Universal Stabilization Tech Inc v. Advanced Bionutrition Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Universal Stabilization Technologies, Inc. (Delaware) v. Advanced BioNutrition Corp. (Maryland)
  • Plaintiff’s Counsel: San Diego IP Law Group LLP
• Case Identification: 3:17-cv-00087, S.D. Cal., 01/16/2017
• Venue Allegations: Venue in the Southern District of California is based on Plaintiff's residence and place of harm, as well as Defendant’s alleged continuous and systematic business activities purposefully directed at the district, including the solicitation of the Plaintiff.
• Core Dispute: Plaintiff alleges that its founder is the true inventor of a patent currently assigned to the Defendant and seeks correction of inventorship under 35 U.S.C. § 256, a declaration of ownership, and remedies for unjust enrichment.
• Technical Context: The complaint alleges a dispute over technology for preserving probiotic bacteria, whereas the provided patent document relates to an apparatus for the high-throughput analysis of agricultural seeds.
• Key Procedural History: The complaint alleges that in 2004, Plaintiff’s founder, Dr. Bronshtein, disclosed confidential know-how concerning probiotic preservation to the Defendant under a consulting agreement. Plaintiff alleges this know-how was subsequently patented by Defendant without naming Dr. Bronshtein as an inventor. A fundamental discrepancy exists within the case documents: the complaint’s body cites U.S. Patent No. 8,097,245 (related to probiotics and assigned to Defendant) as the subject of the dispute, while the case caption and the provided patent document refer to U.S. Patent No. 8,907,245 (related to seed analysis and assigned to a third party, Pioneer Hi-Bred International, Inc.). This analysis is based on the provided documents as required.

Case Timeline

Date	Event
2004	Defendant allegedly hired Plaintiff for a project on preserving probiotic bacteria (Compl. ¶7).
2008-08-22	Earliest priority date for U.S. Patent 8,907,245 ('245 Patent).
2012-01-17	Date cited in complaint for issuance of a patent related to probiotic material (Compl. ¶8).
2014-12-09	Issue date for the provided U.S. Patent 8,907,245 ('245 Patent).
2017-01-16	Complaint filed.

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,907,245 - APPARATUS FOR REMOVAL OF SPECIFIC SEED TISSUE OR STRUCTURE FOR SEED ANALYSIS, issued December 9, 2014

The Invention Explained

• Problem Addressed: The patent background describes that conventional plant breeding is resource-intensive, requiring significant land, labor, and time to grow plants from seed merely to obtain tissue samples for genetic analysis. The patent notes the challenge of accessing cellular material directly from a seed for analysis without destroying the seed's viability, which would prevent the cultivation of desirable specimens. (U.S. Patent No. 8,907,245, col. 1:21-44, col. 2:12-24).
• The Patented Solution: The invention is an automated apparatus designed to precisely remove a small amount of tissue from a seed, such as by using a controlled laser to ablate a portion of the seed's outer layer (pericarp). This process exposes or collects internal tissue for genetic or chemical analysis while preserving the seed’s viability for subsequent germination and cultivation. ('245 Patent, Abstract; col. 2:57-68). The system is designed for high-throughput screening of large numbers of candidate seeds.
• Technical Importance: This technology aims to significantly accelerate agricultural research and development by enabling rapid, non-destructive, and automated genetic screening directly from seeds, bypassing the need for a full growth cycle. ('245 Patent, col. 2:50-58).

Key Claims at a Glance

The complaint alleges incorrect inventorship of the "claimed subject matter" generally, rather than asserting specific claims (Compl. ¶12). The patent's key independent claims define the apparatus.

• Independent Claim 1 recites an apparatus for laser ablation on a seed, comprising:
  • a seed holder configured to receive the seed; and
  • wherein the seed holder comprises at least one well or cavity... configured to minimize non diffusive laser reflection.
• Independent Claim 11 recites an apparatus for resource-efficient seed selection, comprising:
  • a seed tissue or structure removal tool having an emittance configured to remove seed tissue or structure;
  • a seed holder having a... removal position and emittance diffusing characteristics; and
  • a motorized positioner and a controller adapted to selectively direct the emittance to the removal position.

III. The Accused Instrumentality

This action is for correction of inventorship, not patent infringement. Therefore, there is no accused instrumentality.

