Professional Documents
Culture Documents
Defendants.
TABLE OF CONTENTS
I. INTRODUCTION ............................................................................................................................. 1
II. BACKGROUND .............................................................................................................................. 2
III. LEGAL STANDARDS................................................................................................................... 5
A. Article III Standing ....................................................................................................... 5
B. Dismissal Under Federal Rule Civil of Procedure 12(b)(1) ......................................... 6
C. No Discretionary Supplemental Jurisdiction Over State Law Claims .......................... 6
D. Dismissal Under Federal Rule of Civil Procedure 12(b)(6) ......................................... 7
IV. ARGUMENT .................................................................................................................................. 7
A. THE COMPLAINT SHOULD BE DISMISSED IN ITS ENTIRETY
FOR LACK OF JURISDICTION UNDER RULE 12(b)(1) ........................................ 7
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TABLE OF AUTHORITIES
Page(s)
CASES
Ashcroft v. Iqbal,
556 U.S. 662 (2009) .............................................................................................................7, 16, 18
Bell Atl. Corp. v. Twombly,
550 U.S. 544 (2007) .......................................................................................................................16
Chou v. Univ. of Chi.,
254 F.3d 1347 (Fed. Cir. 2001)..............................................................................................5, 9, 11
Coda Dev. v. The Goodyear Tire & Rubber Co.,
No. 15-cv-1572,
2016 WL 5463058 (N.D. Ohio Sep. 29, 2016) ..............................................................................17
DaimlerChrysler Corp. v. Cuno,
547 U.S. 332 (2006) .........................................................................................................................6
E.E.O.C. v. Port Authority of N.Y. & N.J.,
768 F.3d 247 (2d Cir. 2014)...........................................................................................................16
Eli Lilly & Co. v. Aradigm Corp.,
376 F.3d 1352 (Fed. Cir. 2004)......................................................................................................16
Ethicon, Inc. v. U.S. Surgical Corp.,
135 F.3d 1456 (Fed. Cir. 1998)......................................................................................................17
Ferring B.V. v. Allergan, Inc.,
316 F. Supp. 3d 623 (S.D.N.Y. 2018)..............................................................................................9
First Data Corp. v. Inselberg,
870 F.3d 1367 (Fed. Cir. 2017)......................................................................................................13
Gaia Techs., Inc. v. Reconversion Techs., Inc.,
93 F.3d 774,
as amended, 104 F.3d 1296 (Fed. Cir. 1996).................................................................................16
Harris v. Mills,
572 F.3d 66 (2d Cir. 2009)...............................................................................................................6
HIF Bio, Inc. v. Yung Shin Pharm. Indus. Co.,
600 F.3d 1347 (Fed. Cir. 2010)................................................................................................14, 15
Huster v. J2 Cloud Servs., Inc.,
682 F. App’x 910 (Fed. Cir. 2017) ..................................................................................................5
Jim Arnold Corp. v. Hydrotech Systems, Inc.,
109 F.3d 1567 (Fed. Cir. 1997)................................................................................................12, 13
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Corporation, a New York corporation, Molecular Defense Holdings LLC, Molecular Defenses
Group, Inc., ThyoGen Group Corporation, and Kevin Davis (collectively “Molecular Defenses” or
“Defendants”), through their undersigned counsel, hereby submit this Memorandum in Support of
their Motion to Dismiss. Plaintiffs’ Complaint should be dismissed for lack of standing under
Federal Rule of Civil Procedure 12(b)(1) and, alternatively, failure to state a claim under Federal
I. INTRODUCTION
Plaintiffs’ Complaint attempts to invoke this Court’s jurisdiction by framing their dispute as
one over “inventorship” under the patent laws. But even taking as true the baseless allegations that
“Dr. Demopoulos solely contributed to the claimed invention,” and “Kevin Davis is not an inventor
of the inventions claimed,” Plaintiffs lack any standing and/or cognizable right in U.S. Patent No.
(“the ’381 International Application”). Complaint, ¶¶ 158, 168, 172. Nowhere in Plaintiffs’
Complaint is there any factual basis to conclude that Plaintiffs have standing to change the
inventorship of the ’611 Patent or the ’381 International Application. Plaintiffs do not represent the
estate of the late Dr. Harry B. Demopoulos and have alleged no facts that the ’611 Patent or ’381
International Application were assigned to them or were under an obligation of assignment to them.
Instead, Plaintiffs seek to bootstrap their state law causes of action—concerning nearly a
dozen additional intellectual property rights and undefined “tangible and intangible property” of still
1
The Complaint refers to the ’611 Patent as the “U.S. Derivative Patent.” Complaint (ECF No.
