Transcardiac Therapeutics, Inc. v. Yoganathan

• Decision Date: 14 November 2014
• Docket Number: Civil Action No. 1:14–CV–00981–AT.
• Citation: 85 F.Supp.3d 1351
• Parties: TRANSCARDIAC THERAPEUTICS, INC., Plaintiff and Counterclaim Defendant, v. Ajit YOGANATHAN, PH.D., Jorge H. Jiminez, Ph.D., Vinod H. Thourani, M.D., and Georgia Tech Foundation, Inc, Defendants, and Emory University and Georgia Tech Research Corporation, Defendants, Counterclaim Plaintiffs, and Third–Party Plaintiffs v. Omar M. Lattouf, M.D., PH.D., Third–Party Defendant.
• Court: U.S. District Court — Northern District of Georgia

85 F.Supp.3d 1351

TRANSCARDIAC THERAPEUTICS, INC., Plaintiff and Counterclaim Defendant

v.Ajit YOGANATHAN, PH.D., Jorge H. Jiminez, Ph.D., Vinod H. Thourani, M.D., and Georgia Tech Foundation, Inc, DefendantsandEmory University and Georgia Tech Research Corporation, Defendants, Counterclaim Plaintiffs, and Third–Party Plaintiffs

v.Omar M. Lattouf, M.D., PH.D., Third–Party Defendant.

Civil Action No. 1:14–CV–00981–AT.

United States District Court, N.D. Georgia, Atlanta Division.

Signed Nov. 14, 2014.

C. Allen Garrett, Jr., Joel D. Bush, II, Robert Edward Buckley, Kilpatrick Townsend & Stockton, LLP, Stephen M. Schaetzel, Meunier Carlin & Curfman, LLC, Atlanta, GA, for Counterclaim Plaintiff Emory University.

Amy Yervanian, Holmes J. Hawkins, III, Thomas Charles Lundin, Jr., King & Spalding, LLP, Atlanta, GA, for Counterclaim Plaintiff Georgia Tech Research Corporation.

John W. Crongeyer, Crongeyer Law Firm, P.C., Atlanta, GA, for Third–Party Defendant.

ORDER

AMY TOTENBERG, District Judge.

This is the second time Defendants have removed this case. The Court previously remanded this case for lack of subject matter jurisdiction. See TransCardiac Therapeutics, Inc. v. Yoganathan, 15 F.Supp.3d 1364 (N.D.Ga.2014). The Court explained that the state law claims in Plaintiff TransCardiac Therapeutics, Inc.'s (“TCT”) Complaint did not sufficiently implicate issues of patent inventorship and thus failed to establish federal jurisdiction under 28 U.S.C. § 1338(a). Following remand, Defendants Emory University and Georgia Tech Research Corporation (“GTRC”) promptly filed patent counterclaims against TCT and Dr. Lattouf¹ and again removed the case asserting jurisdiction pursuant to § 1338(a) (and its accompanying removal statute, § 1454(a)).

Defendants' counterclaims are based on their alleged uncertainty regarding whether TCT and Dr. Lattouf assert any claims of inventorship in connection with two specifically identified patents held by Defendants Emory and GTRC, the '123 and '836 patents. In response, Plaintiff TCT timely filed the Motion to Remand [Doc. 20] which is now before the Court. The Court thereafter issued two Orders [Docs. 42, 48] directing Dr. Lattouf and TCT to state whether each is making any inventorship claim pursuant to 35 U.S.C. § 256 with respect to the two patents that form the basis of Defendants' counterclaims.² (Docs. 5, 7) TCT expressly disclaimed any interest in making such claims while Dr. Lattouf reserved the right to assert such claims. (Docs. 46, 49) For the reasons below, Plaintiff's motion is GRANTED IN PART and DENIED IN PART.

I. Background

A. Plaintiff's Claims

Plaintiff originally brought this case in the State Court of Fulton County raising a host of state law claims, for breach of contract, interference with business relations, fraud, conspiracy, and false advertising. The claims at issue arose from Defendants' purported bad faith conduct and breach of contracts with TCT relating to development work and confidentiality involving TCT's portfolio of 24 patents and intellectual property (“IP”).

The IP portfolio referenced in TCT's Complaint is called the “Release Portfolio.” It contains IP that was invented by Dr. Lattouf; assigned by Emory (his employer) to Dr. Lattouf; and subsequently assigned by Dr. Lattouf to TCT (his startup company). (Doc. 5 at 28.) TCT alleges, among other things, that Defendants concealed and supported a competing startup, improperly disclosed to that startup some confidential information concerning IP that is or should be within the Release Portfolio, and ran a misleading public information campaign seeking to portray the individual Defendants as the owners and inventors of Dr. Lattouf's IP.

Ruling on the previous motion to remand in this case, the Court held that none of TCT's nine state law claims implicates the inventorship of the patents in the Release Portfolio to the extent required to justify federal jurisdiction. See TransCardiac, 15 F.Supp.3d at 1369–75.

B. Defendants' Claims Relating to the Apica Portfolio

Emory and GTRC licensed a second portfolio, referred to as the “Apica Portfolio,” to the competing startup, Apica Cardiovascular, Ltd. (Doc. 1–1 ¶¶ 12834.) After this case was remanded, Defendants Emory and GTRC (the “Counterclaimants”) filed virtually identical “counterclaims” for declaratory judgment of patent inventorship concerning two patents in the Apica Portfolio that had never before been mentioned by name in the lawsuit and which were not part of TCT's portfolio: U.S. Patent Nos. 7,846,123 (“the '123 patent”) on and 8,430,836 (“the '836 patent ”).

