United States District Court, D. Maryland
PETER L. PEDERSEN, Plaintiff
JEAN-FRANCOIS GESCHWIND, et al., Defendants
October 27, 2015.
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,
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.
K. Bredar, United States District Judge.
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, 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
case concerns the inventorship of two patents directed toward
the chemotherapeutic use of certain adenosine triphosphate
(" ATP" ) inhibitors, 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. The patents list three inventors:
Plaintiff Pedersen, Defendant Geschwind,
and one Young Hee Ko, a nonparty. JHUSOM owns both patents
by assignment from the inventors, though JHU is nominal
assignee of the '673 patent. (ECF No. 12 ¶ ¶
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.
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.
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.) 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. ¶ ¶
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. The OTL relies
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.)
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
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
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).
Plaintiff's Request for Leave to File a Surreply
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).
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.
Plaintiff assails a minor point raised in Defendants'
reply memorandum concerning Plaintiff's hypothetical
liability to the National Institutes of Health ("
NIH" ). 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
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.
Standard for a Motion to Dismiss for Lack of Subject Matter
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
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
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).
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 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.
United States Court of Appeals for the Federal
Circuit 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 § 256 can pursue that claim in federal court only
if the ...