1:17-cv-03804
Home Care Providers Inc v. Shawn R Bashore
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Home Care Providers, Inc. (Indiana) and Dr. Dev A. Brar (Indiana)
- Defendant: Shawn R. Bashore (Indiana)
- Plaintiff’s Counsel: Woodard, Emhardt, Moriarty, McNett & Henry LLP
- Case Identification: 1:17-cv-03804, S.D. Ind., 10/20/2017
- Venue Allegations: Venue is asserted based on the Defendant being domiciled in the judicial district and a substantial part of the events giving rise to the claims occurring in the district.
- Core Dispute: Plaintiffs allege that Defendant, a former employee, was improperly named as a co-inventor on a patent conceived solely by Plaintiff Dr. Brar and, in the alternative, that Defendant is under a contractual and equitable obligation to assign any patent rights to Plaintiffs.
- Technical Context: The patent at issue relates to a patient monitoring system involving a pressure-sensitive floor mat that can wirelessly activate a light and alert caregivers, a technology aimed at improving safety for elderly or infirm individuals.
- Key Procedural History: The dispute centers on events that occurred during Defendant's employment with Plaintiff's affiliate, Nightingale Home Healthcare, Inc. The complaint alleges Defendant was an employee tasked with coordinating the development of prototypes for an invention conceived by Dr. Brar. Plaintiffs assert that Defendant had a pre-existing contractual obligation to assign inventions created during his employment.
Case Timeline
| Date | Event |
|---|---|
| 2014-Early | Dr. Brar allegedly conceives the "Mat Invention" |
| 2014-06-09 | Defendant's employment with Nightingale begins |
| 2015-10-22 | Patent Application ('454) filed |
| 2016-02-05 | Defendant's employment with Nightingale ends |
| 2017-05-30 | U.S. Patent No. 9,668,328 issues |
| 2017-10-20 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,668,328 - "Night-Light and Alert System"
- Patent Identification: U.S. Patent No. 9,668,328, "Night-Light and Alert System", issued May 30, 2017.
The Invention Explained
- Problem Addressed: The patent's background describes the safety hazards faced by elderly or physically disabled individuals when they rise from bed in dim or dark conditions and must navigate a room to find a light switch, creating a risk of falling or injury (ʼ328 Patent, col. 1:11-29).
- The Patented Solution: The invention is a system comprising a floor mat placed adjacent to a bed and a separate light unit. The mat contains a pressure sensor (e.g., an LC circuit formed by two metallized layers separated by a compressible partition) that detects when a person steps on it ('328 Patent, col. 1:55-65). Upon detecting sufficient pressure, a microcomputer in the mat directs a wireless transmitter to send a "turn on" signal to the remote light unit, illuminating the room automatically ('328 Patent, col. 2:6-17). The system can also determine the weight of the person and transmit that data and an alert to a remote receiver, such as a caregiver's phone ('328 Patent, col. 2:7-13).
- Technical Importance: The technology provides an automated, wireless solution that eliminates the need for a patient to manually search for a light switch, while also creating an opportunity for remote monitoring by a caregiver.
Key Claims at a Glance
- The complaint centers on the inventorship of the entire patent, which is defined by its claims. The key independent claims are:
- Independent Claim 1: A wireless night light system comprising:
- A light unit with a wireless receiver and an electronically-operable switch.
- A mat for placement on a floor, comprising: a pair of metallized polyester layers separated by a compressible partition, forming an LC circuit; a microcomputer to monitor the circuit's oscillation frequency and determine an applied weight; a first wireless transmitter for signaling the light unit; and a second wireless transmitter for signaling a remote receiver with weight information.
- Independent Claim 11: A wireless night light system comprising:
- A light unit with a wireless receiver and an electronically-operable switch.
- A mat for placement on a floor, comprising: a weight sensor; a microcomputer programmed with an initial weight value; a first wireless transmitter; a second wireless transmitter; and a plurality of light-emitting diodes fixed to the mat.
- Independent Claim 1: A wireless night light system comprising:
- The complaint does not assert specific claims for infringement but rather disputes the inventorship of the subject matter covered by these claims (Compl. ¶39).
III. The Accused Instrumentality
This section is not applicable, as the complaint does not allege patent infringement against a product but rather asserts claims for correction of inventorship and ownership of the '328 Patent itself.