1), ¶ 131.
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two other entities—into federal court by manufacturing an “inventorship” dispute that in turn is
premised on its state-law allegations that the ’611 Patent and ’381 International Application “were
wrongfully and/or invalidly assigned” because assignments to which they were not parties are “null
and void.” But the case law is clear that Plaintiffs’ circular reasoning cannot vest this Court with
jurisdiction.
Plaintiffs do not have any rights in the ’611 Patent or ’381 International Application, whether
or not misjoinder of inventorship occurred. Plaintiffs have not alleged that they have anything
cognizable to be gained from removing Kevin Davis as an inventor. Thus, Plaintiffs lack standing to
bring their claims of correction of inventorship in Counts 1, 3, and 4, and they must be dismissed
under Rule 12(b)(1). Similarly, having no rights in the ’611 Patent or the ’381 International
Application, Plaintiffs have no standing with respect to Count 2’s request for a declaration of priority,
which, in any event, is not a live case or controversy. Because Plaintiffs lack standing for the patent-
related counts, there is no supplemental jurisdiction over the state law counts. Accordingly, the
Further, the counts relying on inventorship were insufficiently pled and should be dismissed
under Rule 12(b)(6). The inventorship allegations do not specify why Kevin Davis is not a proper
inventor, and fail to even address the relevant invention, i.e., the patent claims. Indeed, the limited
facts alleged by Plaintiffs actually support Kevin Davis’s inventorship. Thus, the Complaint can
also be dismissed for failure to state a claim upon which relief can be granted. Either way, this case
II. BACKGROUND
contribution to the patents, and the corporate reorganization that was specifically directed by Dr.
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Demopoulos before his tragic illness and death. While on a motion to dismiss the allegations in the
Complaint are assumed to be true, the Complaint includes such misleading assertions that
Defendants feel compelled to provide some additional background to the Court. This background
information is presented only to provide context to the dispute between the parties, and does not
affect the legal analysis for the motion to dismiss, which is based solely on Plaintiffs’ Complaint.
During his lifetime, Dr. Demopoulos owned and maintained more than twenty businesses for
the production and sale of high-quality supplements, such as glutathione. By 2014, some of these
entities were essentially non-functional or had been dissolved, while others were actively involved in
ongoing research or involved at various points in time in manufacturing and sale of compounds.
Dr. Demopoulos hired Kevin Davis in 2014 as President of ThyoGen Group Corporation to
bring order to this chaos. To that end, Dr. Demopoulos and Mr. Davis determined that the interests
of the shareholders would best be served by the consolidation of the work of the various entities into
one entity. Thus, the corporate restructuring for the five legacy companies, the Glutathione
Corporation, Cell. Redox Corporation, International, Molecular Defenses, Ltd., Global Cell
Signaling, Ltd., and Redox and Signaling-Pharmaceutical Holdings Corporation, was planned and
Soon after Mr. Davis was hired, he began to have scientific discussions with Dr. Demopoulos
and Nobel Laureate Dr. Luc Montagnier. Mr. Davis had detailed discussions with Dr. Demopoulos
and Dr. Montagnier about therapeutic direction, future business plans, manufacturing issues, supply
chain, customer support, and methods of action and disease targets. Mr. Davis also had numerous
scientific discussions with Dr. Montagnier regarding disease indications and their associated co-
factors and potential causes, particularly at the molecular level. Mr. Davis developed a sophisticated
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understanding of the biochemistry and the science related to glutathione and numerous diseases in
As part of the corporate restructuring, Mr. Davis and Dr. Demopoulos sought out the advice
of legal counsel and other professional advisors while creating the roll-up transaction restructuring
plan and implementing multiple revisions throughout the end of 2015 and early 2016. All of these
decisions, plans, and revisions were carried out well before undertaking the partial restructuring in
early March of 2016. In fact, Dr. Demopoulos and Mr. Davis shared this two-step roll-up
transaction restructuring business plan with Plaintiffs Mr. Eastwood and Mr. Bernstein as early as
the summer of 2015. By December 2015, Dr. Demopoulos and Mr. Davis had agreed upon the final
Plaintiffs’ Complaint lists six patents relating to glutathione that Plaintiffs call the “U.S. APC
Patents.” Complaint, ¶ 54. All of these patents have expired, and none of these patents are at issue
in this litigation. Only one of these six patents, U.S. Patent No. 6,204,248, was actually assigned to
Antioxidant Pharmaceuticals Corporation (“APC”) in 2016. Five of these six patents were in fact
assigned to Dr. Demopoulos from their issuance until February 14, 2017. On this date, as part of the
roll-up transaction restructuring plan, the other five patents were assigned from Dr. Demopoulos to
APC. Subsequently, all six of the glutathione patents were assigned from APC to Molecular
Defense Holdings, LLC on the very same day, February 14, 2017, consistent with the roll-up
transaction restructuring plan outlined by Dr. Demopoulos. Neither the ’611 Patent nor ’381
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The ’611 Patent was based on a provisional patent application, No. 62/182,229 (“the ’229
Application”), that was filed on June 19, 2015. Ex. 2 1 at (60). After Dr. Demopoulos suffered his
stroke, Mr. Davis, working with intellectual property counsel, made substantial changes to the ’229
Application, which resulted in the filing of non-provisional Patent Application No. 15/187,270
(“the ’270 Application”), which was filed on June 20, 2016. The ’270 Application includes
additional material related to use of the glutathione complex for treatment of the Zika virus,
pharmaceutical glutathione formulations. This material was not included in the ’229 Application. It
was Mr. Davis’s research and inventive efforts that led to the inclusion of this additional material.
