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Pedersen v. Geschwind

United States District Court, D. Maryland

October 29, 2015


         Decided October 27, 2015.

Page 406

         For Peter L. Pedersen, Plaintiff: Ezra Gollogly, Louis Paul Malick, Kramon and Graham PA, Baltimore, MD; Lawrence B Goodwin, PRO HAC VICE, Law Offices of Lawrence B Goodwin PC, New York, NY; Shahrokh Falati, PRO HAC VICE, Falati, Albany, NY.

         For Jean-Francois Geschwind, Johns Hopkins University School of Medicine, The Johns Hopkins University, Defendants: Steven David Frenkil, LEAD ATTORNEY, Miles and Stockbridge PC, Baltimore, MD; Donald R Ware, Michael Hoven, PRO HAC VICE, Foley Hoag LLP, Boston, MA.

Page 407


         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,[1] and no hearing is required, Local Rule 105.6 (D. Md. 2014). For the reasons explained below, Plaintiff's Request for Leave will be DENIED, and Defendants' Motion to Dismiss will be GRANTED.

         I. Background[2]

         This case concerns the inventorship of two patents directed toward the chemotherapeutic use of certain adenosine triphosphate (" ATP" ) inhibitors,[3] most notably a substance called 3-bromopyruvate (" 3-BrPA" ). U.S. Patent No. 7,547,673 (" the '673 patent" ) is directed to the treatment of liver cancer, while U.S. Patent No. 8,119,116 (" the '116 patent" ) is directed to the treatment of malignant tumors more generally.[4] The patents list three inventors: Plaintiff Pedersen, Defendant Geschwind,

Page 408

and one Young Hee Ko, a nonparty.[5] JHUSOM owns both patents by assignment from the inventors, though JHU is nominal assignee of the '673 patent. (ECF No. 12 ¶ ¶ 12-13.)

         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.)[6] One year later, Plaintiff and Ko published a related article in Cancer Research : they allowed Geschwind to appear on the byline as the first-named author, ostensibly at his request. ( Id. ¶ 31.) Around this time, Geschwind allegedly began taking public credit for the discovery of 3-BrPA's chemotherapeutic properties. ( Id. ¶ ¶ 31-32.)

         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.[7] The OTL relies

Page 409

on the information in these disclosure forms in determining whether to pursue patent protection and/or commercialization. (ECF No. 12-6 at 2.) On the disclosure form, Plaintiff identified Ko as " lead inventor" of an invention he described as " 3-Bromopyruvic Acid as a Potent Anticancer Agent Delivered Intraarterially" ; he identified Geschwind and himself as " additional inventors." ( Id. at 2-3.) Notably, all three translational team members signed the form. However, Plaintiff now claims that he mistakenly included Geschwind and himself because he was " not familiar with the difference between inventorship of a patent and authorship of an article." (ECF No. 12 ¶ 29.) According to Plaintiff, Geschwind could not be considered an inventor because he conducted no hands-on benchside experiments and did not even know what 3-BrPA was before Ko educated him. ( Id. ¶ 41.)[8]

         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).

         II. Plaintiff's Request for Leave to File a Surreply

Page 410

          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" ).[9] But here again, Defendants' contention was responsive to an issue raised in Plaintiff's Complaint and discussed throughout the briefs--namely, to what extent (if any) might Plaintiff face sanctions for his allegedly false statement on the JHUSOM invention disclosure?

         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.[10]

         III. Standard for a Motion to Dismiss for Lack of Subject Matter Jurisdiction

         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

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they are not mere pleading requirements but rather an indispensable part of the plaintiff's case, each element must be supported in the same way as any other matter on which the plaintiff bears the burden of proof, i.e., with the manner and degree of evidence required at the successive stages of the litigation." Id. at 561.

         " 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.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).

         IV. Analysis

         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.[11] The statute contemplates two avenues for correction of inventorship: First, if all parties and their assignees are in agreement, and if the factual proof is sufficient, the Director of the USPTO may issue a certificate correcting an inventorship error. § 256(a). Second, in the absence of agreement, a court may--on notice and hearing of all parties concerned--order the Director to issue such a certificate. § 256(b).

         The United States Court of Appeals for the Federal Circuit[12] has recognized that, while a " concerned" party falls within " the purview of the statute," such a party " must meet constitutional standing requirements in order to invoke it." Chou v. Univ. of Chi., 254 F.3d 1347, 1357 (Fed. Cir. 2001); see alsoLarson v. Correct Craft, Inc., 569 F.3d 1319, 1326 (Fed. Cir. 2009) (" Chou. . . teaches that a plaintiff seeking correction of inventorship under ยง 256 can pursue that claim in federal court only if the ...

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