Mayo Clinic, Cerner Corp. et al. v. Elkin
Civil No. 09-322 (DSD/JJK) (D. Minn. 12/27/2010)
David S. Doty, Judge, United States District Court

Court’s introduction:
“This matter is before the court upon the motions to dismiss, to exclude expert opinions and for partial summary judgment by plaintiff Cerner Corporation (Cerner). Based on a review of the file, record and proceedings herein, and for the following reasons, the court grants in part the motion to dismiss and grants the motions to exclude expert opinions and for partial summary judgment.”

Excerpts: “This intellectual property dispute arises out of the employment of defendant Dr. Peter Elkin by plaintiff Mayo Clinic (Mayo). . . . During his tenure at Mayo, Elkin and a team of researchers worked on natural language processing (NLP) software. . . . Mayo claims that it owns the NLP software and source code. Elkin maintains that he owns the NLP software and source code. . . . Cerner and Mayo are parties to an exclusive license agreement governing the NLP software and source code (License Agreement). Cerner’s commercial product, Discern nCode, uses NLP technology. . . . Elkin claims that Discern nCode’s source code is substantially the same as the NLP code that he created, tested and published in MUMPS programming language before he arrived at Mayo. . . . Cerner moves to dismiss [Elkin's] counterclaims 79(a)-(e) for lack of standing and failure to state a claim . . .. Cerner also moves to exclude 3 expert testimony and for summary judgment on counterclaim 79(d) based on failure to provide admissible expert testimony.”

[The Court finds standing and denies the motion to dismiss as to counterclaims 79(a) and (b), but no standing as to 79(c), which it dismisses.]

[As to counterclaim 79(d),] “Elkin concedes that he has no registered copyright in the software and that without registration he cannot state a claim for infringement. Elkin contends, however, that he is not suing for copyright infringement, but rather for a declaration that Cerner has no right to copyright its product based on Elkin’s ownership of the disputed software. . . . [But Elkin's pleadings, memoranda, and Daubert briefings all refer to copyright law and require finding a violation of an exclusive right to make derivative works.] Because he has no registered copyright, Elkin fails to support an essential element of his claim, and summary judgment is warranted. . . . Summary judgment is also warranted because Elkin failed to show copying, the second element of an infringement claim. . . . Elkin argues that he should be allowed to testify as an expert because he is among the world’s top researchers in biomedical informatics. . . . Despite Elkin’s credentials, he is not qualified to present expert opinion about the similarity between Discern nCode source code and MUMPS source code when he has never seen the Discern nCode source code. . . . [As to another expert, Love,] Cerner argues that [Love did not apply the] Abstraction-Filtration-Comparison (AFC) [test for similarity]. Elkin admits that Love did not apply the AFC test but argues that the analysis is not required because it has not been adopted by the Eighth Circuit. . . . Love’s testimony is not based on reliable principles, and is inadmissible.”

source_code_cpyrt_ev_10113465146.pdf

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