Bassali v. Johnson Controls, Inc.

Paul L. Maloney

WHEREAS, on May 25, 2011, and with leave of the Court, Plaintiff filed a Third Amended Complaint seeking to be named an inventor of sixteen patents, including in the case of two such patents, their sole inventor (Count I); and asserting claims entitled fraudulent nondisclosure (Count II) and fraudulent concealment based on spoliation of evidence (Count III) (Dkt. 252);

WHEREAS, the Court denied Plaintiff leave to include a further claim for unjust enrichment (Dkt. 234), which the Court had earlier dismissed as time-barred (Dkt. 159), and denied Plaintiff's subsequent motion to reconsider this ruling (Dkt. 338);

WHEREAS, on June 27, 2013, the Court granted Defendants' partial motion to dismiss Counts II and III (Dkt. 340);

WHEREAS, on July 1, 2013, the Court granted in-part and denied in-part Defendants' partial motion for summary judgment, and dismissed Plaintiff's claims of sole inventorship (Dkt. 341);

WHEREAS, on July 9, 2011, Plaintiff moved the Court to reconsider its dismissal of Plaintiff's sole inventorship claims (Dkt. 352), and to reconsider its dismissal of Count II or, in the alternative, grant leave to amend to replead a claim for fraudulent misrepresentation (Dkt. 351);

WHEREAS, on July 11, 2013, pursuant to Fed. R. Civ. P. 68, Defendants offered, and Plaintiff accepted, judgment on the remainder of Count I that Plaintiff is a joint inventor of the patents, and for an Order directing the Commissioner for Patents to issue certificates of correction to that effect. The offer was contingent upon the Court not granting Plaintiff's then-pending motions for reconsideration either in-whole or in-part (Dkt. 360);

WHEREAS, on July 19, 2013, the Court denied Plaintiff's motion for reconsideration with respect to Plaintiff's sole inventorship claims (Dkt. 367);

WHEREAS, on July 26, 2013 the Court denied Plaintiff's motion for reconsideration or, in the alternative, leave to amend, with respect to Count II (Dkt. 373);

WHEREAS, having denied Plaintiff's motions for reconsideration and having dismissed all of Plaintiff's other claims, the Court's entry of final judgment in accordance with Defendants' Rule 68 offer and Plaintiff's acceptance is proper; and

WHEREAS, Plaintiff reserves all right to appeal the Court's dismissal of his other claims, including his claims of sole inventorship

NOW THEREFORE, IT IS HEREBY ORDERED that the Plaintiff, Fred Bassali, is co-inventor of the following United States Patent Nos.: 5,442,340; 5,614,891; 5,479,155; 5,583,485; 5,614,885; 5,646,701; 5,686,903; 5,708,415; 5,903,226; 5,627,529; 5,619,190; 5,699,055; 5,699,054; 5,661,804; 5,854,593; and 6,091,343 (the "Patents-In-Suit").

IT IS FURTHER ORDERED, pursuant to 35 U.S.C. § 256, that:

1. The inventorship designation of each of the Patents-In-Suit is corrected to add Fred Bassali as a named inventor; and
2. The Director of the United States Patent and Trademark Office issue certificates of correction for correcting the inventorship of the Patents-In-Suit in accordance with this Final Order and Judgment.

IT IS FURTHER ORDERED that the Clerk of Court enter this Final Order and Judgment; forward a copy of this Final Order and Judgment for issuance of certificates of correction to the Commissioner for Patents, Office of Patent Publication, ATTN: Certificate of Correction Branch, P.O. Box 1450, Alexandria, VA 22313-1450; and close this case. IT IS SO ORDERED.

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Hon. Paul L. Maloney

Chief United States District Judge