James K. Bredar, United States District Judge.
Professor Peter L. Pedersen ("Plaintiff") brought this action for correction of inventorship under 35 U.S.C. § 256, naming as defendants Dr. Jean-Francois Geschwind, The Johns Hopkins University School of Medicine ("JHUSOM"), and The Johns Hopkins University ("JHU") (collectively, "Defendants"). Now pending before the Court are Defendants' Motion to Dismiss pursuant to Rules 12(b)(1) and 12(b)(6) of the Federal Rules of Civil Procedure (ECF No. 23) and Plaintiff's Request for Leave of Court to File a Surreply (ECF No. 32). The issues have been briefed,
This case concerns the inventorship of two patents directed toward the chemotherapeutic use of certain adenosine triphosphate ("ATP") inhibitors,
Plaintiff alleges that "Ko was the sole inventor of the subject matter of the invention" (id. ¶ 40) and that, consequently, Ko alone should receive credit for the '673 and '116 patents.
Plaintiff is a professor in the JHUSOM Department of Biological Chemistry. According to Plaintiff, Geschwind (a former member of the JHUSOM Department of Radiology) approached Plaintiff in July 1999 to discuss the possibility of delivering chemotherapeutic agents via an arterial delivery system. (Id. ¶ 18.) Thereafter, Plaintiff, Geschwind, and Ko formed a "translational research team" with the goal of "translating findings from basic laboratory research into use in clinical medicine." (Id. ¶ 19.) Ko, the "investigator who would lead the search for the best therapeutic agent for liver cancer," determined that 3-BrPA would be an especially potent inhibitor of tumor growth (id.), and she conducted a series of experiments with laboratory animals, the success of which reinforced her theory. (Id. ¶ 21.) Plaintiff contends that Geschwind's sole contribution during this experimentation phase was to "guide the catheter into the hepatic arter[ies]" of laboratory animals and "push the plunger." (Id. ¶ 23.)
In 2001, Ko published an article in Cancer Letters describing the results of the 3-BrPA study: Plaintiff and Geschwind were listed as coauthors. (Id. ¶¶ 25-27.)
In August 2001, Plaintiff began the "process of seeking patent protection for Ko's discovery" by executing an "invention disclosure" (id. ¶ 29), an internal JHUSOM document used to notify the JHUSOM Office of Technology Licensing ("OTL") about a possible invention.
Plaintiff alleges that the purportedly erroneous invention disclosure was submitted as part of a provisional patent application in fall of 2001. (Id. ¶ 32.) That application eventually ripened into the '673 patent (issued in June 2009) and the '116 patent (issued in February 2012). (Id.) On June 11, 2015, Plaintiff filed this action under 35 U.S.C. § 256, seeking (1) a declaration that Ko is the sole inventor of both patents and (2) an order directing the United States Patent and Trademark Office ("USPTO") to issue a Certificate of Correction accordingly.
Those are the underlying facts. But the questions before the Court at this stage have little to do with scientific discovery or patent administration. Instead, they concern justiciability and the anomalous interests of a party who seeks to rid himself (and another) of what ordinarily are pecuniary and professional benefits associated with recognized inventorship.
Defendants filed a Motion to Dismiss on July 20, 2015. (ECF No. 23.) Plaintiff filed a response in opposition on August 24, 2015 (ECF No. 29), and Defendants replied on September 11, 2015 (ECF No. 31).
Before considering the substance of Defendants' pending Motion to Dismiss, the Court must address an ancillary procedural matter. On September 21, 2015, Plaintiff filed a Request for Leave of Court to File a Surreply. (ECF No. 32.) Defendants opposed Plaintiff's request (ECF No. 33), and Plaintiff submitted a memorandum in reply (ECF No. 36).
"Unless otherwise ordered by the Court, surreply memoranda are not permitted to be filed." Local Rule 105.2(a) (D.Md.2014). Though disfavored, surreplies "may be permitted when the moving party would be unable to contest matters presented to the court for the first time in the opposing party's reply." Khoury v. Meserve, 268 F.Supp.2d 600, 605 (D.Md. 2003), aff'd, 85 Fed.Appx. 960 (4th Cir. 2004) (per curiam).
