Roskamp Inst., Inc. v. Alzheimer's Inst. of Am., Inc.
| Decision Date | 22 October 2015 |
| Docket Number | CIVIL ACTION NO. 15-3641 |
| Parties | THE ROSKAMP INSTITUTE, INC. ARCHER PHARMACEUTICALS, INC., and ROBERT ROSKAMP, Plaintiffs, v. ALZHEIMER'S INSTITUTE OF AMERICA, INC., ALZHEIMER'S INSTITUTE OF AMERICA FOUNDATION, INC., and RONALD SEXTON, Defendants. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
Currently pending before the Court is the Motion for Remand by Plaintiffs, the Roskamp Institute, Inc., Archer Pharmaceuticals, Inc., and Robert Roskamp (collectively "Plaintiffs"). For the following reasons, the Motion is denied.
According to the facts set forth in the Amended Complaint, Plaintiff Roskamp Institute, Inc. ("Roskamp Institute") is a non-profit entity devoted to Alzheimer's Disease Research with its place of incorporation and primary place of business in Florida; Plaintiff Archer Pharmaceuticals, Inc. ("Archer") is a for-profit company organized under the laws of Delawarewith a place of business in Florida that develops and commercializes drug treatments for Alzheimer's that grow out of Roskamp Institute's research; and Plaintiff Robert Roskamp ("Roskamp") is a businessman and philanthropist, residing in Florida, who invests in and pays for the activities of Roskamp Institute and Archer with his personal funds and holds significant ownership stakes in both companies. (Am. Compl. ¶¶ 1, 12-14.)
Defendants are Alzheimer's Institute of America, Inc. ("AIA"), Alzheimer's Institute of America Foundation, Inc. ("Foundation"), and Ronald Sexton ("Sexton") (collectively, "Defendants"). (Id. ¶ 15.) At the time this action was commenced, AIA was a corporation organized under the laws of Florida with a place of business in Kansas, but, on May 13, 2015, Defendants merged Defendant AIA into a Kansas corporation. AIA does not conduct any research or make any products, but purports to own certain patents and intellectual property rights relating to a genetic variation known as the Swedish Mutation, which is believed to cause Alzheimer's Disease ("AD"). (Id. ¶ 23.) AIA's purported intellectual property rights include patents covering nucleic acids coding for the Swedish Mutation, U.S. Patent Number 5,455,169 ("'169 patent"); transgenic mice carrying the Swedish Mutation, U.S. Patent Number 7,538,258 ("'158 patent"); and certain other patents and intellectual property rights related thereto (collectively, the "Patents"). (Id. ¶ 26.) The Foundation is a corporation organized under the laws of Delaware with a place of business in Missouri; and Sexton is an individual resident of Kansas. (Id. ¶ 16-17.) The Foundation's Facebook page identifies it as a division of AIA and indicates that it shares the same address as Roskamp Institute and Archer at 2040 Whitfield Avenue in Sarasota, Florida. (Id. ¶¶ 24-25.)
According to the Amended Complaint, Dr. John Hardy began studying AD in 1979 and, in 1985, he moved to St. Mary's Hospital Medical School in London—which later merged with Imperial College—where he started an AD laboratory and research program. (Id. ¶ 28.) In approximately 1988, Dr. Michael Mullan joined Hardy's lab as a research fellow and Ph.D student. (Id. ¶ 29.) In 1990, Hardy, along with several Dutch scientists, wrote a paper describing a genetic mutation known as the "Dutch Mutation." (Id. ¶ 30.) After discovering the Dutch Mutation, Hardy and his team began searching for amyloid precursor protein ("APP") mutations relating to AD, which led to the discovery of the first genetic mutation associated with AD, which came to be known as the "London Mutation." (Id. ¶ 31.) In January 1991, a patent application was filed for the London Mutation in the United Kingdom, which named Hardy, Mullan, and three others as co-inventors. (Id. ¶ 32.) Under the U.K. Patent Act of 1977—which provides that inventions made by employees in the course of their normal duties belong to the employer—the rights to the London Mutation were owned by Imperial College. (Id. ¶ 33.)
The London Mutation inventors also suggested patenting transgenic animals carrying the mutation, but were advised by Imperial College's technology transfer arm, Imperial Exploitation Limited ("IMPEL"), that transgenic animals were not patentable under U.K. law. (Id. ¶ 34.) IMPEL's advice, however, was erroneous. (Id.) In February 1991, a company called Athena Neurosciences, Inc. ("Athena") approached Imperial College, through Hardy, with a proposal to sponsor his team's research. (Id. ¶ 35.) On August 1, 1991, Imperial College, IMPEL, and Athena executed a Sponsored Research Agreement (the "Athena Agreement"). (Id.) Athena then noticed IMPEL's error and revised the U.K. patent application to cover transgenic animalswith the London Mutation. (Id.) Pursuant to the Athena Agreement, Athena received the exclusive rights to transgenic animals with the London Mutation, as well as any AD discoveries from Hardy's lab at Imperial College. (Id. ¶ 36.)
