thereto) which EMPLOYEE may invent, discover, originate, or conceive during the term of employment with ABBOTT, and which in any way relate to or are or may be useful in connection with the business of ABBOTT, shall be the sole and exclusive property of ABBOTT. EMPLOYEE shall promptly and fully disclose each and all such discoveries, inventions, improvements, software or innovations to ABBOTT.

4. EMPLOYEE shall assign to ABBOTT EMPLOYEE's entire right, title, and interest to any of the discoveries, inventions, improvements, software and innovations described in Paragraph 3 of this Agreement and any related U.S. or foreign patents, patent applications and copyrights; shall execute any instruments considered necessary by ABBOTT to convey or perfect ABBOTT's ownership thereof; and shall assist ABBOTT in obtaining, defending and enforcing its rights therein....

Defs.' Rule 56.1 Statement, Ex. B ¶¶ 3-4. The second agreement, executed in October 1997, contained substantially similar language. Abbott contends that it never entered into any other agreements with Hoang. Hoang denies that contention, but she has not provided any evidence to support her denial.

Hoang contends that defendants have violated her rights with respect to three patents, U.S. Patent Nos. 6,667,338 (the '338 patent), 6,608,198 (the '198 patent), and 6,864,369 (the '369 patent). With respect to all three patents, Hoang contends that "Abbott has infringed [her] patent rights." Pl.'s Supplement To Patent Claims ¶¶ 1-3.*fn2

She also seeks to have the inventorship listed on the three patents amended to include her name. Hoang stated in her amended complaint that "all ideas and inventions of Diep Hoang should be patented and published due to Diep Hoang's reputational interest as a scientist." Pl.'s Mot. for Leave to File Am. Inventions Compl. ¶ 10.


Summary judgment is appropriate if "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). To determine whether a genuine issue of material fact exists, the Court must view the record in the light most favorable to the nonmoving party and draw reasonable inferences in that party's favor. Anderson v. Liberty Lobby, 477 U.S. 242, 248 (1986); Lesch v. Crown Cork & Seal Co., 282 F.3d 467, 471 (7th Cir. 2002). A genuine issue of triable fact exists only if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson, 477 U.S. at 248.

In response to defendants' motion, Hoang filed two documents, a response to defendants' Local Rule 56.1 statement (without any supporting exhibits) and an affidavit containing four exhibits. Her failure to file a response brief does not mean that defendants' motion automatically carries the day. Defendants must still establish that they are entitled to judgment as a matter of law based on the uncontroverted facts. See Raymond v. Ameritech Corp., 442 F.3d 600, 608 (7th Cir. 2006); Flynn v. Sandahl, 58 F.3d 283, 288 (7th Cir. 1995). As required by the Seventh Circuit and this District's local rules, defendants sent notice to Hoang regarding how to respond to a motion for summary judgment because she is acting pro se.

Hoang's claim that Abbott has infringed on her rights with respect to all three patents fails as a matter of law. As detailed above, Abbott is the assignee of all three patents pursuant to the agreements Hoang signed. To the extent Hoang can claim any credit for developing the patents, that claim is based on research and work she performed in her capacity as an Abbott employee. Hoang assigned Abbott any interest she may have had in any such patents. The written employment agreements Hoang executed could not be clearer in this regard. "A grant of all substantial rights in a patent amounts to an assignment -- that is, a transfer of title in the patent -- which confers constitutional standing on the assignee to sue another for patent infringement in its own name." Intellectual Prop. Dev., Inc. v. TCI Cablevision of Cal., 248 ...

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