To have Article III standing, the “plaintiff must have (1) suffered an injury in fact, (2) that is
fairly traceable to the challenged conduct of the defendant, and (3) that is likely to be redressed by a
favorable judicial decision.” Spokeo, Inc. v. Robins, 136 S. Ct. 1540, 1547 (2016) (citing Lujan v.
Defenders of Wildlife, 504 U.S. 555, 560-61 (1992)); Chou v. Univ. of Chi., 254 F.3d 1347, 1357
(Fed. Cir. 2001). “The benefit of the suit to the plaintiff must relate to the alleged injury.” Huster v.
J2 Cloud Servs., Inc., 682 F. App’x 910, 914 (Fed. Cir. 2017) (citing Vermont Agency of Natural Res.
v. United States ex rel. Stevens, 529 U.S. 765, 772-73 (2000)). Federal Circuit law applies to the
issue of standing under the patent laws. See WiAV Sols. LLC v. Motorola, Inc., 631 F.3d 1257, 1263
(Fed. Cir. 2010); Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1551 (Fed. Cir. 1995); Prima Tek II,
L.L.C. v. A-Roo Co., 222 F.3d 1372, 1376-77 (Fed. Cir. 2000). In conducting the standing analysis,
2
“Ex.” refers to documents attached to the Declaration of Joshua Mack, filed herewith.
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the court “assumes the merits of a litigant’s claim and determines whether even though the claim
may be correct the litigant advancing it is not properly situated to be entitled to its judicial
determination.” Rocky Mountain Helium, LLC v. United States, 841 F.3d 1320, 1325 (Fed. Cir.
2016) (internal quotation marks omitted); see 13A Charles Alan Wright & Arthur R. Miller, Federal
Practice and Procedure §§ 3531, 3531.4 (3d ed. 2008 & Supp. 2016).
A defendant may move to dismiss an action based on lack of federal subject matter
jurisdiction. Fed. R. Civ. P. 12(b)(1). In deciding a Rule 12(b)(1) motion, the court takes the factual
allegations in the complaint as true and draws all reasonable inferences in the plaintiff’s favor.
Harris v. Mills, 572 F.3d 66, 71 (2d Cir. 2009). Although a court must accept as true all of the
allegations contained in a complaint, that tenet is inapplicable to legal conclusions and threadbare
recitals of the elements of a cause of action supported by mere conclusory statements. Id. at 72.
Furthermore, federal courts are presumed to lack jurisdiction unless the contrary appears
affirmatively from the record. DaimlerChrysler Corp. v. Cuno, 547 U.S. 332, 342 (2006). The party
seeking to invoke the court’s jurisdiction bears the burden of demonstrating that jurisdiction exists.
Steel Co. v. Citizens for a Better Env’t, 523 U.S. 83, 103-04 (1998). If the pleading fails to
“affirmatively and distinctly” show the existence of the facts necessary to establish jurisdiction, the
challenged claim must be dismissed. Smith v. McCullough, 270 U.S. 456, 459 (1926).
A federal court should decline to exercise supplemental jurisdiction over state-law claims if it
has dismissed all claims purporting to invoke the court’s original jurisdiction. Where the court
dismisses the federal claims for lack of jurisdiction, it has no discretion to retain the supplemental
claims. See Larson v. Correct Craft, Inc., 569 F.3d 1319, 1325-26 (Fed. Cir. 2009) (“[I]f the
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jurisdiction-conferring patent claim is dismissed for lack of standing, the district court cannot
exercise supplemental jurisdiction over surviving state-law claims because there was never an
A defendant may move to dismiss an action based on failure to state a claim. Fed. R. Civ. P.