Plaintiff wishes to present two arguments in his surreply. First, he disputes Defendants' assertion in their reply memorandum that Geschwind should qualify as a joint inventor of the '673 and '116 patents as a matter of black-letter patent law. (ECF No. 32-1 at 4.) But that issue is immaterial to the pending Motion to Dismiss, which concerns Plaintiff's standing to bring a section 256 action in the first instance. Moreover, Defendants' comments on inventorship law are responsive to allegations from the Complaint that Plaintiff rehashed in the opening pages of his opposition memorandum. Had Plaintiff wished to include additional case law or analysis, he could have done so there.
Second, Plaintiff assails a minor point raised in Defendants' reply memorandum concerning Plaintiff's hypothetical liability to the National Institutes of Health ("NIH").
Plaintiff has not demonstrated that any aspect of Defendants' reply memorandum falls outside the scope of argument framed by the earlier papers. Consequently, Plaintiff's Request for Leave to File a Surreply will be denied.
In Lujan v. Defenders of Wildlife, 504 U.S. 555, 560, 112 S.Ct. 2130, 119 L.Ed.2d 351 (1992), the Supreme Court confirmed the three elements that comprise the "irreducible constitutional minimum of standing": (1) an injury in fact that is (2) fairly traceable to the challenged action of the defendant and that will (3) likely be redressed by a favorable decision. The party invoking federal jurisdiction — typically, the plaintiff — bears the burden of establishing these elements. "Since
"When a defendant raises standing as the basis for a motion under Rule 12(b)(1) to dismiss for lack of subject matter jurisdiction... the district court `may consider evidence outside the pleadings without converting the proceeding to one for summary judgment.'" White Tail Park, Inc. v. Stroube, 413 F.3d 451, 459 (4th Cir.2005) (quoting Richmond, Fredericksburg & Potomac R. Co. v. United States, 945 F.2d 765, 768 (4th Cir.1991)). When ruling on a 12(b)(1) motion, the court accepts the plaintiff's "well-pleaded allegations as true and construe[s] the complaint in favor of the plaintiff." Finnin v. Bd. of Cnty. Commr's, 498 F.Supp.2d 772, 777 (D.Md. 2007) (citing Adams v. Bain, 697 F.2d 1213, 1219 (4th Cir.1982)). However, the burden remains on the plaintiff to prove that subject matter jurisdiction exists. Evans v. B.F. Perkins Co., 166 F.3d 642, 647 (4th Cir.1999).
Section 256, Title 35, United States Code, is a savings statute, a mechanism for avoiding patent invalidity in case of misjoinder or nonjoinder of inventors.
The United States Court of Appeals for the Federal Circuit
Pursuant to Rule 12(b)(1) of the Federal Rules of Civil Procedure, Defendants here
The Article III case-or-controversy doctrines establish "fundamental limits on federal judicial power in our system of government." Allen v. Wright, 468 U.S. 737, 750, 104 S.Ct. 3315, 82 L.Ed.2d 556 (1984), abrogated on other grounds by Lexmark Int'l, Inc. v. Static Control Components, Inc., ___ U.S. ___, 134 S.Ct. 1377, 188 L.Ed.2d 392 (2014). Among these doctrines, none is more basic — or more essential — than the requirement that a plaintiff must have standing to proceed in federal court. Specifically, the plaintiff must show an "injury in fact," i.e., an "invasion of a legally protected interest which is (a) concrete and particularized... and (b) `actual or imminent, not "conjectural" or "hypothetical."'" Lujan, 504 U.S. at 560, 112 S.Ct. 2130 (quoting Whitmore v. Arkansas, 495 U.S. 149, 155, 110 S.Ct. 1717, 109 L.Ed.2d 135 (1990)). The plaintiff must also demonstrate a "causal connection between the injury and the conduct complained of," i.e., the injury must be fairly traceable to the challenged action and not attributable to some independent action of a nonparty. Id. Finally, it must be "likely" — as opposed to merely "speculative" — that the "injury will be `redressed by a favorable decision.'" Id. at 561, 112 S.Ct. 2130 (quoting Simon v. E. Ky. Welfare Rights Org., 426 U.S. 26, 38, 96 S.Ct. 1917, 48 L.Ed.2d 450 (1976)).
Over the years, the Supreme Court has routinely rejected suits in which the harm alleged is too speculative or generalized. See, e.g., Clapper v. Amnesty Int'l USA, ___ U.S. ___, 133 S.Ct. 1138, 1150 n. 5, 185 L.Ed.2d 264 (2013) (finding standing requirements unsatisfied where an "attenuated chain of inferences" was necessary to reach the harm that plaintiffs complained of); Steel Co. v. Citizens for a Better Env't, 523 U.S. 83, 107, 118 S.Ct. 1003, 140 L.Ed.2d 210 (1998) (recognizing that although a litigant may derive pleasure from the fact that the "Treasury is not cheated," a "wrongdoer gets his just deserts," or "the Nation's laws are faithfully enforced," such "psychic satisfaction is not an acceptable Article III remedy because it does not redress a cognizable Article III injury").
