Summary
This Federal Circuit opinion affirms the District Court for the District of Delaware's grant of summary judgment dismissing a state law conversion claim as preempted by federal patent law. The court also upheld the district court's evidentiary ruling excluding a supplemental expert report and its factual findings rejecting the appellant's claims of sole and joint inventorship of a cryptocurrency mining patent.
Topics
Practice areas
Questions Presented
- Whether federal patent law preempts BearBox’s Louisiana state‑law conversion claim.
- Whether the district court abused its discretion in striking Dr. McClellan’s supplemental expert report.
- Whether BearBox proved by clear and convincing evidence that Austin Storms is a sole or joint inventor of the ’433 patent.
Holdings
- The conversion claim is preempted because it is essentially an inventorship/infringement cause of action that offers patent‑like protection for unpatented technology.
- The district court did not abuse its discretion; the supplemental report offered new opinions and was filed in bad faith, justifying exclusion.
- BearBox failed to meet the clear‑and‑convincing‑evidence standard; the district court’s finding that Storms is not a sole or joint inventor is affirmed.
Key quotations
“Under the Supremacy Clause, state law that conflicts with federal law is without effect.” (at *13)
“The district court correctly applied the Pennypack factors and found bad faith, prejudice, and disruption outweigh any benefit of admitting the supplemental report.” (at *2)
Factual background
Austin Storms founded BearBox LLC and developed a Bitcoin mining power‑management system. In May 2019 he emailed Lancium co‑founder Michael McNamara a product specification and related documents. Lancium later filed and was issued U.S. Patent No. 10,608,433 covering a similar system. BearBox sued alleging conversion, inventorship, and patent infringement.
Procedural history
The district court granted summary judgment dismissing BearBox’s Louisiana conversion claim as preempted, denied summary judgment on sole/joint inventorship claims, and struck Dr. McClellan’s supplemental expert report. BearBox appealed these rulings.