Facts

In 1996, Peter Besselink invented a bistable cell and an expandable tube made from bistable cells that could have more than one stable diameter. In March 1999, Besselink assigned his rights to his inventions to United Stenting. On June 9, 1999, United Stenting entered into an agreement with Memry Corporation, under which Memry was to assist United Stenting to develop larger bistable cell expandable tubes using technology developed by Besselink. United Stenting retained all rights to the technology. Memry obtained confidential information about the technology during the course of its work for United Stenting.

In April 2000, United Stenting and Besselink transferred their rights in the bistable cell technology to Jomed N.V. for $10 million and a continuing royalty. In June 2000, after Memry was paid for its work by United Stenting, a Memry employee met with an employee of Schlumberger Technology Corporation and proposed to use the Besselink bistable cell technology to build an expandable sand screen for use in an oil well borehole. Memry and Schlumberger entered into a joint development project for an expandable sandscreen. As part of this project, Memry and Schlumberger filed patent applications, claiming aspects of the bistable cell technology as their invention, including Besselink's invention.

In February 2003, Besselink discovered patent applications filed by Schlumberger claiming his invention. In November 2003, counterclaimant Kentucky Oil Technology N.V. acquired the bistable cell technology from a successor to Jomed.

COUNTERCLAIMANT'S CONTENTIONS:
Kentucky Oil contended that Memry breached the contract by transferring or making available to Schlumberger confidential information it had obtained in its work with United Stenting and by failing to assign to United Stenting all of the filed patent applications which were based on Besselink's bistable cell design.

COUNTER-DEFENDANT'S CONTENTIONS:
Memry contended that it did not breach the contract, that it did not transfer any confidential information to Schlumberger and that Mr. Besselink's invention was in the public domain.

Result

The jury reached a verdict of $6 million in favor of Kentucky Oil. The jury found that Memry had disclosed confidential information to Schlumberger which had used it for the expandable sandscreen project. It also found that Memry failed to assign to United Stenting the patent applications filed and the patents obtained based on Besselink's bistable cell design.

Other Information

Memry has filed one motion for judgment as a matter of law, and a motion for a new trial that have not been addressed by the Court. The motion(s) are based in part on: (1) that Kentucky Oil's expert failed to offer any testimony or other evidence that knowledgeable petroleum engineers could not construct the bi-stable sand screen from freely available public information; (2) that there is no provision in the Collaboration Agreement addressing information that was disclosed to the public prior to its execution, nor is there any provision concerning the retroactive application of the Collaboration Agreement to events that occurred before its execution; (3) that Dr. Ingberman failed to define the confidential information that was allegedly transmitted to STC and failed to follow the "yardstick" approach in his comparison of the oil well industry to the medical product industry; (4) that Kentucky Oil must make an election of remedies between specific performance and monetary damages; (5) that Memry Corporation is not legally responsible in its capacity as a former shareholder of Memry Holdings for the contractual obligations of Memry Europe, a former indirect subsidiary; and (6) that Kentucky Oil failed to establish that it had legal title to the initial bi-stable toggle design. Should judgment entered against it, Memry intends to appeal.