Cold Spring Harbor Lab. v. Llp

• Decision Date: 22 January 2011
• Docket Number: No. 10–CV–661 (ADS)(AKT).,10–CV–661 (ADS)(AKT).
• Citation: 762 F.Supp.2d 543
• Parties: COLD SPRING HARBOR LABORATORY, Plaintiff,v.ROPES & GRAY LLP and Matthew P. Vincent, Defendants.
• Court: U.S. District Court — Eastern District of New York

762 F.Supp.2d 543

COLD SPRING HARBOR LABORATORY, Plaintiff,

v.ROPES & GRAY LLP and Matthew P. Vincent, Defendants.

No. 10–CV–661 (ADS)(AKT).

United States District Court, E.D. New York.

Jan. 22, 2011.

Scully, Scott, Murphy & Presser, P.C. by Peter I. Bernstein, Esq., Chad E. Ziegler, Esq., of Counsel, Garden City, NY, for Plaintiff.Patterson Belknap Webb & Tyler LLP, by Philip R. Forlenza, Esq., Eugene M. Gelernter, Esq., Nicolas Commandeur, Esq., Irena Royzman, Esq., Of Counsel, New York, NY, for Defendant Ropes & Gray LLP.L'Abbate, Balkan, Colavita & Contini, L.L.P., by Anthony P. Colavita, Esq., Scott E. Kossove, Esq., Of Counsel, Garden City, NY, for Defendant Matthew P. Vincent.Sherin and Lodgen LLP by Robert J. Muldoon, Esq., Thomas W. Kirchofer, Esq., Of Counsel, Boston, MA, for Defendant Matthew P. Vincent.

MEMORANDUM OF DECISION AND ORDER

SPATT, District Judge.

On February 16, 2010 Cold Spring Harbor Laboratory (“CSHL” or “the Plaintiff”) commenced this action against Ropes & Gray LLP (“R & G”) and Matthew P. Vincent (“Vincent” and collectively “the Defendants”), asserting causes of action for legal malpractice, breach of fiduciary duty and fraud based on the Defendants actions in drafting and prosecuting a patent for technology developed by CSHL employee Dr. Gregory Hannon. Presently before the court is: 1) the Defendants' motion to dismiss pursuant to Fed. R. Civ. P(12)(b)(3) for improper venue; 2) the Defendants' motion to dismiss pursuant to Fed.R.Civ.P. 12(b)(6) for failure to state a claim; and 3) the Plaintiff's motion to amend the complaint. As set forth below, the Court finds that venue is improper and transfers this case to the District of Massachusetts. Because the Court finds venue improper, the Court does not address the Defendants' motion to dismiss pursuant to Fed.R.Civ.P. 12(b)(6) or the Plaintiff's motion to amend the complaint.

I. BACKGROUND

The following facts are drawn from the complaint and the Declaration of Dr. Gregory Hannon dated April 16, 2010 (“Hannon Declaration”). These facts are not findings of fact by the Court, but rather are assumed to be true for the purpose of deciding this motion and are construed in a light most favorable to the Plaintiff.

A. The Initial Relationship between the Parties and the Patent Applications

The plaintiff CSHL is a New York education corporation and research facility principally located in Cold Spring Harbor, New York. This case involves a number of inventions that exploit a cellular mechanism called RNA interference (“RNAi”) developed by Dr. Gregory Hannon, a Professor and Howard Hughes Medical Institute Investigator at CSHL, and his colleagues at CSHL (collectively “Dr. Hannon”). RNAi “refers to the process by which double stranded RNA functions to help regulate when genes are turned off and on in the cell.” (Compl., ¶ 7.) Based on his RNAi research, Dr. Hannon invented methods and technologies to use short hairpin RNAs (“shRNA”) in human and other mammalian cells. The shRNA technology “gives researchers the ability to specifically turn off expression of virtually any target gene or combination of target genes in a mammalian cell,” and has become a “fundamental tool in biomedical research for studying what genes do in cells, what goes wrong in diseases such as cancer and for identifying drug targets.” (Compl., ¶ 7.) In or about 1999, CSHL decided to obtain patents on Dr. Hannon's work in the RNAi field.

On October 7, 1999, Dr. Hannon attended a meeting at CSHL with Vincent, a registered patent attorney and a partner in the Intellectual Property Group at the law firm of Ropes & Gray. Vincent was a resident of the State of Massachusetts, and primarily worked in R & G's offices in Boston, Massachusetts. At this meeting, the parties discussed patenting strategies based on Dr. Hannon's “preliminary experiments studying the mechanism of RNAi in drosophila cells and general discussions concerning the potential application for and intellectual property value of RNAi technology.” (Hannon Decl., ¶ 6.) Shortly after this meeting, CSHL engaged the Defendants to handle future patent applications with regard to the RNAi technology that Dr. Hannon was still developing.