12(b)(6). While “a court must accept a complaint’s allegations as true,” this tenet is applicable only
to facts, not mere conclusions. Ashcroft v. Iqbal, 556 U.S. 662, 663 (2009). “Threadbare recitals of
withstand a motion to dismiss pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure. Id.
at 678. While “Rule 8 marks a notable and generous departure from the hypertechnical, code-
pleading regime of the prior era, … it does not unlock the doors of discovery for a plaintiff armed
with nothing more than conclusions.” Id. at 678-79. “[W]here the well-pleaded facts do not permit
the court to infer more than the mere possibility of misconduct, the complaint has alleged—but it has
not ‘show[n]’—‘that the pleader is entitled to relief.’” Id. at 679 (citation omitted).
IV. ARGUMENT
Plaintiffs lack constitutional standing to assert their patent Counts 1-4 for correction of
inventorship and priority because they lack any ownership and/or financial interest in the ’611 Patent
and ’381 International Application that are the subjects of those counts. The alleged improper
inclusion of Kevin Davis as an inventor does not create an injury in fact and his removal does not
redress any injury. Regardless of inventorship, no benefit inures to the Plaintiffs by this suit.
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Plaintiffs’ only claims arising “under the patent laws” relating to a U.S. patent concern a
single U.S. patent, the ’611 Patent.3 Although the Complaint discusses at length Plaintiffs’ concerns
with what it defines as the “APC Patents”—none of those patents are the basis of Plaintiffs’ counts
for inventorship. Thus, no allegations concerning them can provide standing as to the single,
separate, and unrelated ’611 patent. Plaintiffs must have an ownership or financial interest in
the ’611 patent, not some other intellectual property rights, but it has not even alleged one. No
Plaintiff is alleged to ever have ownership of the patent. Nor even is non-party APC, through which
And because these patent counts are the only asserted bases for federal jurisdiction, there is
also no supplemental jurisdiction of Plaintiffs’ state law claims in Counts 5-8 under 28 U.S.C. §
1367. Larson, 569 F.3d at 1325-26 (“[I]f the jurisdiction-conferring patent claim is dismissed for
lack of standing, the district court cannot exercise supplemental jurisdiction over surviving state-law
“Whether the plaintiff has Article III standing ‘is the threshold question in every federal case,
determining the power of the court to entertain the suit.’” Id. at 1325 (quoting Warth v. Seldin, 422
U.S. 490, 498 (1975)). Here, as a threshold matter, Plaintiffs fail to allege the required injury,
causation, and redressability required for constitutional standing for a federal cause of action, much
less one that is not in turn improperly conditional on state law claims.
3
As discussed in § IV.A.3, the allegations as to the international application do not arise under
the patent laws.
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The Federal Circuit has held that “a plaintiff seeking correction of inventorship under § 256
can pursue that claim in federal court only if the requirements for constitutional standing—namely
injury, causation, and redressability—are satisfied.” Larson, 569 F.3d at 1326. Plaintiffs here fail to
allege the required elements for standing where they claim no non-contingent interest in the ’611
Patent and ’381 International Application, much less an interest that has been redressably injured by
Defendants. See Spokeo, 136 S. Ct. at 1547 (“[A]t the pleading stage, the plaintiff must
A plaintiff challenging inventorship meets its Article III burden only by showing an
“ownership interest” in the patent, a non-conditional “concrete financial interest” in the patent, or a
“concrete and particularized reputational injury” arising from the omission as a named inventor on
the patent. Ferring B.V. v. Allergan, Inc., 316 F. Supp. 3d 623, 630 (S.D.N.Y. 2018) (citing Larson,
569 F.3d at 1326; Chou, 254 F.3d at 1359; and Shukh v. Seagate Tech., LLC, 803 F.3d 659, 663 (Fed.
Here, Plaintiffs do not allege facts showing an ownership interest, concrete financial interest,
or reputational injury. Instead, they simply state in a conclusory manner that “Plaintiffs have a
legally protected interest in the [’611 Patent] and [’381 International Application].” Complaint, ¶¶
155, 162, 167, 171. But they do not allege how or why. Plaintiffs do not allege that they (or even
non-party APC) ever owned the ’611 Patent or ’381 International Application by assignment,
because they did not. Indeed, the facts as pled demonstrate that both Kevin Davis and Dr.
Demopoulos assigned their rights in the patent and application to Molecular Defenses Corporation.
