United Therapeutics Corporation v. Vanderbilt University

278 F. Supp. 3d 407
CourtDistrict Court, District of Columbia
DecidedAugust 15, 2017
DocketCivil Action No. 2016-2220
StatusPublished
Cited by4 cases

This text of 278 F. Supp. 3d 407 (United Therapeutics Corporation v. Vanderbilt University) is published on Counsel Stack Legal Research, covering District Court, District of Columbia primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
United Therapeutics Corporation v. Vanderbilt University, 278 F. Supp. 3d 407 (D.D.C. 2017).

Opinion

MEMORANDUM OPINION

‘ REGGIE B. WALTON, United States District Judge

This' cáse 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 *410 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 *411 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 D¡efs.’ 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 inhala-ble 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 Deck), Ex. E (Notice of Recordation of U.S. Patent Addressed to Maebius at Foley & Lardner); id., Ex. 2 (Fisher Decl.), Ex. 0 (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 Deck), 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 Deck) ¶21 (“[United Therapeutics] sent a draft of the Assignment to Dr. Loyd for his signature.”); see also Defs.’ Mot., Ex. 2 (Loyd Deck) ¶ 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 Deck) ¶ 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 ...

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Bluebook (online)
278 F. Supp. 3d 407, Counsel Stack Legal Research, https://law.counselstack.com/opinion/united-therapeutics-corporation-v-vanderbilt-university-dcd-2017.