As an initial matter, the Court notes that the complaint does not clearly identify when Dr. Hannon first conceived of the methods and technologies that serve as the basis for the inventions and patent applications. Based on the Plaintiff's representations in the complaint and the Hannon Declaration, it appears that Dr. Hannon conceived of the potential uses of RNAi in mammalian cells between 1999 and 2000 (Hannon Decl., ¶ 7), and discovered the potential uses of shRNA in early to mid 2001 (Compl., ¶ 32).

CSHL is the assignee of the entire right, title, and interest in the patent applications that were eventually filed with the United States Patent and Trademark Office (“PTO”) based on Dr. Hannon's inventions. Collectively referred to as the “Hannon Applications,” the applications include U.S. patent application numbers: 09/858,862 filed May 16, 2001 (“the '862 application”), 09/866,557 filed March 24, 2001 (“the '557 application”), 10/055,797 filed January 22, 2002 (“the '797 application”), 10/350,798, filed January 24, 2003 (“the '798 application”), 10/997,086 filed November 23, 2004 (“the '086 application”), 11/791,554 filed May 23, 2007, 11/894,676 filed August 20, 2007, 12/152,655 filed May 15, 2008, 12/152,837 filed May 16, 2008; and international patent applications PCT/US01/08435 filed March 16, 2001 (“the ' 435 PCT application”), PCT/US03/01963 filed January 22, 2003, and PCT/US05/42488 filed November 23, 2005. Also filed based on Dr. Hannon's inventions were U.S. provisional applications 60/189,739, filed March 16, 2000 (“the '739 application”) and 60/243,097, filed October 24, 2000 (“the '097 application”).

At the same time that Dr. Hannon was developing his technology; other scientists were also involved in RNAi research and were filing patent applications. One of those scientists was Dr. Andrew Fire, who on July 1, 1999, filed international patent application PCT/US98/27233 (the “Fire Application”). On January 14, 2003 the PTO approved the Fire Application and Dr. Fire received U.S. Patent No. 6,506,559 (the “Fire Patent”). The scope of the Fire Patent and whether it covered shRNA and the application of RNAi to mammalian cells is related to the disposition of the instant dispute and is still being argued before the PTO.

In the spring of 2000, Dr. Hannon and Vincent attended another meeting at CSHL concerning, among other things “licensing of the RNAi technology, the RNAi intellectual property strategy, [and] the direction [Dr. Hannon] envisioned the invention to take in terms of its broad applications in mammalian systems, including cultured cells.” (Hannon Decl., ¶ 7.) Although it is unclear whether the '739 application was filed prior to this meeting, it is undisputed that the '097 application was filed subsequent to this meeting on October 24, 2000. The '097 application was a “provisional application.” A provisional application requires a specification—a written description of the invention—and a drawing of the invention, but does not require formal patent claims or other types of information required in a formal patent application. See 35 U.S.C. 111(b). An inventor has one year after the filing of a provisional application to file a formal patent application in order claim a benefit of priority based on the provisional application. Id. Certain of the Hannon Applications claim a benefit of priority to the '739 application and the '097 application.

In drafting the '097 application, Vincent copied approximately 11 pages of text from the published Fire Application (together with the similar text of the Fire Patent the “Fire text”). Portions of the Fire text were included in the “Detailed Description of Certain Preferred Embodiments” (the “Detailed Description”) of the '435 PCT application, filed on March 16, 2001, the '862 application filed on May 16, 2001, and the '557 application filed on May 24, 2001. All three of these applications were “directed generally to the initial methods and technologies Dr. Hannon developed relating to the use of RNA interference in mammalian and other cells, including the use of hairpin RNA to regulate target genes.” (Compl., ¶ 26.) In particular, the '557 application, a continuation-in-part (“CIP”) of the '435 PCT application, was the first of the Hannon Applications to include a set of claims directly related to the use of hairpin RNAs “to inhibit gene expression and expression of such hairpin RNAs in cells of a transgenic non-human mammal.” (Compl., ¶¶ 26, 30.)

Between 2001 and 2007, Vincent regularly communicated with Dr. Hannon via email and telephone regarding the Hannon Applications. (Compl., ¶ 31.) “In the course of these discussions, Dr. Hannon provided ample data and other information directed to the stable expression of shRNA in mammalian cells.” (Pl. Br. at 4.) For example, Hannon “called Vincent from [his] office or from CSHL on [his] mobile phone on multiple occasions each year .... to enable the preparation of a patent application, or to discuss and comment on drafts of documents so that [he] might ensure that [their] inventions up to that point might be protected.” (Hannon Decl., ¶ 8.) In addition, the parties exchanged emails regarding drafts of the Hannon Applications and discussing responses to PTO claim rejections. Finally, on May 25, 2004, January 12, 2006, and January 23, 2007, Dr. Hannon and Vincent met at R & G's Manhattan Offices to discuss various aspects of commercializing and licensing the inventions. Specifically, at the January 23, 2007 meeting, Dr. Hannon recalls being asked “to brainstorm differences between [his] RNAi invention and the invention of Fire.” (Hannon Decl., ¶ 12.)

B. PTO Actions on the Hannon Applications

In an Office Action dated April 21, 2005, the PTO rejected all pending...