See Complaint, ¶¶ 12, 130, 196. Plaintiffs identify and allege no assignment documents or right of
assignment documents related to the patent or application that confer upon any or all of Plaintiffs
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ownership rights, because none exist. As noted, Plaintiffs’ allegations as to the unrelated “APC
Patents” are irrelevant. Plaintiffs have not pleaded any entitlement to Dr. Demopoulos’s
inventorship stake through assignment and his estate is not represented as Plaintiff. 4
required injury, causation, and redressability. Even if Plaintiffs made a claim that they derived any
rights from Dr. Demopoulos as inventor, which they do not, Dr. Demopoulos is already a named
inventor and Plaintiffs suffered no injury and gain nothing from having him declared the sole
inventor. Indeed, where Molecular Defenses Corporation received its rights in the patent and
4
The problems with Plaintiffs’ pleadings are compounded by the utter lack of guidance in the
Complaint as to whether Plaintiffs are purporting to bring the suit in their individual capacities
(hence the repeated touting of Mr. Eastwood and definition of only Messrs. Eastwood and Bernstein
as “Plaintiffs” immediately following the caption), as trustees of the single named trust (as might be
implied by the caption), as a direct shareholder suit (in which case Plaintiffs failed to allege distinct,
individual injuries and duties), or as a derivative shareholder suit (given the naming of the Does 1-
XXXX), and, if so, as shareholders of what entity (given the naming and allegations as to a number
of different entities) and on what basis they establish a demand or futility and defeat of the business
judgment rule. At the motion to dismiss stage, “it is the burden of the party who [is seeking standing
to sue to] clearly [] allege facts demonstrating that he is a proper party to invoke judicial resolution
of the dispute.” Thompson v. County of Franklin, 15 F.3d 245, 249 (2d Cir. 1994) (internal
quotations omitted and citations omitted). It is not the Court’s or Defendants’ responsibility to infer
standing argumentatively from the confused averment in the pleadings and the confusion here
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application from both Dr. Demopoulos and Kevin Davis separately, Plaintiffs can claim no injury
from the inclusion of Kevin Davis as inventor. Plaintiffs do not allege that they have a concrete
financial interest at all, much less one that differs whether or not Kevin Davis is named as an
inventor. And no reputational injury arises, or is even alleged, for the alleged misjoinder of Kevin
Davis as an inventor.
Plaintiffs raised in the pre-motion conference and correspondence the Chou case from the
Federal Circuit, which they allege to be applicable here. 254 F.3d. 1357. It is not. In that case, the
Federal Circuit found that the plaintiff had standing to allege correction of inventorship where she
alleged that her name had been improperly omitted from patent applications and if she had been
identified as an inventor, she would be entitled to royalties and licensing revenue. Id. at 1359.
Plaintiffs themselves represent Chou as supporting a case where “but for incorrect inventorship…,
the plaintiff would have had a concrete financial interest in the patent.” ECF No. 40 at 2 (internal
quotations omitted). But that is not the case here. Removing Kevin Davis as an inventor does not
give Plaintiffs ownership or financial rights they never owned. Of course, in Chou, failing to name
the non-joined inventor deprived her of payment she would be due as an inventor. 254 F.3d. at 1359.
Here, Plaintiffs seek to remove a purportedly mis-joined inventor. But including Kevin Davis as an
inventor did not cause Plaintiffs any injury and removing him creates no remedy where Defendants
derived their ownership in the patent not just through Mr. Davis, but also Dr. Demopoulos, who
similarly assigned his right as an inventor to Defendant Molecular Defenses Corporation. In other
words, whether or not Mr. Davis is an inventor, the relative rights of Plaintiffs and Defendants do
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At bottom, though it is unclear, it appears that Plaintiffs argue that they have some “legally
protected interest” in the patent and application based on their Count 5 allegations of Ownership, i.e.,
that “[t]he U.S. Derivative Patent and International Applications were wrongfully and/or invalidly
assigned to MDC-Nevada (or, alternatively, MDC-New York),” and, therefore, “[t]hose assignments
are null and void.” Complaint, ¶¶ 176-177. But again, Plaintiffs do not explain on what theory this
is the case or why they have standing to “void” legal documents to which they were not a party. The
Court might guess that Plaintiffs’ ownership claim—by seeking a judgment that “Plaintiffs and Doe
Plaintiffs, the other shareholders of APC, are the sole owners” of the patent rights (Complaint, ¶
181)—is premised on a theory that Plaintiffs’ purported “legal interest” flows from APC. But
similarly, not a single fact pleads that APC was ever the owner of the ’611 Patent and ’381
Even if any ownership or financial interest is dependent on Plaintiffs’ other claims that the
patents were wrongfully assigned or the conversion and other state-law counts, then standing also
fails. The Federal Circuit has confirmed that where the only path to financial reward under a § 256
correction of inventorship claim requires first succeeding on state-law claims of rescission of patent
assignment, there can be no standing. Larson, 569 F.3d at 1326-27. In other words, where the
financial interest is contingent on the state law claims, there is no independent standing to correct
inventorship. Id. In Larson, the Court held that plaintiff lacked standing to correct inventorship
because he had no ownership interest in the patents unless he contingently succeeded on his state-
law claims of rescission. Id. Similarly, in Jim Arnold Corp. v. Hydrotech Systems, Inc., the court
found plaintiff lacked standing because “absent judicial intervention to change the situation,” he did
not have an ownership interest in the patents where he had assigned his patent rights, though he
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sought to rescind the assignments through claims brought under state law. 109 F.3d 1567, 1571-72
(Fed. Cir. 1997), see also First Data Corp. v. Inselberg, 870 F.3d 1367, 1372-75 (Fed. Cir. 2017)
(district court properly dismissed complaint premised on patent laws for lack of jurisdiction where
claims were premised on title to the patents that would not occur unless and until the court found
assignment of the patents was invalid under state court claims); Luckett v. Delpark, Inc., 270 U.S.
