MEMORANDUM AND ORDER
KEITH P. ELLISON, District Judge.
Plaintiff Pei-Hreng Hor and Defendant Ching-Wu "Paul" Chu have separately petitioned the Court to amend its Findings of Fact and Conclusions of Law (Doc. No. 206). For the reasons stated below, the Court GRANTS IN PART Dr. Hor's Motion to Amend (Doc. No. 211) and GRANTS Dr. Chu's Motion to Amend (Doc. No. 212). The amendments do not affect the final judgment issued in Dr. Chu's favor.
I. BACKGROUND
This case seeks to resolve the inventorship of two patents, U.S. Patent No. 7,056,866 (the "'866 Patent") and U.S. Patent No. 7,709,418 (the "'418 Patent"). The patents, which issued in 2006 and 2010 respectively, arose from work conducted in the High Pressure Low Temperature ("HPLT") laboratory at the University of Houston in late 1986 and early 1987. Dr. Chu is named as the sole inventor on the patents; Dr. Hor believes he should be listed as co-inventor.
The Court's Memorandum and Order Entering Findings of Fact and Conclusions of Law (the "Order") set forth the hopelessly conflicting accounts of the Inventorship Period offered by Dr. Hor; by Dr. Chu; and by Intervenor Ruling Meng, another member of the HPLT laboratory who — like Dr. Hor — believes she should be listed as co-inventor on the relevant patents. (Doc. No. 206 ("FF CL"), at 4-29.) The Court will not replicate the accounts here. Ultimately, the Court — faced with irreconcilable testimony, no obvious prevarication, and scant corroborating evidence — concluded that neither Dr. Hor nor Ms. Meng had met their respective burdens of proof. (Id. at 34-38.) Judgment was issued in favor of Dr. Chu. (Id. at 38; Doc. No. 207.)
II. LEGAL STANDARD
Dr. Hor and Dr. Chu seek amendment of the Court's Order pursuant to Federal Rule of Civil Procedure 52(b). The purpose of Rule 52(b) is, generally, to correct manifest errors of law or fact. See Fontenot v. Mesa Petroleum Co., 791 F.2d 1207, 1219 (5th Cir. 1986). "This is not to say, however, that a motion to amend should be employed to introduce evidence that was available at trial but was not proffered, to relitigate old issues, to advance new theories, or to secure a rehearing on the merits." Id. Unless a Rule 52(b) motion to amend is based on newly discovered evidence, the moving party must show that the Court's findings of fact or conclusions of law are not supported by evidence in the record. See id.
III. ANALYSIS
Dr. Hor seeks to amend seven of the Court's findings, and requests twenty-two additional findings, for a total of twenty-nine proposed amendments. Dr. Chu offers considerably fewer amendments: seven identified in his motion, and one included in his opposition to Dr. Hor's motion, for a total of eight proposed amendments.
Two of the parties' proposed amendments are typographical in nature and, ostensibly, unopposed. As denominated in the table at the end of this section, the unopposed amendments are: Hor #7 and Chu #1. Although the unopposed amendments do not affect the outcome of the lawsuit, the Court is appreciative of the guidance and will make the corrections noted.
Most of the proposed amendments, however, are subject to some amount of disagreement. The disagreement is not new. These are factual disputes the Court experienced at trial, and attempted to resolve in its 38-page Order. Ultimately, in that order, the Court determined that a majority of the specific points of controversy in the case — who did what, at what time, in what order, and why — admit no clear resolution. And in the context of a legal claim where the plaintiff, and only one the plaintiff, bears the burden of proof, the lack of clarity compels judgment in favor of the defendant. No proposed amendment, offered by either Dr. Hor or Dr. Chu, disturbs this foundational premise.
Given the Court's ultimate conclusion, the bulk of the Order was nothing more than the Court's best attempt to faithfully portray the parties' contentions and arguments regarding how events unfolded during the Inventorship Period. To the extent that the Court inaccurately portrayed those contentions and arguments, it is amenable to amending the Order, although such a change will not produce a different outcome. The Court will not amend the Order, however, to include details, characterizations, or context that it did not then and does not now find compelling for purposes of deciding inventorship.
The Court's ruling as to each proposed amendment is announced in the table below, with brief explanation where appropriate:
No. Description Ruling
Hor #1 Amending the finding on page 4 that Dr. GRANTED. The Court does not find the
Chu "was, during the relevant period, parties' titles to be probative of
the group leader and Principal inventorship. Nonetheless, the Court will
Investigator of the physics research delete the phrase "during the relevant
group." period" from the sentence at issue, to make
clear that the Court is describing the
background to the Inventorship Period.
