Chambers v. Cooney

• Decision Date: 23 January 2008
• Docket Number: Civil Action No. 07-0373-WS-B.
• Citation: 535 F.Supp.2d 1255
• Parties: K.W. Michael CHAMBERS, et al., Plaintiffs, v. Michael J. COONEY, M.D., Defendant/Counterclaim Plaintiff, v. Dr. Eugene de Juan, et al., Counterclaim Defendants.
• Court: U.S. District Court — Southern District of Alabama

535 F.Supp.2d 1255

K.W. Michael CHAMBERS, et al., Plaintiffs, v. Michael J. COONEY, M.D., Defendant/Counterclaim Plaintiff, v. Dr. Eugene de Juan, et al., Counterclaim Defendants.

Civil Action No. 07-0373-WS-B.

United States District Court, S.D. Alabama, Southern Division.

January 23, 2008.

Michael D. Knight, P. Russel Myles, McDowell Knight Roedder & Sledge, L.L.C., Mobile, AL, for Plaintiffs.

Frederick C. Laney, Paul Kirby Vickrey, Chicago, IL, J. Don Foster, Jackson, Foster & Graham, LLC, Mobile, AL, for Defendants.

ORDER

WILLIAM H. STEELE, District Judge.

This matter comes before the Court on defendant SurModics, Inc.'s Motion to Dismiss (doc. 40). The Motion has been briefed and is ripe for disposition at this time.

I. Relevant Background.

A detailed review of the factual underpinnings and procedural posture of this consolidated action is unnecessary to resolve the discrete issues raised in the Rule 12 Motion. In the Amended Complaint (doc. 38, Exh. 6), Michael J. Cooney, M.D. ("Dr.Cooney") brought certain claims against SurModics, Inc. ("SurModics") and others based on SurModics' acquisition of a company called InnoRx, Inc. In particular, the Amended Complaint alleges a scheme by SurModics, InnoRx and others to deprive Dr. Cooney of proceeds from that transaction and to rob him of inventorship rights for certain technologies that he had helped to innovate while working for and with InnoRx by eliminating his name from patent applications pertaining to those inventions.

The specific claims that Dr. Cooney asserts against SurModics include the following: (1) a claim for unjust enrichment on the theory that InnoRx was unjustly enriched by the value of Dr. Cooney's intellectual property and his subsequent exclusion from licensing rights for that intellectual property; (2) a claim for fraud based on InnoRx's failure to inform Dr. Cooney that his name was being removed from the '750 Patent application and that he was being deliberately excluded from other patent applications despite his status as an inventor; and (3) a claim for breach of fiduciary duty on the ground that InnoRx owed Dr. Cooney a fiduciary duty which it breached to Dr. Cooney's detriment. (Amended Complaint, ¶¶ 48-58.) With respect to each of these causes of action, Dr. Cooney predicates liability for SurModics on its status as successor to InnoRx.

The Amended Complaint also includes two other causes of action that are of particular significance to the pending Motion to Dismiss. In particular, Count IV captioned "Correction of Inventorship," states that Dr. Cooney is a co-inventor of the '750 Patent and asks this Court prow ant to 35 U.S.C. § 256 to correct that patent to reflect his co-inventor status. Count IV also sets forth a laundry list of 15 other pending patent applications and states that "[i]n the event that patents are issued on [those] applications and Dr. Cooney is not named as an inventor [f]or each such patent, Dr. Cooney reserves the right to amend the Complaint to add such patents to seek a correction of inventorship." (Amended Complaint, ¶ 59.) The relief requested by Dr. Cooney in Count IV is that he "should be declared the owner of all rights arising from his status as co-inventor of the '750 patent and the [15 other enumerated] applications (once they issue)." (Id., ¶ 62.) Further, Count V of the Amended Complaint is captioned "Tortious Interference with Prospective Economic Advantage?' A fair reading of Count V is that Dr. Cooney alleges that SurModics had determined based on its own analysis, that Dr. Cooney was entitled to inventor status on the pending patent applications, but failed either to notify the Patent and Trademark Office of that determination or to file appropriate petitions to correct ownership. (Id., ¶¶ 64-67.) As a result of these allegedly wrongful omissions, Dr. Cooney claims, he "has been deprived the right to independently license the pending applications on which he is an inventor." (id., ¶ 68.)

In its Motion to Dismiss, SurModics asks this Court to dismiss Count IV to the extent it seeks relief concerning pending patent applications, to dismiss Count V for failure to state a claim upon which relief can be granted, and to strike certain paragraphs of the Amended Complaint that it contends improperly recount statements made during settlement negotiations.

