Transcardiac Therapeutics, Inc. v. Yoganathan
| Decision Date | 28 February 2014 |
| Docket Number | Civil Action No. 1:13–CV–3089–AT. |
| Citation | 15 F.Supp.3d 1364 |
| Parties | TRANSCARDIAC THERAPEUTICS, INC., Plaintiff, v. Ajit YOGANATHAN, PH.D., Jorge H. Jiminez, PH.D., Vinod H. Thourani, M.D., Emory University, Georgia Tech Research Corporation, and Georgia Tech Foundation, Inc., Defendants. |
| Court | U.S. District Court — Northern District of Georgia |
James Robert Howard, Office of James Robert Howard, John W. Crongeyer, Crongeyer Law Firm, P.C., Kristen Lin Beightol, William Q. Bird, Bird Law Group, P.C., Atlanta, GA, for Plaintiff.
Julie Adams Jacobs, State of Georgia Law Department, William Wright Banks, Jr., Office of State Attorney General, Jill Warner, McRae Brooks Warner, LLC, C. Allen Garrett, Jr., Joel D. Bush, II, Robert Edward Buckley, Kilpatrick Townsend & Stockton, Holmes J. Hawkins, III, King & Spalding, LLP, Atlanta, GA, for Defendants.
Before the Court is Plaintiff TransCardiac Therapeutics, Inc.'s Motion for Remand which explores the limits of federal patent jurisdiction over state law claims [Doc. 16]. Defendant Emory University removed this case based on the existence of federal question jurisdiction under 28 U.S.C. § 1338(a). In its Notice of Removal, Emory admits that none of Plaintiff's state law claims directly seek relief under federal patent law. Nevertheless, Emory argues that Plaintiffs Complaint necessarily implicates issues of patent inventorship, thereby establishing federal jurisdiction under § 1338(a). For the following reasons, Plaintiff's Motion for Remand [Doc. 16] is GRANTED.
Dr. Omar Lattouf is a professor specializing in cardiothoracic surgery at the Emory University School of Medicine. As an Emory faculty member, Dr. Lattouf conducted research in the field of cardiac surgery. He invented a minimally invasive form of cardiac surgery involving transapical access to the heart and took steps to patent this new medical procedure. (Compl., Doc. 1–1 ¶ 42.) On December 8, 2001, Dr. Lattouf filed U.S. Patent Application No. 60/340,062 (“the '062 application”) describing this method.1 (Id. ¶ 42, 113.)
By itself, this patent application did not secure Dr. Lattouf an ownership interest in this invention. Emory professors, like those at many universities, do not simply keep what they invent.2 Generally, Emory assumes ownership of the intellectual property (“IP”) created by its personnel as a condition of access to university resources and support. Emory personnel are required to promptly disclose new IP to the Office of Technology Transfer (“OTT”), which estimates the commercial value of the IP and may help inventors file patent applications.
Emory's IP policy describes a mechanism to release or assign ownership of IP back to an inventor. Upon petition by an inventor, Emory may transfer IP back to an inventor while retaining a limited financial interest, often in the form of regular royalty payments. Through this process Emory inventors may commercialize their invention with support from the university, and Emory gains a modest financial stake in the technology's success.
Dr. Lattouf promptly notified Emory of his invention and the '062 application. (Id. ¶¶ 43, 44.) He met with the OTT to discuss the commercialization of this technology, and the parties negotiated terms of Emory's assignment of the IP to Dr. Lattouf. The parties agreed that Emory would receive 2% of net sales for products sold by Dr. Lattouf, or any assignee, licensee, or affiliate of his, which incorporated Dr. Lattouf's invention. (Id. ¶ 45.) Dr. Lattouf and the OTT finalized this release agreement around September 30, 2002. (Id. ¶ 46.)
At the time of the agreement, the parties defined the relevant intellectual property (“the Release IP”) as what was disclosed in the '062 application and Dr. Lattoufs invention disclosure to Emory. (Id. ¶ 44.) Dr. Lattouf continued to make improvements to his invention in the years following this agreement. These improvements were captured in over two dozen patent applications.3 (Id. ¶¶ 68–71, 112–116.) Dr. Lattouf and Emory amended the scope of the Release IP4 in February 2005 and again in May 2009 to encompass these improvements, which also included “[i]ssued patents disclosing and claiming” the subject matter of these patent applications. (Id. ) These amendments assigned Dr. Lattouf ownership over his improvements to the original invention under the same terms as the original 2002 agreement. (Id. ¶ 71; Ex. E, Doc. 2–1.)