IV. Analysis of Inventorship and Assignment Allegations
The complaint does not allege infringement. Instead, it presents factual allegations to support its claims for correction of inventorship and enforcement of an assignment obligation. No probative visual evidence provided in complaint.
| Legal Theory / Claim | Alleged Supporting Facts | Complaint Citation |
|---|---|---|
| Correction of Inventorship (Count 1) | Plaintiff Dr. Brar is the sole inventor, having conceived the "Mat Invention" in early 2014. | ¶19, ¶37 |
| Defendant's role was limited to non-inventive tasks, such as coordinating with a manufacturing firm to create prototypes based on Dr. Brar's specifications and testing them under Dr. Brar's direction. | ¶18, ¶21, ¶38 | |
| Defendant allegedly never contributed original ideas to Dr. Brar's conception and was never authorized to hold himself out as an inventor. | ¶24, ¶39 | |
| Defendant is alleged to have incorrectly identified himself as an inventor on the patent application's declaration without informing Dr. Brar. | ¶27, ¶28, ¶36 | |
| Enforcement of Assignment Obligation (Count 4) | As a condition of employment, Defendant entered into agreements providing that "inventions" were the exclusive property of the company. | ¶16, ¶17, ¶52 |
| Defendant's work on the invention was performed during his employment, at the direction of his superior (Dr. Brar), and using company resources. | ¶7, ¶26, ¶53 | |
| This direction to "oversee prototypes" is alleged to create an equitable obligation to assign any resulting invention to the company under the "directed-to-invent" doctrine. | ¶53 | |
| Defendant allegedly represented that he had signed or would sign an assignment document but on information and belief did not do so, later refusing to execute an assignment after his resignation. | ¶8, ¶30, ¶34, ¶54 |
V. Key Legal and Factual Issues
The central issues in this case are not matters of claim construction for infringement but turn on the legal standards for inventorship and contractual obligations.
The Term: "Conception"
Context and Importance: Conception is the "touchstone of inventorship" and is defined as the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention. The core of Plaintiffs' case is the allegation that Dr. Brar alone conceived the invention and Defendant merely helped reduce it to practice, which is not an inventive act. Practitioners may focus on the evidence distinguishing Dr. Brar's alleged initial "disclosure of the Mat Invention" from Defendant's subsequent work "coordinating the creation and testing of prototypes" (Compl. ¶18, ¶22).
Intrinsic Evidence for Interpretation: While the patent is not evidence of who conceived the ideas, the claims themselves define the invention whose conception is at issue. The dispute will require evidence demonstrating who conceived of the specific combinations recited in claims 1 and 11, such as the use of an LC circuit to determine weight and the dual-transmitter system for signaling both a light and a remote caregiver.
The Term: "Obligation to Assign"
Context and Importance: This issue provides an alternative path to victory for Plaintiffs. Even if Defendant is deemed a proper co-inventor, Plaintiffs allege he was obligated to assign his rights. This obligation is key to establishing Plaintiffs' sole ownership of the '328 Patent. The analysis will likely focus on two potential sources of this obligation.
Evidence for Interpretation:
- Express Obligation: The complaint alleges Defendant signed employment agreements stating that "Proprietary Information" includes "inventions," and that the company "is and will at all times remain the exclusive owner of the Proprietary Information" (Compl. ¶16). The specific language of these agreements will be critical.
- Implied Obligation: The complaint alleges Defendant "was directed to coordinate others' preparation and testing of prototypes of Dr. Brar's Mat Invention" (Compl. ¶53). This allegation may support an argument under the "hired to invent" or "directed to invent" doctrines, where an employee who is directed to solve a specific problem or create a specific invention may have an implied duty to assign the resulting patent to the employer.
VI. Other Allegations
- Constructive Fraud (Count 2): Plaintiffs allege that Defendant, as an Information Technology Director, had an employment and management relationship with the company that created a duty to act in its best interest (Compl. ¶41). The complaint alleges Defendant breached this duty by, among other things, misrepresenting himself as an inventor and omitting to inform his superior, Dr. Brar, of his assertion of inventorship, thereby injuring Nightingale (Compl. ¶43-45).
- Conversion (Count 3): The complaint alleges that the '328 Patent is the property of Nightingale and that Defendant is "knowingly or intentionally exerting unauthorized control" over that property by claiming an ownership interest and attempting to license it, and has refused requests to return the property (Compl. ¶8, ¶48).
- Willfulness: The complaint requests that damages be "trebled or otherwise enhanced" due to the "willful and deliberate nature of Defendant's actions" (Compl. p. 16, ¶F). This allegation appears tied to the state law tort claims and the assertion in the assignment count that Defendant has "willfully refused, to assign legal title" (Compl. ¶56).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to turn on two central, alternative questions of fact and law:
A primary issue will be one of "inventorship": As a matter of fact, did Defendant's work coordinating prototype development and testing rise to the level of "conception" by contributing to the definite and permanent idea of the invention as claimed in the '328 Patent, or was his role confined to the non-inventive reduction to practice of Dr. Brar's pre-existing concepts?
A key alternative issue will be one of "ownership obligation": Even if found to be a co-inventor, did Defendant's employment agreements create an express contractual obligation to assign his rights, or do the facts support an implied obligation to assign under the "directed to invent" doctrine, thereby giving Plaintiffs sole legal title to the patent?