496 (1926) (ruling plaintiff’s claim to recover royalties, damages for not complying with provision
in license agreement to push sales of a royalty bearing product, and seeking formal reconveyance of
an assigned patent, did not arise under the patent laws, and ruling that because the plaintiff had to
obtain from equity a rescission of the assignment and exclusive license before his claims for patent
infringement could mature, the suit could not arise under the patent laws).
Thus, Federal Circuit precedent compels the conclusion that Plaintiffs have no constitutional
standing to sue for correction of inventorship in federal court where their sole stake in the patents is
in turn contingent on obtaining relief that a federal court has no jurisdiction under § 1338 to provide.
Plaintiffs cannot show an injury in fact because (regardless of inventorship) they have no ownership
rights in the patent. In the cases cited above, as here, unless and until the plaintiffs gained title to the
patents, they had no non-contingent interest in the patents on which to support standing to correct
inventorship.
Similarly to the inventorship claims, Plaintiffs lack standing to bring Count 2 seeking a
declaration of rights, this time for priority, as to the ’611 Patent and ’381 International Application.
Again, Plaintiffs do not own, and cannot claim to own, the patent or application. Nor do Plaintiffs
otherwise possess a financial interest that is affected, much less harmed, by the patent’s and
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application’s priority claim to the non-provisional application for the same reasons discussed supra §
IV.A.1.
Moreover, Plaintiffs allege “an actual and justiciable controversy” between Plaintiffs and
Defendants as to whether the patent and application “derive from,” i.e., claim priority to, the 2015
provisional application. Complaint, ¶ 164. But there is no case or controversy, as Plaintiffs cannot
and do not allege any contrary position by Defendants on this point. In fact, the ’611 Patent declares
on its face that it “claims benefit of priority under 35 U.S.C. § 119(e) from U.S. Provisional Patent
Application No. 62/182,229.” Ex. 1 at (60), (65). Accordingly, there is no case or controversy or
Through Count 4, Plaintiffs seek an order, pursuant to PCT Rule 92bis (a regulation under
the Patent Cooperation Treaty), directing the Commissioner of Patents to request that the United
Nation’s World Intellectual Property Organization’s (“WIPO”) International Bureau remove Kevin
Davis as an inventor of the ’381 International Application. Complaint, ¶¶ 170-173. But there is no
such private right of action giving a federal district court such jurisdiction over a U.S. patent
application, much less an international application through WIPO’s International Bureau. Indeed,
the sole mention of PCT Rule 92bis in any federal court proceeding that Defendants have been able
to locate is Plaintiffs’ own novel Complaint. The Federal Circuit has already emphasized that there
is no “private right of action to challenge inventorship of a pending patent application.” HIF Bio,
Inc. v. Yung Shin Pharm. Indus. Co., 600 F.3d 1347, 1354 (Fed. Cir. 2010); see also Kamden-Ouaffo
v. Pepsico, Inc., 657 F. App’x 949, 953 n.5, (Fed. Cir. 2016), cert. denied, 137 S. Ct. 1096 (2017)
(“To the extent [plaintiff] seeks correction of inventorship of international patents or patent
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Indeed, not even for a U.S. patent application is there a private right of action under 35 U.S.C.