After securing ownership of the Release IP, Dr. Lattouf founded TransCardiac Therapeutics, LLC (“TCT”) on September 4, 2003.5 Dr. Lattouf assigned his interest in the Release IP to TCT to facilitate the commercialization of the technology. (Id. ¶ 118.) Emory provided TCT with support and advice about the commercialization process, in part to benefit from its stake in TCT's success. The terms of the release agreement with Emory required Dr. Lattouf and TCT to disclose further improvements in the Release IP. (Id. ¶ 57.) In December 2004, TCT entered into an 8–year confidential disclosure agreement (“CDA”) with Emory. (Id. ¶¶ 55–56.) This agreement supplemented any existing duty of confidentiality between the parties, and encouraged the complete disclosure of TCT's technology to Emory. (Id. )
In February 2005, TCT executives met with Defendant Dr. Yoganathan and others serving as representatives of Defendants Georgia Tech Research Corporation (“GTRC”) and Georgia Tech Foundation (“GTF”). (Id. ¶¶ 72–73.) TCT sought additional means to manufacture and test the Release IP technology, and Dr. Yoganathan managed the necessary facility and personnel on behalf of GTRC and GTF. (Id. ¶¶ 20, 80.) Dr. Yoganathan agreed that his existing research would not compete in any way with Dr. Lattouf or TCT if he were selected to assist with the Release IP. (Id. ¶ 77.)
Drs. Lattouf and Yoganathan ultimately reached an agreement. In March 2005, Dr. Lattouf requested a price quote to build and test his invention. The services of Dr. Yoganathan, his assistant, Defendant Dr. Jiminez, and the facility were offered for $10,000. (Id. ¶ 80.) On July 22, 2005, Dr. Lattouf paid this amount to GTF by means of an “Emory Discretionary Fund for the benefit of TCT.” (Id. ¶ 80, 90.) Beginning in 2005, Dr. Yoganathan and Dr. Jiminez conducted testing and research into the technology of the Release IP. (Id. ¶ 89.)
TCT understood this arrangement to be work-for-hire that would not diminish the value of the Release IP. (Id. ¶ 80, 161.) TCT received oral assurances from Dr. Yoganathan and the other representatives that TCT's proprietary information, confidential information, and intellectual property would be protected and not disclosed to anyone. Dr. Yoganathan and the other representatives promised to deliver an acceptable non-disclosure agreement that memorialized the representations of confidentiality, but TCT was never given this agreement. (Id. ¶¶ 76, 81–84.) Throughout its engagement with the Georgia Tech Defendants, TCT relied on oral assurances and institutional standards of confidentiality from Dr. Yoganathan, GTRC, and GTF. (Id. ¶¶ 81–84.)
In 2005, TCT invited researchers to join its newly formed Scientific Advisory Board (“SAB”). Dr. Yoganathan accepted this invitation and served on the SAB from its inception. As a condition of serving on the SAB, Dr. Yoganathan agreed to respect and protect all of TCT's confidential and proprietary information. (Id. ¶ 100.) Defendant Dr. Thourani, a physician in the field of cardiothoracic surgery and an employee of Emory, also agreed to join the SAB in 2005. (Id. ¶ 59.) Dr. Thourani agreed to substantially the same terms of confidentiality as Dr. Yoganathan.
Both Defendants received confidential and proprietary information and knowledge of the Release IP through their participation on the SAB. (Id. ¶¶ 59, 101.) These Defendants signed a TCT Scientific Advisory Board Agreement (“SABA”) in 2008. (Id. ¶¶ 103, 106.) Dr. Yoganathan initialed and noted beside the SABA's conflict of interest paragraph that he consulted “with other companies, big + small, who work in the heart valve repair and replacement fields.” (Id. ¶ 103.) Dr. Thourani, despite never resigning from the SAB, joined a competitor's SAB in 2007. (Id. ¶ 107.) According to Dr. Thourani's curriculum vitae from late 2012, he considered himself as having withdrawn from TCT's SAB after 2009. (Id. ) Dr. Thourani did not report either of these developments to TCT. (Id. ) Relying on Dr. Thourani's confidentiality agreements, Dr. Lattouf taught Dr. Thourani his transapical access and chordal replacement methods. (Id. ¶¶ 93–94.) Dr. Thourani ultimately took over for Dr. Lattouf by directing the research and development efforts that took place at the Georgia Tech labs. (Id. ¶ 94.)
By 2010, venture capital groups were demonstrating interest in Dr. Lattouf's area of research. Dr. Lattouf emailed Dr. Yoganathan on October 8th, 2010 with the message that “all of a sudden, 3 separate groups [...] have independent of one another approached me about a deal on my transapical access and mitral/chordal repair.” (Id. ¶ 125.) In November 2010, AMY Partners made an offer to buy or license TCT's technology “that was preliminarily expressed as $45 million dollars plus a three (3) percent royalty for TCT's property.” (Id. ¶ 120.) TCT notified Emory of this offer on November 18, 2010, and the parties met shortly after. (Id. ¶¶ 121, 123.)
This was as close as TCT came to a deal with AMV Partners. Plaintiff alleges that on or about January 10, 2011, the Defendants began a misleading public relations campaign to portray the individual Defendants as the owners and inventors of specific parts of Dr. Lattouf's IP. (Id. ¶ 128.) According to the Complaint, Emory and Georgia Tech deliberately issued press releases claiming that Defendants invented the Release IP. (Id. ¶¶ 129–131.) Additional...
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