Hor #2 On page 5, expanding on what Dr. Hor DENIED. Dr. Hor's proposed amendment
meant when he described Dr. Chu as a sheds no light on the events of the
"father figure." Inventorship Period and is superfluous.
Hor #3 Amending the finding on page 6 that Dr. DENIED. The finding at issue accurately
Chu asked that Dr. Hor be appointed describes Plaintiff Trial Exhibit 100.
Alternate Principal Investigator ("API")
in October 1986.
Hor #4 Amending the finding on page 6 that Dr. DENIED. The finding at issue accurately
Hor accepted the API position in describes Plaintiff Trial Exhibit 101.
December 1986.
Hor #5 Amending the finding on page 6 that Dr. GRANTED. As presently drafted, the
Hor, by virtue of his position as API, Order gives a misleading impression that
was in charge of the "financial and there is no dispute regarding the leadership
administrative aspects of the lab," while of the HPLT lab during the Inventorship
Dr. Chu remained the leader of the Period. Rather than outlining the dispute in
"scientific part." general terms — which, as mentioned above
in Hor #1, is not particularly probative of
inventorship — the Court will simply delete
the following sentence from page 6:
"As API, Dr. Hor oversaw financial and
administrative aspects of the lab; Dr. Chu
remained the leader of `the scientific part.'
(Doc. No. 190 at 112-13.)"
Hor #6 On page 25, amending the description of GRANTED. The Order does not accurately
Dr. Hor's argument regarding the represent Dr. Hor's argument. The Court
inconsistency between Dr. Chu's trial will amend the sentence at issue as follows:
testimony and his writings on the
magnetic rare earth substitutions. "Dr. Hor further contends that one of Dr.
Chu's earlier writings confirms several of
Dr. Chu's publications indicate that the
magnetic rare earth substitutions were not
undertaken until after Dr. Hazen had passed
along information as to the chemical
formula and structure of YBCO 1-2-3.
(Doc. No. 198 at 28-29.)"
Hor #7 Correcting "ration" to "ratio" on page GRANTED.
18.
Hor #8 "Using a nominal formula is the starting GRANTED. The Order uses the term
point for creation of a new compound. "nominal formula," but does not define it or
Tr. 6:91. Each nominal formula was explain its purpose. For context and clarity,
typically given a formula number so that the following footnote will added on page 7:
it can be tracked through the synthesis
and testing process. Doc. 189 at 92." "A nominal formula is the starting point for
creation of a new compound. Each nominal
formula was typically given a formula
number so that it could be tracked through
the synthesis and testing process. (Doc. No.
190 at 91-94.)"
Hor #9 "The same formula number should be DENIED. The proposed finding would be
used throughout the recording, synthesis redundant to the footnote described above,
and testing process. Doc. 189 at 90-92." in Hor #8, which already explains that a
formula number permits a compound to be
"tracked through the synthesis and testing
process."
Hor "There are different methods to GRANTED. The Order relates Dr. Hor's
#10 synthesize a compound from a nominal point that there is no synthesis information
formula. It is important to record the for certain compounds dating from the late
synthesis conditions to track how a February and early March 1987 period, but
particular sample was made. Varying does not provide context for why the lack of
the synthesis conditions can change the synthesis information might be relevant. For
resulting compound. Doc. 189 at 93-94." context and clarity, the following footnote
will be included on page 24:
"There are different methods to synthesize a
compound from a nominal formula. Varying
the synthesis conditions can change the
resulting compound. (Doc. 190 at 93-94.)"
Hor "Physical Review Letters was the most DENIED. The Order already notes that the
#11 prestigious publication at the relevant Physical Review Letters was a "prestigious"
time. Publishing one or two articles as publication. (FF CL at 8.)
the first author in Physical Review
Letters would secure a faculty position
for that person. Doc. 184 at 83; Doc 187
at 82."
Hor "Ken Forster testified that Dr. Hor DENIED. The proposed finding is not
#12 described the basics of chemical probative of any disputed inventive
pressure experiments to him prior to the contribution. Dr. Hor himself testified that
discovery of YBCO. Doc. 187 at 67." "mimicking physical pressure by chemical
substitution is a standard idea in our field.
It's nothing very special." (Doc. No. 185 at
105.)
Hor "It was not unusual for Meng to order DENIED. The Order already incorporates a
#13 rare earth oxides because of other work paraphrase of the proposed finding, in its
the lab was doing. It was standard depiction of "Plaintiff's and Intervenor's
procedure for her to keep rare earths in Version of [January 1987] Events." (FF CL
stock. Doc. 186 at 12-13." at 11.)