§ 116. In HIF Bio, the Federal Circuit “expressly h[e]ld that § 116 does not provide a private right
of action to challenge inventorship of a pending patent application” where section 116 “authorizes
the Director of the Patent and Trademark Office to take certain actions concerning pending patent
application, but ‘plainly does not create a cause of action in the district courts to modify inventorship
on pending applications.’” 600 F.3d at 1353-54 (citation omitted). In a similar manner, Rule 92bis
authorizes WIPO’s International Bureau to take certain action, but does not create a cause of action
in the U.S. district courts. In any event, even if a claim for correction of inventorship was permitted
as to the PCT application, the time has come and gone for any permissible action under PCT Rule
92bis. Rule 92bis, on its face, indicates that the International Bureau shall not record the requested
change, here to inventorship, if the request is received after the expiration of 30 months from the
priority date, which came and went in December 2017. Thus, Count 4 is also time-barred.
Plaintiffs’ sole claim to jurisdiction is that the Court has original jurisdiction under 28 U.S.C.
§§ 1331 and 1338(a) as arising under the Patent Laws, and in particular for inventorship and priority.
As noted above, such jurisdiction does not exist for lack of standing and lack of case or controversy.
Plaintiffs’ remaining counts rely only on supplemental jurisdiction under 28 U.S.C. § 1367.
When claims arising under the patent laws are dismissed for lack of standing, the district
court has no discretion to exercise supplemental jurisdiction over related state-law claims and must
dismiss. Nowak v. Ironworkers Local 6 Pension Fund, 81 F.3d 1182, 1188 (2d Cir. 1996) (“since a
court must have original jurisdiction in order to exercise supplemental jurisdiction, a dismissal
pursuant to Rule 12(b)(1) precludes a district court from exercising supplemental jurisdiction over
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related state claims.”); see also Larson, 569 at 1325-26 (“[I]f the jurisdiction-conferring patent claim
is dismissed for lack of standing, the district court cannot exercise supplemental jurisdiction over
surviving state-law claims because there was never an Article III case or controversy.”) (citing
Textile Prods., Inc. v. Mead Corp., 134 F.3d 1481, 1486 (Fed. Cir. 1998); Gaia Techs., Inc. v.
Reconversion Techs., Inc., 93 F.3d 774, 781, as amended, 104 F.3d 1296, 1297 (Fed. Cir. 1996));
Salmon Spawning & Recovery Alliance v. U.S. Customs & Border Protection, 550 F.3d 1121, 1133
(Fed.Cir.2008) (noting that “supplemental jurisdiction cannot be exercised when a court does not
have original jurisdiction over at least one claim in the suit”). Here, because Plaintiffs’ patent
allegations fail for lack of standing and case or controversy, Plaintiffs state-law causes of action
In the alternative to the foregoing, the Complaint should be dismissed for failure to state a
claim under Rule 12(b)(6). Dismissal is proper when the complaint, viewed in a light most favorable
to the non-movant, lacks a cognizable theory or fails to allege sufficient facts to support a cognizable
legal theory. The Plaintiffs must have alleged sufficient facts to support the viability of their claims
by pleading sufficient nonconclusory factual matter to set forth a claim that is plausible on its face,
meaning specific facts, not just a formulaic recitation of elements. E.E.O.C. v. Port Authority of N.Y.
& N.J., 768 F.3d 247, 253 (2d Cir. 2014) (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570
(2007) and Iqbal, 556 U.S. at 678). Plaintiffs have failed to do so.
Inventors named on an issued patent are presumed to be correct. Eli Lilly & Co. v. Aradigm
Corp., 376 F.3d 1352, 1358 (Fed. Cir. 2004). A plaintiff alleging misjoinder of inventors must meet
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the heavy burden of proving its case by clear and convincing evidence. Id. In a patent, it is the
claims of the patent that define the invention. 35 U.S.C. § 112(b). An inventor must conceive
subject matter actually recited in the claims of the patent and not merely described elsewhere in the
patent outside of the claims. Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460-61 (Fed. Cir.
1998). Thus, a plaintiff claiming sole inventorship must provide clear and convincing evidence
corroborating conception of each and every claim in the patent at issue and that any contribution by
a misjoined inventor to the conception of each and every claim was insignificant. While at the
pleading stage, Plaintiffs do not yet need to meet this heavy burden, they must at least plead
sufficient allegations to state a plausible claim. See Opternative, Inc. v. Jand, Inc., No. 17-6936
(JFK), 2018 WL 3747171, at *9 (S.D.N.Y. Aug. 7, 2018) (finding failure to state a claim for sole
inventorship where the complaint, beyond conclusory and vague statements, “does not include any
specific allegations that Dr. Lee conceived of the total patented invention and that any contribution
by the named inventors…was insignificant.”); Coda Dev. v. The Goodyear Tire & Rubber Co., No.
