United Therapeutics Corp. v. Vanderbilt Univ.

• Decision Date: 15 August 2017
• Docket Number: Civil Action No. 16–2220 (RBW)
• Citation: 278 F.Supp.3d 407
• Parties: UNITED THERAPEUTICS CORPORATION, Plaintiff, v. VANDERBILT UNIVERSITY and Dr. James E. Loyd, Defendants.
• Court: U.S. District Court — District of Columbia

278 F.Supp.3d 407

UNITED THERAPEUTICS CORPORATION, Plaintiff,

v.VANDERBILT UNIVERSITY and Dr. James E. Loyd, Defendants.

Civil Action No. 16–2220 (RBW)

United States District Court, District of Columbia.

Signed August 15, 2017

Douglas Carsten, Wilson Sonsini Goodrich & Rosati, San Diego, CA, Veronica S. Ascarrunz, Wilson Sonsini Goodrich & Rosati, PC, Shaun Robert Snader, United Therapeutics Corporation, William Covington Jackson, Boies, Schiller & Flexner Llp, Washington, DC, for Plaintiff.

Amy Kreiger Wigmore, Bruce M. Berman, Wilmer Hale, Washington, DC, John W. Harbin, Mary K. Bates, Sarah M. Kessler, Meunier Carlin & Curfman LLC, Atlanta, GA, for Defendants.

MEMORANDUM OPINION

REGGIE B. WALTON, United States District Judge

This case arises from a dispute over the ownership of two patents that were cooperatively developed by the plaintiff, United Therapeutics Corporation ("United Therapeutics"), and the defendants, Vanderbilt University ("Vanderbilt") and Dr. James E. Loyd. See Complaint ("Compl.") ¶¶ 1, 3. United Therapeutics seeks damages and a declaratory judgment finding that "[Dr.] Loyd and Vanderbilt have no rights, title or interest in the [p]atents, and that [United Therapeutics] is the rightful exclusive owner by assignment of all rights, titles, and interests in the [p]atents." Id. ¶ 5. Currently before the Court is the defendants' Motion to Dismiss and Memorandum of Points and Authorities in Support Thereof ("Defs.' Mot."), which seeks dismissal of the Complaint on the grounds that this Court lacks personal jurisdiction over the defendants, that venue in this District is improper, and that United Therapeutics has failed to state a claim upon which relief may be granted, see Defs.' Mot. at 1, as well as the defendants' Motion to Strike the Declaration of Andrew Fisher and Memorandum and Points and Authorities in Support ("Defs.' Strike Mot."). After careful review of the parties' submissions,¹ the Court concludes that it must deny the defendants' motion to strike, but must grant their motion to dismiss.

I. BACKGROUND

United Therapeutics is a biotechnology and pharmaceutical company that is incorporated in Delaware, headquartered in Silver Spring, Maryland, and has an office in the District of Columbia. Compl. ¶¶ 7, 12. Vanderbilt is a university located in Nashville, Tennessee, and Dr. Loyd is a professor at Vanderbilt who resides in Tennessee. Defs.' Mot. at 6; see also Compl. ¶¶ 8–9.

United Therapeutics developed a drug named treprostinil

to treat pulmonary hypertension, which was originally approved "for infusion through a continuous pump." Compl. ¶ 13. In 1997, United Therapeutics approached Vanderbilt to discuss developing "an aerosolized inhalable" version of treprostinil. Id. ¶ 14. Throughout 1997, Vanderbilt's Dr. Richard Parker and Dr. Loyd communicated and collaborated with United Therapeutics employees located in North Carolina on an inhalable treprostinil pilot study. See Pl.'s Opp'n, Exhibit ("Ex.") 2 (Declaration of Andrew Fisher ("Fisher Decl.")) ¶¶ 8–12.² During this time period, United Therapeutics sent one check in the amount of $3,600.00 from the District of Columbia to Vanderbilt to cover the cost of the pilot study. See

id., Ex. 2 (Fisher Decl.) ¶ 11, Ex. J (contact dated Oct. 23, 1997, from Theresa Fergo to Dr. Parker).

In May of 1998, the parties signed a Research Grant Agreement (the "Agreement"), see Compl. ¶ 17; see also Pl.'s Opp'n, Ex. 2 (Fisher Decl.) ¶ 16 ("On May 15, 1997, Vanderbilt sent signed copies of the Agreement ... to [United Therapeutics' District of Columbia] office, ... [and United Therapeutics] returned the final executed copy to Vanderbilt on May 21, 1997."); Pl.'s Opp'n, Ex. 2, Ex. A (Agreement), but Vanderbilt's signatories, Dr. Parker and Thomas Barnes, did not come to the District of Columbia to negotiate or execute the Agreement, see Defs.' Mot. at 7; see also id., Ex. 4 (Declaration of Thomas F. Barnes ("Barnes Decl.")) ¶ 4; id., Ex. 5 (Declaration of Dr. Richard E. Parker ("Parker Decl.")) ¶ 4. The Agreement designates that it is governed by Tennessee law, Pl.'s Opp'n, Ex. 2 (Fisher Decl.), Ex. A (Agreement) § 11(g), and the defendants performed their research in Nashville, Tennessee, while collaborating with Dr. Cloutier, Dr. Crow, and Dr. Wade, who were located in North Carolina, see Defs.' Mot., Ex. 2 (Declaration of Dr. James E. Loyd ("Loyd Decl.")) ¶ 5.