Because the rules of standing are "threshold determinations of the propriety of judicial intervention," it is the plaintiff's responsibility "clearly to allege facts demonstrating that he is a proper party to invoke judicial resolution of the dispute and the exercise of the court's remedial powers." Warth v. Seldin, 422 U.S. 490, 518, 95 S.Ct. 2197, 45 L.Ed.2d 343 (1975). Here, as will be seen, Plaintiff has failed to allege such facts: though he proffers various interests allegedly tied to the patents' fate, he has not identified a cognizable injury redressable by the section 256 relief that he seeks.
In his Complaint, Plaintiff first alleges that "[a]s a named inventor on the Patents, [he] has an interest in correcting the inventorship of the Patents so that they reflect the proper inventor." (ECF No. 12 ¶ 32.) Plaintiff evidently equates this
In his opposition memorandum, Plaintiff posits that he "seeks to enforce his right not to have his name used in a public way to promote the commercial activities of another" (the "other" being assignee JHUSOM and its licensees). (ECF No. 29-1 at 9.) It is not clear whether Plaintiff intends this argument as a defense of his "named inventor" interest, but in any event the argument is unavailing. Plaintiff nowhere alleges that JHU's Intellectual Property Policy ("IP Policy") is unlawful or that the assignment was somehow defective: on the contrary, by executing a JHUSOM invention disclosure, Plaintiff signaled that he understood and assented to the IP Policy. Plaintiff cannot seriously contend that he has standing to sue in federal court simply because he is unhappy with the manner in which a bona fide assignee of a patent chooses to deploy or license its interest. Such a theory would confer near-limitless standing on disaffected scientists, well beyond the bounds of the particularized injury that Article III mandates.
Plaintiff's "named inventor" theory does not support his claim for standing.
Plaintiff next identifies two financial interests that he believes are sufficient to establish his standing. First, he claims a direct financial interest stemming from his personal share of any net revenue that the patents generate. (ECF No. 12 ¶ 33.) Second, he claims an indirect financial interest through his laboratory and/or his department. (Id. ¶ 34.)
In Chou, the Federal Circuit recognized that a plaintiff need not prove an ownership stake in a patent in order to pursue a section 256 claim; a concrete financial interest, such as royalty or revenue-sharing rights, is good enough. 254 F.3d at 1359. But merely identifying a legally protected interest does not end the justiciability inquiry; rather, Plaintiff must identify an actual or imminent injury to that interest. Dr. Chou alleged that she had been wrongfully omitted from certain patents; she further averred that, as a named inventor, she should have been entitled to 25% of gross royalties and up-front licensing payments as well as a 25% equitable stake in any new companies that formed around her inventions. Id. If, the Federal Circuit reasoned, Dr. Chou had indeed been deprived of those financial interests, "then she [would] have suffered an injury-in-fact, i.e., the loss of those benefits." Id.
Here, by contrast, Plaintiff presently enjoys a financial interest equal to one-third of the 35% "inventors' personal share" under the IP Policy (ECF No. 12-7 at 5) — or approximately 11.67% of net revenue. But if the Court were to grant the "relief" that Plaintiff seeks and order his name (and Geschwind's) removed from the patents, Plaintiff would thereafter be entitled to a 0% share. Plaintiff has thus not alleged an actual or imminent financial injury; he has instead requested one.
Plaintiff's indirect financial theory fares no better. In his Complaint, Plaintiff suggests that the shares presently allocable to
As for the Department of Biological Chemistry, the math is slightly more complicated. Under the IP Policy, departments are entitled to a 15% share; assuming that Ko would be treated as a member of the Department of Biological Chemistry for purposes of revenue distribution,
Article III courts exist to remedy injuries, not to inflict them. Plaintiff's convoluted financial theories cannot support this claim for standing.