15-cv-1572, 2016 WL 5463058, at *6 (N.D. Ohio Sep. 29, 2016) (dismissing correction of
inventorship claims including those where plaintiff sought total substitution of named inventors for
invention, i.e., the patent claims. Plaintiffs do not address any aspect of the patent claims and
tellingly ignore the fact that the claims in the ’611 Patent are different than those in the provisional
application. The removal of Kevin Davis as an inventor requires a showing that he did not
contribute to a single limitation of a single claim in the patent and that Dr. Demopoulos solely
invented the entirety of every claim. Plaintiffs did not even address the patent claims or provide
corroborating information that Dr. Demopoulos is the sole inventor of each and every claim. Indeed,
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Plaintiffs fail to acknowledge that the claims in the ’611 Patent were not the same as those included
in the original provisional application filed by Dr. Demopoulos. The sole factual allegation in the
Complaint that Kevin Davis should be removed is found in paragraph 158, which is mere conclusion.
The facts that portions of the non-provisional are copied from the provisional (as would be expected),
that they relate to “the same or similar technology” plus “additional technical explanations and
examples of glutathione treatment, formulations, and methods” fails to show that Kevin Davis
contributed nothing significant and is not an inventor, or that Dr. Demopoulos conceived of each and
every limitation in each and every claim and is the sole inventor. This threadbare, inapposite
recitation fails to allege facts supporting the elements of a § 256 claim. See Iqbal, 556 U.S. at 678
(holding that “a complaint [will not] suffice if it tenders ‘naked assertion[s]’ devoid of ‘further
In fact, the admission in the Complaint that additional portions of the non-provisional
formulations, and methods regarding same” itself supports only the conclusion that Defendant Kevin
Davis contributed to the invention. This is particularly so because the ’611 Patent was allowed to
issue by the U.S. Patent and Trademark Office due in large part to unexpected results concerning
humidity parameters, which were not present in the original claims of the provisional application.
Moreover, the twenty claims in the ’611 Patent are far more detailed than the original sixteen claims
in the provisional application, having undergone significant amendment at the hands of Mr. Davis.
To withstand a motion to dismiss a conversion claim, a plaintiff must allege (1) the property
subject to conversion is a specific identifiable thing; (2) plaintiff had ownership, possession or
control over the property before its conversion; and (3) defendant exercised an unauthorized
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dominion over the thing in question, to the alteration of its condition or to the exclusion of the
plaintiff’s rights. See Kirschner v. Bennett, 648 F. Supp. 2d 525, 540 (S.D.N.Y. 2009).
Here, the detail in the complaint is not sufficient. Plaintiffs’ conversion claim covers a
myriad of unidentified property supposedly converted including “tangible and intangible property of
ThyoGen Pharmaceuticals, Glutathione Corporation, and Redox & Signaling, including without
limitation money funds, company shares, books and records, machinery, equipment, furniture,
and/or fixtures.” Complaint, ¶ 184. This fails to identify a “specific identifiable thing.” Moreover,
Plaintiff does not even feign to allege how or why they exercised ownership, possession, or control
over the same or who, how, and when Defendants exercised unauthorized dominion over the same.
The same supposed undefined property is the subject of Plaintiffs’ Unjust Enrichment count.
In order to adequately plead an unjust enrichment claim, Plaintiffs “must allege that (1) the other
party was enriched, (2) at that party’s expense, and (3) that it is against equity and good conscience
to permit the other party to retain what is sought to be recovered.” Kamdem-Ouaffo, 657 F. App’x at
953. But Plaintiffs’ bare-bones allegations fail to identify the precise property that allegedly
enriched Defendants, much less how they did so at Defendants’ expense. And because “a claim of
constructive trust under New York law requires [p]laintiffs to show unjust enrichment,” Plaintiffs’
constructive trust claims should also be dismissed. Id. (alteration in original, internal citation
omitted) (dismissing for failure to state a claim plaintiff’s claims for unjust enrichment and
constructive trust under New York law where plaintiff argued defendant had been unjustly enriched
by claiming and patenting its inventions for its “own benefit.”). As to the claims over the
intellectual property rights, Plaintiffs lack standing to assert the same and have similarly failed to
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V. CONCLUSION
For the foregoing reasons, Defendants respectfully request the Court to grant their motion to
dismiss.
s/ Joshua Mack
Sheryl Shapiro Bassin
1301 Avenue of the Americas, 40th Floor
New York, New York 10019
Telephone: (212) 999-5800
Facsimile: (212) 999-5899
Email: sbassin@wsgr.com
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CERTIFICATE OF COMPLIANCE
This brief complies with the type-volume limitation set forth in Rule 2(D) of Judge Koeltl’s
Individual Rules of Practice. The brief contains 6,069 words, excluding the parts of the brief