JACK T. KRAUSER, Plaintiff-Appellant,
BIOHORIZONS, INC., BIOLOK INTERNATIONAL, INC., AND BIOHORIZONS IMPLANT SYSTEMS, INC., Defendants-Appellees
Appeal from the United States District Court for the Southern District of Florida in No. 10-CV-80454, Judge Kenneth A. Marra.
TRANSFERRED TO THE ELEVENTH CIRCUIT.
ROBERT UNIKEL, Kaye Scholer LLP, of Chicago, Illinois, argued for plaintiff-appellant. With him on the brief were DEANNA KEYSOR and MICHELLE MAREK. Of counsel on the brief were RONALD M. GACHÉ and SCOTT A. SIMON, Shapiro Fishman & Gache LLP, of Boca Raton, Florida.
CHRISTOPHER N. SIPES, Covington & Burling LLP, of Washington, DC, argued for defendants-appellees. With him on the brief was MICHAEL N. KENNEDY. Of counsel was JEREMY D. COBB.
Before LOURIE, CLEVENGER, and DYK, Circuit Judges.
Dyk, Circuit Judge
This case involves a suit for declaratory judgment seeking to establish ownership rights in a dental implant system. Plaintiff Jack T. Krauser appeals from the final judgment of the United States District Court for the Southern District of Florida in favor of defendants (BioHorizons, Inc., BioLok International, Inc., and BioHorizons Implant Systems, Inc., collectively, " BHI", formerly Minimatic Implant Technology,
Inc. or " Minimatic" ). The district court held that Krauser did not have any ownership rights to the dental implant system manufactured by BHI. Because we hold that we do not have jurisdiction to hear this appeal, we transfer this appeal to the Eleventh Circuit.
In late 1987, Krauser, a periodontist, designed a dental implant system. In May 1988, he employed Minimatic, the predecessor of defendant BHI, to produce prototypes of the system. Krauser paid Minimatic $200 to produce drawings and prototypes based on Krauser's initial drawings and work product. At this stage, there was apparently no written agreement governing ownership of the implant system. By March 1991, Minimatic " had successfully formulated implants, attachments, and other products based on [Krauser's work product]." J.A. 1317. To pursue marketing and sale of this system, Minimatic and Krauser entered into a written consulting, collaboration, and royalty agreement (the " 1991 Agreement" ), which specified that Krauser would develop new products for Minimatic and improve upon the dental implant system, and Minimatic would produce and sell the system and the associated products. The 1991 Agreement stated that the " [d]rawings [of the dental implant system] and 510(k)'s are the property of Minimatic." Under the 1991 Agreement, Krauser was entitled to receive a percentage of the net sales from the dental implant system, among other benefits.
In his role at Minimatic, Krauser allegedly collaborated with Leon Shaw, then President of Minimatic, on the development of dental implant systems. In 1994, Krauser obtained a patent, U.S. Patent No. 5,316,476 (the " Krauser patent" ), covering one component of the dental implant system and listing Krauser as the named inventor. In 1995 and 1999, respectively, Minimatic secured two patents covering dental implant systems, U.S. Patent Nos. 5,415,545 and 5,964,766, both naming Shaw as the sole inventor (collectively, the " Shaw patents" ).
In 1993, Krauser alleged that Minimatic had failed to pay the royalties due under the 1991 Agreement. Krauser sued Minimatic and Shaw for a declaration of ownership rights in state court, and for copyright infringement and infringement of the Krauser patent in federal district court. In 1996, while both suits were pending, Minimatic filed for bankruptcy, and Krauser filed claims in bankruptcy court against Minimatic corresponding to the claims asserted in the pending lawsuits. In May 1996, Minimatic and Krauser reached a settlement to resolve Krauser's outstanding claims (the " May 1996 Agreement" ). In the May 1996 Agreement, Minimatic " recognize[d] Krauser's significant individual contribution to the invention and creation of what is today known as the 'Minimatic Implant System' in concept, design, design application, ease of installation and overall system requirements." J.A. 206 ¶ ...