The opinion of the court was delivered by: Ambrose, Chief District Judge.
MEMORANDUM OPINION AND ORDER
Plaintiff B&B Microscopes, Ltd. ("B&B") is a Pennsylvania corporation engaged in sales, service and consulting in connection with microscopes, imaging equipment, and microscope and imaging related software. Defendant Luigi Armogida ("Armogida") was employed by B&B as a sales representative and imaging specialist from June 15, 1998 through March 20, 2006. The employment relationship fell apart in connection with the creation and development of the KPICS Sperm Finder System ("the KPICS System").
The KPICS System, which was designed for use by forensic labs, allows for the automatic detection and identification of the presence of sperm in a sample placed under a microscope. On January 19, 2006, Armogida filed a United States Provisional Patent Application No. 60/760,163 ("the '163 Application"). Armogida contends that he is the sole inventor and thus owner of the KPICS System. Before me is Armogida's Motion for Partial Summary Judgment Regarding the Ownership of the KPICS System. (Docket No. 75). B&B counters that it owns the KPICS System.
After careful consideration, Armogida's Motion for Partial Summary Judgment (Docket No. 75) is denied. Similarly, B&B's Cross Partial Motion for Summary Judgment is denied.*fn1 Disputed issues of material fact exist which preclude resolution of the issue of ownership of the KPICS System at this juncture.*fn2
For instance, genuine issues of material fact exist concerning whether or not Armogida is the sole "inventor" of the KPICS System. B&B proffers evidence that Dale Laux, an employee of the Ohio Bureau of Criminal Investigation, first conceived of the concept of an automated sperm finder system. Additionally, B&B has provided evidence that Andre Domino of B&B mentioned the concept to Armogida prior to any development of the system, and explained to Armogida the basic components of the system. See Docket No. 81, paragraphs 7, 8, and 11. These facts weigh against Armogida's claim of sole inventorship.
Additionally, even were I to accept the notion that Armogida is the sole "inventor" of the KPICS System, inventorship is a concept distinct from ownership. See Sim Kar Lighting Fixture Co. v. Genlyte, Inc., 966 F. Supp. 967, 972 (D. N.J. 1995) (applying Pennsylvania law). The KPICS System was developed in an employment context. Consequently, resolution of the issue of "ownership" requires me to consider whether Armogida's employment contract obligated him to assign the KPICS System to B&B and, if not, whether Armogida was specifically hired to exercise his "inventive faculties." See University Patents, Inc. v. Kligman, 762 F. Supp. 1212, 1219-1220 (E.D. Pa. 1991), citing, Aetna-Standard Engineering Co. v. Rowland, 343 Pa. Super. 64, 493 A.2d 1375 (1985) and Standard Parts Co. v. Peck, 264 U.S. 52, 44 S.Ct. 239 (1924).*fn3 An express or implied assignment would transfer ownership interest to B&B.
I have reviewed Armogida's employment contract and find that it does not contain an express assignment clause. Specifically, I reject B&B's argument that Paragraphs 4, 5 or 8 of the Employment Agreement obligated Armogida to convey any ownership interest to B&B which he had in the KPICS System. None of those Paragraphs make any mention of inventions, patents or assignments of ownership. Rather, the Paragraphs address self-dealing, the use of proprietary information and the return of B&B property at the cessation of employment.
Turning to a consideration of whether Armogida was specifically hired to exercise his "inventive faculties," genuine issues of material fact exist which preclude the entry of summary judgment. Certainly Armogida was hired years before the KPICS System was developed. Yet, he held himself out to B&B and others as an imaging specialist, and one who created custom imaging solutions for B&B's customers. A finder of fact may conclude that this meant Armogida was hired to use his inventive faculties. Further, there is evidence that he was directed by B&B to create a solution for the Ohio Crime Lab which resulted in the KPICS System. Thus, one could conclude that Armogida was specifically asked to design the KPICS System and that the salary he received was compensation for such invention. Additionally, there is evidence that he was paid additional compensation, which he accepted, for the KPICS System.*fn4 Moreover, there is ample evidence in the record indicating that Armogida represented to third parties that B&B owned the KPICS System. See Docket No. 82-13, 82-21, 82-22. As such, the entry of summary judgment is premature.
Therefore, this 13th day of December, 2006, after careful consideration and for the reasons set forth within, it is Ordered that the Partial Motions for Summary Judgment (Docket Nos. 75 and 88) are denied.
Donetta W. Ambrose, Chief U. S. ...