Hor "In his other extensive writing on the GRANTED IN PART. The Order already
#14 subject, Dr. Chu never stated that he incorporates the gist of the proposed finding
personally had told Dr. Hor or Dr. Wu with regards to Dr. Wu. (FF CL at 11 fn.
about Yttrium substitution. Doc. 189 at 10.) However, it does not expressly note the
111-112." alleged inconsistencies in Dr. Chu's stories
regarding how Dr. Hor learned of the
Yttrium substitution. The following
sentence will be added to page 28:
"In his declaration [in the Wu interference],
Dr. Chu did not state that he personally told
Dr. Hor of the Yttrium substitution. (Id.) At
trial, however, Dr. Chu suggested that he
had told Dr. Hor of his idea prior to January
29, 1987, but could not recall when. (Doc.
No. 190 at 108-11.)"
Hor "On or about January 9, 1987, Dr. Chu DENIED. Dr. Hor initially maintained that
#15 prepared a patent disclosure. P. Ex. 82. the formula for Dr. Wu's compound was not
The disclosure did not include within its included in the Patent Disclosure (Doc. No.
range of compositions, the YBCO 185 at 147-48), based on a misconception
sample that Dr. Wu brought to UH on that the formula for Dr. Wu's compound
January 30, 1987. Doc. 185 at 144-147." was formula (2) of the formulas listed on
H50 (id.; Doc. No. 184 at 151). When he
clarified that the formula for Dr. Wu's
compound was actually formula (3), he also
conceded that formula (3) was included in
the Disclosure. (Doc. No. 185 at 154-56.)
Hor "Typically, the first author in a scientific DENIED. The Order already notes "[t]he
#16 article is the person who has most general custom in the field was to list first
significantly or directly contributed to the person who had made the most
the actual technical information that is significant contribution." (FF CL at 16
contained in the paper. Hazen Dep. pp. n.13.) Dr. Chu testified that his practice was
86-87; Tr. 187 at 85. Being listed as first to list himself first in the first paper in a new
author in the academic and scientific field, but thereafter to list himself last in
community indicates that person has subsequent papers. (Doc. No. 190 at 75.)
provided the most significant Another witness, Roy Weinstein,
contribution to the scientific discovery. acknowledged that "some groups" follow a
Doc 184 at 82-83 and 153; Doc. 187 at convention similar to the one claimed by
19 and 83-85. It would be academically Dr. Chu, in which senior members are listed
dishonest to list a person as first author last to "give away to the younger people."
if they had not significantly contributed (Doc. No. 187 at 83.) In light of these
to the work. Doc. 187 at 19." discrepancies, the Court does not find
authorship order to be especially convincing
evidence of inventorship. (FF CL at 37.)
Hor "If a senior person like Dr. Chu is listed DENIED. For the reasons described above,
#17 first on a scientific article it would in Hor #16, the Court does not find
indicate that not only is he the leader of authorship order to be especially convincing
the group, but that he made the most evidence of inventorship. (FF CL at 37.)
significant contribution to the concept.
Doc. 184 at 82-83; Doc. 187 at 18-19
and 41-43."
Hor "Dr. Hazen authored a book entitled DENIED. There is no indication that Dr.
#18 Breakthrough: The Race for the Hazen's book helps to resolve any dispute
Superconductor which details many of regarding the respective inventive
the events leading up to the discovery contributions of Dr. Hor and Dr. Chu.
and identification of YBCO-123. P. Ex.
83. Dr. Chu agrees that it is an accurate
record of the events that led to the
discovery of YBCO. Doc. 189 at 132."
Hor "The HPLT Lab did not have the DENIED. Hor #19 is redundant and
#19 capability of performing x-ray unnecessary. The Order already notes that
diffraction analysis to identify which the HPLT Lab lacked x-ray diffraction
compounds were in a mixed phase analysis capability in the relevant time
sample in February and March of 1987. period. (FF CL at 16.) It also relates Dr.
Without such analysis, the lab could not Hor's argument that partial substitution of
tell if gadolinium was substituted into gadolinium for yttrium, as claimed by Dr.
the 123 phase. For these reasons, partial Chu, would be scientifically inconclusive
substitution of gadolinium for yttrium in given the lab's inability to discern whether
the 214 phase would have been "some pure high Tc YBCO-123 [was]
scientifically meaningless. Doc. 184 at present in the newly synthesized
15, 179-182 and 217; Doc. 186 at 159-161; compound." (Id. at 25.)
Doc. 189 at 145-147."
Hor "Dr. Hor was listed as the first author of DENIED. The Order already notes that Dr.
#20 the UH group for all papers submitted to Hor was listed as first author on two of the
and published in the Physical Review three relevant papers.1 (FF CL at 16, 20.)