II. Legal Standard.

On a motion to dismiss for failure to state a claim upon which relief can be granted, the Court must view the complaint in the light most favorable to the plaintiff. Hill v. White, 321 F.3d 1334, 1335 (11th Cir.2003). Thus, "when ruling on a defendant's motion to dismiss, a judge must accept as true all of the factual allegations contained in the complaint." Erickson v. Pardus, ___ U.S. ___, 127 S.Ct. 2197, 2200, 167 L.Ed.2d 1081 (2007). The rules of pleading require only that a complaint contain "a short and plain statement of the claim showing that the pleader is entitled to relief." Rule 8(a)(2), Fed. R.Civ.P. While a complaint attacked by a Rule 12(b)(6) motion need not be buttressed by detailed factual allegations, the plaintiffs pleading obligation "requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do." Bell Atlantic Corp. v. Twombly, ___ U.S. ___, 127 S.Ct. 1955, 1964-65, 167 L.Ed.2d 929 (2007). The rules of pleading do "not require heightened fact pleading of specifics, but only enough facts to state a claim to relief that is plausible on its face." Id. at 1974; see also Financial Sec. Assur., Inc. v. Stephens, Inc., 500 F.3d 1276, 1282 (11th Cir.2007) (explaining that "factual allegations in a complaint must possess enough heft to set forth a plausible entitlement to relief') (citation omitted). The Court's inquiry at this stage focuses on whether the challenged pleadings "give the defendant fair notice of what the ... claim is and the grounds upon which it rests." Erickson, 127 S.Ct. at 2200 (quoting Twombly, 127 S.Ct. at 1964). Thus, the proper test is whether the complaint "contain[s] either direct or inferential' allegations respecting all the material elements necessary to sustain a recovery under some viable legal theory." Financial Sec., 500 F.3d at 1282-83 (citation and internal quotations omitted).

III. Analysis.

A. Count IV Correction of Inventorship

SurModics devotes nearly half of its lengthy memorandum of law in support of the Motion to Dismiss to Count IV, the claim for correction of inventorship pursuant to 35 U.S.C. § 256. In so doing, SurModics does not allege that this cause of action fails to state an actionable claim to the extent that Dr. Cooney seeks correction of the '750 Patent to designate him as a co-inventor. Rather, SurModics's position is that Count IV should be dismissed "to the extent it seeks an order correcting inventorship of pending patent applications." (SurModics Brief (doc. 41), at 7.)

This is a phantom issue. While the legal premise of SurModics' argument is correct,¹ it is combating claims that simply are not alleged. Dr. Cooney emphatically states in his response brief that he "is not requesting this Court to declare him an inventor on pending patent applications" and that he "stipulates that he will not seek a correction of inventorship on any patent application until it issues." (Cooney Response (doc. 46), at 1-2.) Such a stipulation is fully supported by the plain text of Count IV itself, in which Dr. Cooney states that "[i]n the event that patents are issued" with respect to those 15 pending applications, "Dr. Cooney reserves the right to amend the Complaint to add such patents to seek a correction of inventorship." (Amended Complaint, ¶ 59 (emphasis added).) As Dr. Cooney is not presently requesting correction of inventorship by this Court as to any of the 15 pending patent applications, SurModics' Motion to Dismiss Count IV "to the extent" that he is so requesting is denied as moot.² For the sake of clarity, the Court observes that Count IV does not read, and is not to be construed for purposes of this action, as requesting correction of inventorship as to any of the 15 pending patent applications at this time. Rather, Count IV is confined to the '750 Patent. If Dr. Cooney later seeks to petition the Court in this action for correction of inventorship or a declaration of ownership rights as to any patent other than the '750 Patent, it will be necessary for him to seek leave of court to amend his pleadings to do so, pursuant to Rule 15, Fed.R.Civ.P., and in conformity with the deadlines specified in the applicable Rule 16(b) Scheduling Order.³

B Count V: Tortious Interference Prospective Economic Advantage.

1. Pleading Requirements.

Next, SurModics contends that Dr. Cooney's tortious interference claim (Count V) is fatally infirm as presented in the Amended Complaint because it fails, to plead the elements of that cause of action. SurModics' position is that Count V should be dismissed because it "does not identify a single potential business relationship involving any alleged efforts by Dr. Cooney to license the 15 listed pending patent applications." (SurModics Brief, at 24.) SurModics further maintains that Count V fails because it does not identify "any business relation that supposedly would have proceeded to softie sort of binding, if not contractual, relationship but for the undisclosed `interference' that Dr. Cooney attributes to SurModics." (Id.)

To evaluate this argument, the Court must first examine the appropriate pleading standard for a claim of tortious interference with prospective economic advantage. Although there is some question as to which state's law applies to Count V, both parties' briefs rely primarily on New York law on this question; therefore, the Court will assume (without deciding) that New York law applies.⁴ Under New York law, the tort of tortious interference with prospective economic advantage "has a limited scope," imposes "demanding" requirements on ...