Following the development of the inhalable version of treprostinil, the parties' collaborative work was sent to United Therapeutics' patent attorney Stephen Maebius, at the District of Columbia office of the law firm Foley & Lardner, LLP ("Foley & Lardner"). Pl.'s Opp'n, Ex. 2 (Fisher Decl.) ¶ 19; see also id., Ex. 2 (Fisher Decl.), Ex. E (Notice of Recordation of U.S. Patent Addressed to Maebius at Foley & Lardner); id., Ex. 2 (Fisher Decl.), Ex. O (patent application sent on Foley & Lardner letterhead). After the patents were granted, Drs. Parker, Loyd, Crow, Wade, and Cloutier assigned their ownership rights to United Therapeutics. See id., Ex. 2 (Fisher Decl.), Ex. E (Assignment). Neither Dr. Loyd nor Dr. Parker traveled to the District to negotiate or execute the Assignment. See Pl.'s Opp'n, Ex. 2 (Fisher Decl.) ¶ 21 ("[United Therapeutics] sent a draft of the Assignment to Dr. Loyd for his signature."); see also Defs.' Mot., Ex. 2 (Loyd Decl.) ¶ 9 ("I never travelled to Washington, D.C. concerning any negotiation of or the execution of the Assignment. I signed the Assignment in Nashville, Tennessee."); id., Ex. 5 (Parker Decl.) ¶ 6 ("To my recollection, I never travelled to Washington, D.C. for any discussion of or the execution of the Assignment. As I recall, I signed the Assignment in Nashville, Tennessee."). The parties' submissions do not reveal any further contact between the parties until United Therapeutics contacted Vanderbilt and Dr. Loyd in 2016, to compel them to assist United Therapeutics in its patent infringement suit against a third party. See Compl. ¶¶ 22–27. In response, the defendants asserted their own ownership rights to the patents. See id. ¶¶ 4, 6.

II. STANDARD OF REVIEW

When a defendant moves to dismiss for lack of personal jurisdiction pursuant to Federal Rule of Civil Procedure 12(b)(2), the plaintiff bears the burden of establishing a factual basis for the court's exercise of personal jurisdiction over the defendant. Crane v. N.Y. Zoological Soc'y, 894 F.2d 454, 456 (D.C. Cir. 1990) ; see also First Chicago Int'l v. United Exchange Co., 836 F.2d 1375, 1378 (D.C. Cir. 1988) ("[The] plaintiff must make a prima facie showing of the pertinent jurisdictional facts." (citations omitted)). Conclusory statements do not satisfy this burden. See GTE New Media Servs., Inc. v. BellSouth Corp., 199 F.3d 1343, 1349 (D.C. Cir. 2000) (citing First Chicago Int'l, 836 F.2d at 1378–79 ). Instead, the plaintiff must allege specific facts connecting the defendant to the forum. See, e.g., Second Amendment Found. v. U.S. Conference of Mayors, 274 F.3d 521, 524 (D.C. Cir. 2001). Because the court is permitted to "consider material outside of the pleadings in ruling on a motion to dismiss for lack of ... personal jurisdiction," Artis v. Greenspan, 223 F.Supp.2d 149, 152 (D.D.C. 2002) (citing Land v. Dollar, 330 U.S. 731, 735 n.4, 67 S.Ct. 1009, 91 L.Ed. 1209 (1947) ), those allegations may be "bolstered by ... affidavits and other written materials as [the plaintiff] can otherwise obtain," Mwani v. bin Laden, 417 F.3d 1, 7 (D.C. Cir. 2005). And although the court need not accept the plaintiff's allegations bearing upon personal jurisdiction as true, see Associated Producers, LTD v. Vanderbilt Univ., 76 F.Supp.3d 154, 161 (D.D.C. 2014), "factual discrepancies appearing in the record must be resolved in favor of the plaintiff," Crane, 894 F.2d at 456 (citation omitted).

III. ANALYSIS

A. The Defendants' Transaction of Business in the District

Under the District of Columbia long-arm statute, a court "may exercise personal jurisdiction over a person ... [when] a claim for relief aris[es] from the ... [non-resident defendant's] ... transacting ... [of] business in the District of Columbia." D.C. Code § 13–423(a)(1) (2001). The District of Columbia Circuit has interpreted this provision of the long-arm statute "to provide jurisdiction to the full extent allowed by the Due Process Clause" of the United States Constitution, and so "the statutory and constitutional jurisdictional questions ... merge into a single inquiry"; that is, whether the court's exercise of jurisdiction over the non-resident defendant satisfies "the demands of due process." Thompson Hine, LLP v. Taieb, 734 F.3d 1187, 1189 (D.C. Cir. 2013) (quoting United States v. Ferrara, 54 F.3d 825, 828 (D.C. Cir. 1995) ). Jurisdiction over a non-resident defendant will satisfy due process if

there are "minimum contacts" between the [non-resident] defendant and the forum, "such that he should reasonably anticipate being haled into court there." Such minimum contacts must show that [this] defendant "purposefully avail[ed] itself of the privilege of conducting activities within the forum State, thus invoking the benefits and protections of its laws."

Thompson Hine, 734 F.3d at 1189 (first quoting Int'l Shoe Co. v. Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945) ; then quoting World–Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297, 100 S.Ct. 559, 62 L.Ed.2d 490 (1980) ; and then quoting Hanson v. Denckla, 357 U.S. 235, 253, 78 S.Ct. 1228, 2 L.Ed.2d 1283 (1958) ).

Three cases guide the Court's analysis of whether the defendants' had contacts with the District of Columbia that provide an adequate basis for this Court to exercise personal jurisdiction over them. First, the Supreme Court in Burger King v. Rudzewicz determined that a Florida long-arm statute permitted a federal district court in Florida to exercise personal jurisdiction over the defendant, a Michigan resident, in a breach of franchise agreement case. See 471 U.S. 462,...