Plaintiff's next theory of standing is particularly strained. He alleges that "Geschwind's notoriety and misleading claims have ... resulted in funds being directed toward [Geschwind]." (ECF No. 12 ¶ 35.) For instance, Plaintiff asserts that JHU provided Geschwind's research company with an exclusive license to commercially exploit the patents, creating a
Plaintiff's competitor theory is nothing more than a string of conclusions, untethered to any firm factual claims. Plaintiff speculates that Geschwind's recent success can be attributed to his association with the patents; Plaintiff then conjectures that Geschwind may, at some indefinite future time, apply for and secure funding that might have otherwise hypothetically inured to Plaintiff's benefit. The Supreme Court has firmly rejected this kind of speculative, "what if" pleading. See Clapper, 133 S.Ct. at 1143 (rejecting a theory of future injury as "too speculative to satisfy the well-established requirement that threatened injury must be `certainly impending'"). Moreover, even if Plaintiff could identify particular pending grants for which both he and Geschwind are in contention, it is unlikely that any disadvantage to Plaintiff's competitive position would give rise to an Article III injury. Cf. Hardin v. Ky. Utils. Co., 390 U.S. 1, 5-6, 88 S.Ct. 651, 19 L.Ed.2d 787 (1968) ("[E]conomic injury which results from lawful competition cannot, in and of itself, confer standing on the injured [party] to question the legality of any aspect of [a] competitor's operations.").
The Court will not (indeed, cannot) allow Plaintiff to speculate his way into standing.
Aside from his purported "named inventor," financial, and competitor interests, Plaintiff believes he has an "interest in correcting the inventorship designations on the Patents because the [USPTO] relied on a declaration signed by [Plaintiff]" improperly naming Ko, Geschwind, and himself as inventors. (ECF No. 12 ¶ 36.) Relatedly, Plaintiff posits that he was the "principal investigator"
As for the Gold Book, Plaintiff's fears are groundless. Both JHU and JHUSOM are named Defendants here. They have made clear that they do not intend to discipline Plaintiff; on the contrary, they "believe[] the inventorship listed on the Patents is correct." (ECF No. 23-1 at 20.) Further, Plaintiff admits that he brought the inventorship discrepancy to the attention of certain officials in JHU's Technology Transfer Office back in 2009 (ECF No. 29-2 at 3); the fact that JHU took no responsive action reinforces the Court's conclusion that any academic sanction is vanishingly improbable and unduly speculative.
As for the USPTO and the NIH, Plaintiff has failed to identify a single statute or regulation that would authorize these agencies to take adverse action against him. Through its own research, the Court discovered that willful false statements on an inventor's oath or declaration, 35 U.SC. § 115, can trigger criminal penalties;
Plaintiff's unanchored qualms about the possible consequences he might face for an erroneous statement he made almost fifteen years ago do not give him standing to bring a section 256 claim.
Finally, Plaintiff raises a pure reputational interest: he asserts that his status as a "fair and honest academician is and will be adversely affected by the inclusion of himself and Geschwind as co-inventors." (ECF No. 12 ¶ 39.) In his opposition memorandum, Plaintiff attempts to pad this naked allegation by asserting that the harm is "particularly acute with regard to [Plaintiff's] potential colleagues — young researchers who are trying to determine which lab they should join and who are particularly attuned to a potential supervisor's reputation for accurately attributing discoveries made by subordinate researchers in his laboratory." (ECF No. 29-1 at 24.) These "young researchers," so the thinking goes, will hesitate to work for a boss with a penchant for taking credit where credit is not due.
Assuming that Plaintiff's misgivings about the state of his academic reputation are genuine, the question remains: is this the kind of injury cognizable in an Article III court? Several other courts have opined that reputational injuries may support standing to bring a section 256 claim, and in a very recent opinion the Federal Circuit embraced this view. See Shukh v. Seagate Tech., LLC, 803 F.3d 659, 662-63(Fed.Cir.2015) ("Today, we hold that
Cases predating Shukh placed similar emphasis on the advantages associated with named inventorship. Compare Czarnik v. Illumina, Inc., 437 F.Supp.2d 252, 256-57 (D.Del.2006) (standing was satisfied where plaintiff alleged that his omission from patents harmed his reputation in the scientific community, deprived him of prestige, and impacted his ability to secure a lucrative position at a start-up company), with Barnette v. Dicello, 616 F.Supp.2d 709, 714 (N.D.Ohio 2007) (standing was unsatisfied where plaintiff failed to show how patent designation would constitute a mark of success in his field). Even Krauser v. Evollution IP Holdings, Inc., 975 F.Supp.2d 1247 (S.D.Fla.2013), which arguably adopts a more expansive theory of the reputation interest, concerned the rights of an inventor who claimed to have been omitted from certain patents. Dr. Krauser alleged that recognition for his contributions to each invention would bolster his stature in his field, and he claimed a general economic interest (albeit not ownership rights or a specified entitlement to any particular streams of revenue).
