United States District Court, D. Maryland
MEMORANDUM AND ORDER RE: SUMMARY JUDGMENT
MARVIN J. GARBIS, District Judge.
The Court has before it Dr. John Isaacs' and Dr. Samuel Denmeade's Motion for Summary Judgment [Document 83], Counterclaim Defendant GenSpera, Inc.'s Motion for Summary Judgment [Document 106] and the materials submitted relating thereto. The Court has held a hearing and has had the benefit of the arguments of counsel.
As discussed more fully herein, two Johns Hopkins University ("JHU") professors obtained United States patents for a pharmaceutical. A post-graduate student working for the professors claims that she should have been named as a coinventor. She seeks the imposition of a constructive trust upon benefits received by the professors.
A. The Patents
During, and before, 2000, Drs. John Isaacs ("Isaacs") and Samuel Denmeade ("Denmeade"), while working as professors at JHU, conceived of and developed the idea for a prodrug that would be toxic to prostate cancer cells ("the Prodrug").
Under its intellectual property policy, JHU retains the rights to inventions developed through the university. Accordingly, in December 2000, JHU filed a provisional patent application ("the Application") disclosing the Prodrug, naming Isaacs and Denmeade as co-inventors. In November 2001, JHU filed the related Patent Cooperation Treaty ("PCT") application.
On December 23, 2008, United States Patent No. 7, 468, 354 ("the 354 Patent") was issued to Isaacs and Denmeade,  including a claim relating to a compound referred to herein as "AMM9." A continuation of the 354 Patent, Patent No. 7, 767, 648 ("the 648 Patent"), was published on June 25, 2009 and issued on August 3, 2010.
In late 2003, Isaacs and Denmeade - having been assigned the rights to the Application - joined with others to form GenSpera, Inc. ("GenSpera"). Since its incorporation, GenSpera has been involved in the development of pharmaceutical products and intellectual property, including, but not limited to, those relating to the Application.
At all times, Isaacs and Denmeade have been minority shareholders in GenSpera, each owning about 4% of the corporate stock.
GenSpera accepted financial responsibility for the costs of prosecution of the Application and, in early 2004, Isaacs and Denmeade issued a letter of intent to grant an exclusive license to GenSpera in any resulting patents.
GenSpera began phase one clinical trials of G-202 in early 2010. In April 2011, Isaacs and Denmeade granted an exclusive worldwide license to the 354 Patent and the 648 Patent (collectively, "the Patents") to GenSpera.
C. Mhaka's Alleged Co-inventorship
From 1999 to 2005, Annastasiah Mudiwa Mhaka ("Mhaka") was working as a doctoral candidate graduate student in Isaacs' and Denmeade's laboratory. Denmeade served as Mhaka's thesis advisor.
Mhaka performed research related to Isaacs' and Denmeade's prodrug hypothesis to determine which peptide transport vehicle would be the most effective prodrug. According to Mhaka, her research led her, in 2003, to create a compound, AMM9, which ultimately formed the only prodrug claimed in the 354 patent.
Mhaka claims that her creation of the AMM9 compound was an inventive contribution and that she should have been named as a joint inventor of the Patents.
Mhaka wrote up her research findings and presented them to Denmeade, as her thesis advisor, in early 2004. According to Mhaka, Denmeade instructed her to delete all the information disclosing the structure and nature of the AMM9 compound, purportedly to avoid any public disclosure of the novel compound prior to the issuance of the 354 patent. Mhaka informed Denmeade that she thought she should be included as an inventor on the pending patent, but Denmeade advised her that she could not be included. Mhaka claims that she continued, through 2006, to ask for permission to publish her AMM9 research, but Denmeade denied her the necessary consent.
Mhaka left JHU in 2005 to join a venture capital firm, where she was involved in intellectual property research, including searches of patent databases and drafting provisional patent applications.
II. PROCEDURAL SETTING
On March 12, 2012, GenSpera filed Case No. MJG-12-772 seeking a declaratory judgment establishing that Isaacs and Denmeade "were properly named as inventors" on the Patents "in accordance with 35 U.S.C. § 116" and that Mhaka should not be added to the Patents "as an additional inventor pursuant to 35 U.S.C. § 256." Compl. ¶¶ 37, 42, ECF No. 1, MJG-12-772.
Mhaka counterclaimed seeking to be added as an inventor of the Patents by virtue of 35 U.S.C. § 256. See Answer, ECF No. 16, MJG-12-772. After discovery, the parties filed crossmotions for summary judgment. On April 30, 2013, the Court issued the Memorandum and Order Re: Procedural Matters [Document 59] granting summary judgment to GenSpera because, as discussed therein, a finding that Mhaka added an invention to the Application after the disclosure was filed would invalidate the Patents, and a district ...