IV. Analysis of Infringement Allegations

This action is for correction of inventorship, not patent infringement. Therefore, there are no infringement allegations. No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

In an inventorship dispute, the central question is who conceived of the claimed invention. Analysis would focus on the complete mental conception of the subject matter defined by the claim terms.

• The Term: "seed holder... configured to minimize non diffusive laser reflection" (from Claim 1)

  • Context and Importance: An inventorship analysis for this patent would likely investigate who conceived of the specific structures that solve the technical problems of handling seeds for laser processing. The configuration of the seed holder to manage laser reflection is a specific, inventive feature. Practitioners may focus on this term because it addresses a key technical challenge beyond simply holding a seed, and evidence of who first conceived this solution would be critical.
  • Intrinsic Evidence for Interpretation: The specification discloses that the holder can be made of various materials (metal, plastic) and that the reflection-minimizing feature can be achieved through various means, including surface treatments like powder-coating or sandblasting, or by angling the surfaces of the well. ('245 Patent, col. 13:6-38). This language may support a functionally broader understanding of the term. Conversely, specific embodiments, such as a metal plate with conical wells powder-coated with Alesta™ brand coating, could be used to argue for a narrower scope tied to the disclosed examples. ('245 Patent, col. 13:22-26).

• The Term: "motorized positioner and a controller adapted to selectively direct the emittance" (from Claim 11)

  • Context and Importance: The automation and precision of the apparatus are central to its claimed utility. An inventorship dispute would hinge on who conceived of integrating a tissue removal tool with a programmable, automated positioning system. These terms define the automated and high-throughput character of the invention.
  • Intrinsic Evidence for Interpretation: The specification describes this system in broad, functional terms, referencing commercially available XYZ positioners and computer software for programming movement, which could support a broad construction. ('245 Patent, col. 16:7-18). However, the patent also illustrates a specific gantry-style mechanical system (FIG. 3; col. 15:58-68) and mentions alternative "flying optics" systems ('245 Patent, col. 12:7-12). The choice between these different structures could become a focal point in determining the exact scope of what was conceived.

VI. Other Allegations (Inventorship-Related Claims)

• Unjust Enrichment: The complaint alleges that Defendant has been unjustly enriched by using, licensing, and profiting from the patent at issue, which allegedly incorporates the invention of Plaintiff's founder. Plaintiff specifically alleges that Defendant has entered into "fee generating and royalty-bearing agreements" with third parties, such as Chr. Hansen, based on the patent. (Compl. ¶¶ 17-18).
• Declaration of Ownership & Constructive Trust: Plaintiff seeks a declaratory judgment that it is the rightful owner of the patent, based on its founder's alleged sole or joint inventorship and a subsequent assignment of his rights to Plaintiff. (Compl. ¶¶ 10, 20). The complaint also asks the court to declare Defendant an "involuntary trustee" of the patent and its profits, and to order the conveyance of these assets to Plaintiff. (Compl. ¶22).

VII. Analyst’s Conclusion: Key Questions for the Case

• A threshold, and potentially case-dispositive, issue is one of documentary integrity: The complaint’s factual allegations concerning the technology (probiotic preservation), ownership (Defendant ABN), and patent issue date (2012) all point to U.S. Patent No. 8,097,245. However, the provided patent document and the complaint's own case caption refer to U.S. Patent No. 8,907,245, which involves unrelated technology (seed analysis) and a different assignee. This fundamental contradiction must be resolved by the parties and the court before any substantive legal or technical analysis can proceed.
• The central evidentiary question will be one of conception and corroboration: To succeed on a claim for correction of inventorship, Plaintiff must prove with clear and convincing evidence that its founder, Dr. Bronshtein, conceived of the complete and operative invention as defined in the patent's claims. The case will turn on whether Plaintiff can produce sufficient corroborating evidence—beyond Dr. Bronshtein's own testimony—to meet this high legal standard.
• A final question will be one of contribution and ownership: If the court finds Dr. Bronshtein did contribute to the conception of at least one claim of the correct patent, it must then determine the nature of his contribution. This will decide whether he should be named as the sole inventor or a joint inventor, which in turn dictates whether Plaintiff is the sole owner or a co-owner of the patent.