At bottom, the reputational interest recognized by a handful of courts and now sanctioned by the Federal Circuit is an interest in the benefits that flow from inventorship: public recognition; vocational leverage; pecuniary gain. These benefits are concrete and fairly traceable to named inventorship on a patent; deprivation of such named inventorship is therefore an injury that courts can redress through the relief prescribed in section 256. By contrast, Plaintiff's allegations about his academic reputation are conclusory and speculative. He supposes that his reputation "is and will be adversely affected by the inclusion of himself and Geschwind as co-inventors" (ECF No. 12 ¶ 39), yet he proffers no factual content to support this supposition. He does not identify a single instance in which he has been criticized, ostracized, or deprived of any opportunity whatsoever because of his error; he points to no actual financial loss, no forfeited teaching or research opportunities, nor even an uncomfortable conversation with a colleague. Plaintiff's fears about "young researchers" avoiding employment in his lab are similarly conjectural: he does not identify a single instance in which a would-be colleague has declined or even hesitated to work with him because of the inventorship discrepancy.
Patent law is fundamentally about "promot[ing] the Progress of Science and useful Arts"
For the foregoing reasons, an Order shall enter DENYING Plaintiff's Request for Leave of Court to File a Surreply (ECF No. 32) and GRANTING Defendants' Motion to Dismiss (ECF No. 23).
For the reasons stated in the foregoing Memorandum, it is ORDERED:
To be clear, the patents protect particular treatment methods — not the chemical substances in and of themselves, nor even the use of the substances as anticancer agents. In fact, officials at The Johns Hopkins University ("JHU") had initially attempted to secure protection for, inter alia, a "method of treating cancer in a subject comprising administering to the subject an effective amount of [certain compounds, including 3-BrPA]." Pre-Grant Publications, Pat. Application Info. Retrieval, http://portal.uspto.gov/pair/PublicPair (accessed by searching for Application No. 10/243,550) (last visited Oct. 27, 2015). However, the United States Patent and Trademark Office ("USPTO") rejected these claims as disclosed in the prior art. (ECF No. 31-1 at 10-11.) It was only after JHU amended the claims to focus on the unexpectedly efficacious intra-arterial injection of these substances that the USPTO found the claims novel and free of prior art. (ECF Nos. 31 at 10, 31-2 at 6.)
Though Ko is not a party to this litigation, she indicated in a June 9, 2015, letter — appended to Plaintiff's Complaint — that she is "aware of, and agree[s] with, the relief sought in this action," and she further stated that she would be "bound by any decision rendered in this action on the merits." (ECF No. 12-2 at 2.)
The 2006 deposition related to an employment discrimination suit filed in this District by Ko against JHU and several of its employees, including Geschwind. Ko's suit did not include a section 256 correction-of-inventorship claim, although in her lengthy complaint she foreshadowed several of the allegations presented here, most notably that Geschwind's research training was "inadequate to allow him to contribute anything to [the research] effort other than the actual delivery of the chosen compound" (ECF No. 23-4 at 11) and that Plaintiff and Geschwind had "little or no role in the discovery of the ... anti-cancer properties of 3-BrPA" (id. at 14).
Judge Quarles dismissed most of Ko's claims, see Ko v. The Johns Hopkins Univ., Civ. No. WDQ-05-1475, 2006 WL 351735 (D.Md. Jan. 4, 2006) (ECF No. 47), and the parties subsequently settled. As a condition of settlement, Ko executed a broad release and covenant not to sue, which covered not only those claims raised in her discrimination suit but also any other then-existing claims against any of the named defendants, with narrow exceptions. (ECF No. 23-2 at 3-4.)
Perhaps Ko herself could assert Article III standing to bring a section 256 claim today, but perhaps any such suit would be barred by the prior release and covenant not to sue.
If Defendants are correct, then the effect of Plaintiff's suit would be to strip the Department of Biological Chemistry of what little interest it has in the patents. Fortunately, the Court need not delve any further into this particular dispute: even assuming that Ko was a member of the Department of Biological Chemistry, Plaintiff cannot satisfy Article III's standing requirements on the basis of his alleged financial interests.