Upon learning that IMPEL had given them erroneous advice, and believing their rights to their discovery of the London Mutation had been undervalued, Hardy and his team became disappointed with the Athena Agreement. (Id. ¶ 37.) At this time, Sexton, a businessman from Kansas City, saw an opportunity in Hardy's team. (Id. ¶ 38.) Sexton persuaded Hardy and Mullan to sign an agreement giving Sexton's company, Euroinvest Limited ("Euroinvest"), exclusive rights in their research. (Id. ¶ 39.) In turn, Hardy and Mullan, with the assistance of London law firm Sexton and Clyde & Co., made several attempts to challenge Imperial College's claim to the London Mutation patent. (Id. ¶ 40.) When those efforts were unsuccessful, Dr. Alison Goate—a junior scientist on Hardy's team—wrote a letter to Imperial College in which she claimed that Mullan had conceived the London Mutation before he became employed at Imperial College. (Id. ¶ 41.) Imperial College rejected this claim, and Hardy and Goate later testified that the letter was false. (Id. ¶¶ 42-43.) Unable to get out of the Athena Agreement and seeking to avoid Athena's option on any new APP mutations, Hardy's team agreed to not identify any additional mutations while working at Imperial College. (Id. ¶ 44.) In turn, Hardy decided to move his laboratory from Imperial College to the University of South Florida ("USF") in order to continue his research. (Id. ¶ 45.) At Hardy's request, USF hired Mullan as a research assistant, and he arrived at USF in December 1991 to begin setting up Hardy's lab. (Id. ¶ 46.) Hardy remained at Imperial College until May 1992, waiting for the new lab to be constructed at USF. (Id.)
In early 1992, a team of researchers at the Karolinska Institute in Sweden collected DNA samples from Swedish families with AD and, in February 1992, a Swedish scientist visited Hardy at Imperial College and delivered several of those samples. (Id. ¶ 47.) Hardy then asked a lab technician at Imperial College, Henry Houlden, to conduct a "GT12 analysis" (genetic studies) on the DNA from two of the families. (Id. ¶ 48.) The analysis was performed over several weeks and Houlden provided the results to Hardy in London. (Id. ¶ 49.) Upon analyzing the data, Hardy concluded that it suggested a strong likelihood of mutation on the APP gene in both families. (Id. ¶ 49.) To prevent Imperial College and Athena from obtaining the rights to the new mutation, Hardy instructed Houlden to send selected DNA samples from the two families to Mullan to have them sequenced in Florida. (Id. ¶ 50.) Although Mullan could not sequence the DNA on his own, Hardy knew that Fiona Crawford (then a Ph.D. student from Hardy's team at Imperial College) had experience in DNA sequencing and would soon arrive in Florida. (Id. ¶ 51.) Upon her arrival, Crawford sequenced the DNA samples at Tampa Bay Research Institute, which was off USF's campus. (Id. ¶ 52.) Crawford's sequencing revealed that the DNA of the affected Swedish family members did, in fact, contain a double mutation, which became known as the "Swedish Mutation." (Id. ¶ 53.)
In late April 1992, work immediately began on a patent application for the Swedish Mutation, as well as a publication describing the discovery. (Id. ¶ 54.) To avoid either Imperial College or USF obtaining the rights to the invention, Mullan and Hardy agreed that Hardy's name would not appear on any patent application or publication since Hardy was still an employee of Imperial College. (Id. ¶¶ 55-56.) Because Mullan was a USF employee, however, USF's regulations and Florida law dictated that USF would have rights to the Swedish Mutation.(Id. ¶ 57.) To avoid this problem, Sexton's lawyers sent USF a letter describing Hardy and Mullan's work on the London Mutation and their resulting dispute with Imperial College over the rights to that invention, without disclosing the discovery of the Swedish Mutation. (Id. ¶ 59.) Dr. George Newkome, USF's Vice President for Research, interpreted the letter as requesting USF's confirmation that the university would not assert rights in Hardy's and Mullan's London Mutation research. As prepared by Sexton's lawyers, however, the letter asked USF to agree that "all ownership of rights in any work carried out by [Hardy and Mullan] and inventions made by them (whether before or after the date of this letter) belong exclusively to Hardy and Mullan." (Id. ¶ 60.) Newkome met with Hardy, Mullan, and Sexton to discuss the letter, but was still not told of the discovery of the Swedish Mutation. In fact, Newkome was informed that because Hardy's new lab was still incomplete, "there was really nothing going on." (Id. ¶ 61.) At the close of that meeting, Newkome revised the letter to provide that USF would agree that any work done or inventions made by Hardy and Mullan prior to August 15, 1992 (the start of the upcoming semester at USF) would belong to Hardy and Mullan. (Id. ¶ 62.) On May 4, 1992, Newkome signed the letter with those revisions. (Id.)
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