Letters related to the discovery of The Order also reflected that Dr. Hor relies
YBCO and the magnetic rare-earth on authorship order to support his
super-conductors. Doc 189 at 121; P. inventorship claims. (Id. at 36.) In light of
Ex. 48, 60 and 86." these passages, Hor #20 is redundant.
Hor Hor #21 — a proposed additional finding DENIED. The first and last sentences in
#21 regarding Dr. Chu's statements Hor #21 are already represented in the
recommending Dr. Hor for tenure and Order. (FF CL at 29.) The remaining
the importance of honesty in the tenure sentences are not probative of inventorship.
process — is too lengthy to recount, but
can be found in Dr. Hor's motion to
amend. (Doc. No. 211, at 5-6.)
Hor "Given his demonstrated quickness in DENIED. The Order already contains this
#22 filing patent applications, it is argument. (FF CL at 25.)
unreasonable to infer that Dr. Chu
would have waited over a month from
mid-February to March 26, 1987 to file
a continuation-in-part patent application
that included the magnetic rare-earth
super-conductors. Doc. 185 at 171-172."
Hor Hor # 23 — a proposed additional finding DENIED. With the slight amendment set
#23 regarding alleged inconsistencies forth above in Hor #6, all arguments
between Dr. Chu's trial testimony and contained within Hor #23 will be
his writings on the magnetic rare earth represented in the Order, albeit not all in
superconductors — is too lengthy to one place. (FF CL at 20, 24-25.)
recount, but can be found in Dr. Hor's
motion to amend. (Doc. No. 211, at 6-7.)
Hor "During the period from November of DENIED. The proposed finding is not
#24 1986 through the next six months, the probative of any disputed matter that the
field of superconductivity research was Court was called upon to resolve.
a very competitive environment.
Numerous labs were trying to find out
what was going on at UH because there
[sic] trailing in the development of
high-temperature superconductors. Doc. 187
at 10-11."
Hor "In 1988, Dr. Hor's salary at UH was DENIED. The comparison of the DuPont
#25 approximately $43,000. Doc. 185 at 49. proceeds to Dr. Hor's salary is not probative
The $137,000 payment was almost three of any disputed matter that the Court was
times the amount of his annual salary. called upon to resolve. The Order already
Doc. 185 at 50." notes the inference which Dr. Hor intends to
draw from the comparison, which is "that
Dr. Hor's . . . contributions to the '816 and
'418 patents were substantial." (FF CL at
27.) Nonetheless, the Court did not find the
DuPont payments "especially convincing."
(Id. at 37.)
Hor "Dr. Hor did not follow up with Dr. Chu GRANTED. The Court already represented
#26 because he trusted him and because in Dr. Hor's explanation that he did not follow
his public writings on the discovery of up with Dr. Chu because he trusted him. (FF
YBCO and the magnetic rare earth CL at 27.) The Court will amend the
superconductors, Dr. Chu was very fair sentence at issue to include the remainder of
to everybody. Doc. 186 at 61-62." Dr. Hor's explanation:
"In the end, however, Dr. Chu did not
follow up with Mr. Cox and Dr. Hor did not
discuss the matter again with Dr. Chu
`because he trusted him and because in his
public writings on the discovery of YBCO
and the magnetic rare earth
superconductors, Dr. Chu was very fair to
everybody.' (Doc. No. 198 at 33 (citing
Doc. No. 186 at 61-62).)"
Hor "Dr. Hor's December 4, 1990 DENIED. The quoted passage is not
#27 declaration states that at the meeting probative of any disputed matter that the
`Ru-ling and I discussed the concept that Court is called upon to resolve.
substitution of Y for La in a
composition of La-Ba-Cu-O would
produce a composition of Y-Ba-Cu-O
that superconducts at a higher Tc than
that of a La-Ba-Cu-O composition.' It
also states that Hor and Meng `initiated
the discussion of this concept with M.K.
Wu.' P. Ex. 5."
Hor "Dr. Hor's statements in his declaration DENIED. The proposed finding is already
#28 were consistent with his understanding represented in the Order. (FF CL at 28.)
that he was at least a co-inventor of
YBCO-123 and that it was a group
effort. Doc. 185 at 57."
Hor "Dr. Hor's December 4, 1990 DENIED. The proposed finding is
#29 declaration does not state that Dr. Chu redundant and unnecessary. The Order
had conceived of the idea of Yttrium already represents Dr. Hor's position that
substitution or that it was someone other the declaration was "consistent with his
than Dr. Hor's idea. P. Ex. 5." understanding that he was at least a coinventor."