Counterclaimants seek a declaration that Dr. Lattouf is properly not named an inventor on those patents because, they assert, “Dr. Lattouf and TCT's broad claim of inventorship of the entire field [of transapical cardiac surgery] has created a controversy about the inventorship of the '123 Patent and the ' 836 Patent.” (Doc. 5 at 34.) Counterclaimants seek federal jurisdiction over the entire case based on their counterclaims against TCT and third-party claims against Dr. Lattouf.

C. TCT and Dr. Lattouf's Differing Responses to the Counterclaims

TCT and Dr. Lattouf filed contrasting responses to the Defendants' counterclaims. In its Answer to Emory's counterclaim, TCT broadly alleges, “that Dr. Lattouf invented the intellectual property identified in the [Release Portfolio] and outlined in the Complaint and that [this] intellectual property forms the bases of the '123 Patent and '836 Patent.” (Doc. 24 ¶ 32.) However, in response to the Court's central guiding question whether TCT asserts any inventorship claim in connection with Defendants ' '123 and ' 836 patents, TCT expressly affirmed that it “it is not making, and shall not make, any inventorship claim pursuant to 35 U.S.C. § 256 ” with regard to those patents.³ (Doc. 46 at 2.)

Unlike TCT, Dr. Lattouf responded to the Court's question regarding his inventorship claims in connection with the '123 and '836 patents by expressly affirming that “he cannot and will not waive his 35 U.S.C. § 256 rights with regard to” those patents. (Doc. 49 at 2.) This difference in the parties' approach to inventorship of the '123 and '836 patents is material.

II. Legal Standard

As the party seeking declaratory judgment jurisdiction, Emory bears the burden of establishing “that such jurisdiction existed at the time the claim for declaratory relief was filed.” StoneEagle Servs., Inc. v. Gillman, 746 F.3d 1059, 1062 (Fed.Cir.2014) (quoting King Pharms. Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1282 (Fed.Cir.2010) ). “The Declaratory Judgment Act provides that, ‘[i]n a case of actual controversy within its jurisdiction ... any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought.’ ” Danisco U.S. Inc. v. Novozymes A/S, 744 F.3d 1325, 1329 (Fed.Cir.2014) (quoting 28 U.S.C. § 2201(a) ). “[T]o demonstrate a sufficient controversy for a declaratory judgment claim that satisfies the requirements of Article III, ‘the facts alleged, under all the circumstances, [must] show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.’ ” Id. (quoting MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127, 127 S.Ct. 764, 166 L.Ed.2d 604 (2007) ).

To be clear, “the Declaratory Judgment Act does not extend the jurisdiction of the federal courts.” Medtronic, Inc. v. Mirowski Family Ventures, LLC, ––– U.S. ––––, 134 S.Ct. 843, 848, 187 L.Ed.2d 703 (2014) (quotation omitted). Courts determining declaratory judgment jurisdiction examine whether “the character of the threatened action ... would necessarily present a federal question.” Id. (quotations omitted.)

III. Discussion

Counterclaimants have stated a viable claim for declaratory relief with regard to Dr. Lattouf's legal posture as to their two patents. It is obvious from Dr. Lattouf's response to the Court's Order that he does dispute the inventorship of the '123 and '836 patents. Counterclaimants and Dr. Lattouf himself have demonstrated the “immediacy and reality” required to create a justiciable controversy between Counterclaimants and Dr. Lattouf. See MedImmune, 549 U.S. at 127, 127 S.Ct. 764 ; Prasco, LLC v. Medicis Pharm. Corp., 537 F.3d 1329, 1338 (Fed.Cir.2008).

The analysis is quite different for TCT. TCT has expressly affirmed that it is not making and shall not make an inventorship claim on the patents at issue in the counterclaims. As if that were not enough, Counterclaimants have not identified a single statement or allegation by TCT that expressly claims with any reasonable certainty that TCT plans to contest inventorship of those patents.⁴ “A case or controversy must be based on a real and immediate injury or threat of future injury that is caused by the defendants—an objective standard that cannot be met by a purely subjective or speculative fear of future harm.” Prasco, 537 F.3d at 1339. There is no real and immediate threat of future injury from TCT regarding inventorship of the '123 and '836 patents.

IV. Supplemental Jurisdiction

Defendants ask the Court to exercise supplemental jurisdiction pursuant to 28 U.S.C. §§ 1367 and 1454 over any of Plaintiff's claims that do not support federal jurisdiction. (Doc. 35 at 17; Docs. 36, 37.) “A civil action in which any party asserts a claim for relief arising under any Act of Congress relating to patents ... may be removed to [federal court] ...” 28 U.S.C. § 1454(a). However, if a civil action is removed solely under § 1454, as is the case here, the Court “shall” remand all claims that are not within the original or supplemental jurisdiction of the Court, 28 U.S.C. § 1454(d)(1), and “may” remand claims that fall within § 1367(a) jurisdiction and also within § 1367(c). 28 U.S.C. § 1454(d)(2).

TCT's nine state law...