United States District Court, D. New Jersey
WILLIAM J. MARTINI, U.S.D.J.
Research LLC (“3ST”) and John Thottathil
(“Thottathil, ” and together with 3ST,
“Plaintiffs”) filed suit against Albany Molecular
Research, Inc. (“AMRI”), alleging intentional
interference with Thottahil's ownership and inventorship
interests in pending patent applications for which he
suffered damages. Thottathil's claims in essence rest on
AMRI's failure to name him as the sole inventor in the
filed applications for which no patents have issued. AMRI
filed this motion to dismiss, asserting federal law provides
no private right of action to challenge inventorship
determinations on pending patent applications. But should the
Court find any claim as alleged provides grounds for relief,
it requests transfer under 28 U.S.C. § 1404(a) to
another venue. No oral argument was held. Fed.R.Civ.P. 78(b).
For the reasons below, the motion to dismiss is
GRANTED and the motion to transfer is
DENIED as moot.
invented a prodrug technology (the “Technology”)
to offset the effects of prescription opioid drugs and
entered into an agreement with Waterville Valley Technologies
(“WVT”) to commercialize the Technology. Compl.
¶¶ 8, 16-17, ECF No. 1. To further the goal to
commercialize the Technology, WVT contracted with AMRI-a
contract research and manufacturing company-to test, develop,
and conduct laboratory research under Thottathil's
supervision. Id. ¶¶ 15, 19, 31.
April 2016, WVT filed the Waterville Non-Provisional Patent
Application (“WNPA”), naming only WVT and AMRI
employees as inventors. Id. ¶ 53. Months later,
based on the WNPA, AMRI filed two patent applications known
as the “AMRI Continuation Applications”
(“AMRI CA”). Id. ¶
Thottathil and AMRI scientists were named as co-inventors in
the AMRI CA. Id. ¶ 58. As to the WNPA and AMRI
CA, the United States Patent and Trademark Office
(“USPTO”) has yet to act on these patent
applications (the “Applications”).
crux of Thottathil's claims is that AMRI failed to name
him as the sole inventor in the Applications. And based on
the Applications, Plaintiffs' Complaint alleges six
causes of action against AMRI. Specifically, conversion of
intellectual property rights (Counts I and II), see
Id. ¶¶ 73-80, 81-88; tortious interference
with prospective economic advantage and business contracts
(Counts III and IV), see Id. 89-97
¶¶ 45, ¶¶ 98-107; and
judicial declarations of inventorship (Counts V and VI).
See Id. ¶¶ 108-111, ¶¶
112-115. AMRI seeks to dismiss the Complaint because the
Court cannot correct a named inventor when federal law
provides no private right of action for determinations of
inventorship on pending patent applications. This inability
to seek a judicial determination renders the remaining
conversion and tortious interference claims deficient.
See Def's Mem. 2, ECF No. 9-1. Yet, if any claim
survives this motion to dismiss, AMRI requests transferring
this action to the Northern District of New York where a
related case remains active. Id. at 15.
responds that the America Invents Act, which changed the
patent system, allows this Court to hear the inventorship
dispute. See Pls.' Opp'n 1. As part of this
change, Plaintiffs argue there lacks an administrative route
through the USPTO to resolve its inventorship dispute.
Id. at 4-5. Thus, Plaintiff suggests a private right
of action exists to correct patent inventorship in a patent
application. In reply, Defendant reasserts its arguments
that, per Federal Circuit precedent, this Court can only hear
inventorship disputes on issued patents, not on pending
applications. Def's Reply 1, ECF No. 12.
Rule of Civil Procedure 12(b)(6) provides for the dismissal
of a complaint, in whole or in part, if the plaintiff fails
to state a claim upon which relief can be granted. The moving
party bears the burden of showing that no claim has been
stated. Hedges v. United States, 404 F.3d 744, 750
(3d Cir. 2005). In deciding a motion to dismiss under Rule
12(b)(6), a court must take all allegations in the complaint
as true and view them in the light most favorable to the
plaintiff. See Warth v. Seldin, 422 U.S. 490, 501
(1975); Leamer v. Fauver, 288 F.3d 532, 535 (3d Cir.
a complaint need not contain detailed factual allegations,
“a plaintiffs obligation to provide the
‘grounds' of his ‘entitlement to relief
requires more than labels and conclusions, and a formulaic
recitation of the elements of a cause of action will not
do.” Bell Atl. Corp. v. Twombly, 550 U.S. 544,
555 (2007). Thus, the factual allegations must be sufficient
to raise a plaintiffs right to relief above a speculative
level, such that it is “plausible on its face.”
See Id. at 570; see also Umland v. PLANCO Fin.
Serv., Inc., 542 F.3d 59, 64 (3d Cir. 2008). “A
claim has facial plausibility when the plaintiff pleads
factual content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct
alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678
(2009) (citing Twombly, 550 U.S. at 556). While
“[t]he plausibility standard is not akin to a
‘probability requirement, ' [ ] it asks for more
than a sheer possibility.” Id. (citation
gist of Thottahil's claims center on AMRI's failure
to name him as the sole inventor in the Applications. He does
not assert that he has tried to have the omission corrected
during the pendency of the Applications and does not
describe, in not being named the sole inventor on the
Applications, how he suffered damages. In all,
Thottahil's claims are not ripe for adjudication because
no patent has issued. Thus, the Court will grant
Defendant's motion to dismiss.
Declaratory Judgment of Inventorship on Patent Applications
(Counts V and VI)
courts have original jurisdiction over claims “arising
under any Act of Congress relating to patents.” 28
U.S.C. § 1338(a). While true that “issues of
inventorship, infringement, validity, and enforceability
present sufficiently substantial questions of federal patent
law to support jurisdiction under section 1338(a), ”
with no patents issued, Plaintiffs cannot assert claims to
correct inventorship. See Bd. of Regents, Univ. of Tex.
Sys., ex rel. v. Nippon Tel. & Tel. Corp., 414 F.3d
1358, 1363 (Fed Cir. 2005) (citation omitted); 35 U.S.C.
§ 116. On that basis, there is no private ...