(FF CL at 28.)
Chu #1 Correcting "formal" to "formula" on GRANTED.
page 7.
Chu #2 Adding the following sentence to page GRANTED. Dr. Chu correctly notes that
9: this point is not disputed. (Doc. No. 184 at
129; Doc. No. 185 at 101, 104-05; Doc. No.
"With respect to the Strontium 186 at 91, 93-94, 107.) The Court will
substitution in December 1986, neither include it in the Order to more accurately
Dr. Hor nor Ms. Meng dispute that it capture the events of December 1986.
was Dr. Chu who conceived of
replacing Barium with Strontium. (Doc.
No. 185, at 104-05, 129-30, 221-22.)"
Chu #3 Correcting "Dr. Hor" to "Dr. Wu" in the GRANTED. This is an error in the Order.
following sentence on page 12: All parties acknowledge that Dr. Wu
performed the initial substitution of Yttrium
"By substituting Yttrium for for Lanthanum. (Doc. No. 184 at 141, 150-52;
Lanthanum, Dr. Hor was able to create a Doc. No. 186 at 15-16; Doc. No. 192 at
YBCO compound that exhibited 48-49.)
superconductivity above 77 K."
Chu #4 Altering this sentence on page 12 to GRANTED. The Court has reviewed the
delete the reference to Dr. Hor: trial record and agrees that there is no
evidence that Dr. Hor asked Ms. Meng to
"Dr. Hor asked Ms. Meng to record record formulas in mid-January 1987. The
formulas for conducting the Yttrium sentence will be revised as follows: "Ms.
substitution, which she did on or around Meng recorded formulas for conducting the
January 13. (Pl. Trial Ex. 8.)" Yttrium substitution on or around January
13. (Pl. Trial Ex. 8.)"
Chu #5 Adding a footnote to page 16 regarding GRANTED. Although the Court did not
Dr. Chu's purported naming convention find "authorship order" to be "especially
for scientific papers. convincing" evidence of inventorship (FF
CL at 37), it will amend the Order to reflect
Dr. Chu's explanation of why he was listed
last on certain scientific papers in the
record. The following sentence will be
added to footnote 13:
"Dr. Chu testified that his custom was to
name himself first in the first paper in a new
field, but thereafter to list himself last in
subsequent papers. (Doc. No. 190 at 75.)"
Chu #6 Adding a footnote to page 24 regarding GRANTED. The Order includes Dr. Hor's
Dr. Chu's purported reason for argument that there was no reason to use the
continuing to use the 2-1-4 formula after the structure of YBCO-123
2-1-4 formula after the structure of had been identified, but omits Dr.
YBCO-123 had been identified. Chu's response. The following footnote will
be added on page 24:
"Dr. Chu testified that he continued to use
the 2-1-4 formula in this time period
because the lab did not know how to make
YBCO-123 yet. (Doc. No. 192 at 141-42.)"
Chu #7 On page 26, including the reason that GRANTED. To better depict Mr. Cox's
Mr. Cox did not seriously entertain Dr. testimony on the matter, the Court will
Chu's suggestion that Dr. Hor and Ms. replace the last sentence on page 26 with the
Meng be named co-inventors on the following sentence:
'866 patent.
"Mr. Cox testified that he did not interpret
Dr. Chu's question as a serious suggestion
that Dr. Hor and Ms. Meng were coinventors.
(Doc. No. 186, at 228-33.)"
Chu #8 In his opposition to Hor # 15, Dr. Chu GRANTED. The Order mistakenly
requests that the finding on page 14 that attributes the relevant testimony to Dr. Chu.
"the formula described in [Dr. Chu's The sentence will be amended as follows:
January 9, 1987] Patent Disclosure
matches the one Wu brought to UH "Dr. Chu notes Dr. Hor admits that the
much later, on January 30" be amended formula described in the Patent Disclosure
to attribute the testimony to Dr. Hor, not matches the one Wu brought to UH much
Dr. Chu. (Doc. No. 214 at 13.) later, on January 30. (Doc. No. 184 at 150-51;
Doc. No. 185 at 155-56.)"
IV. CONCLUSION
None of the proposed amendments or additional findings changes the Court's ultimate conclusion that Dr. Hor failed to meet his burden of proving inventorship by clear and convincing evidence. Nonetheless, for the reasons stated, the Court GRANTS IN PART Dr. Hor's Motion to Amend (Doc. No. 211) and GRANTS Dr. Chu's Motion to Amend (Doc. No. 212). The Court will issue an Amended Memorandum and Order Entering Findings of Fact and Conclusions of Law containing the changes noted above.
IT IS SO ORDERED.
