United States District Court, M.D. Tennessee, Nashville Division
ALETA A. TRAUGER, District Judge.
Pending before the court are two motions filed by the defendant, Millennium Pharmaceuticals, Inc. ("Millennium"). Millennium has filed a Motion to Dismiss For Failure to State a Claim and for Lack of Standing under Rules 12(b)(1) and 12(b)(6) (Docket No. 32) and a Motion to Transfer Venue Under 28 U.S.C. § 1404(a) (Docket No. 27), both of which the plaintiff opposes. For the reasons stated herein, the Motion to Dismiss will be granted, the case will be dismissed without prejudice under Rule 12(b)(1) because the plaintiff lacks standing to sue, and the Motion to Transfer Venue will be denied as moot.
This case concerns alleged infringement of U.S. Patent No. 6, 171, 786 (the "'786 Patent") (Docket No. 1, Compl., Ex. A), which relates to a special method for preventing multidrug resistance in cancer cells during chemotherapy treatments (the "Invention"). IPXpharma, LLC ("IPX") is a Texas limited liability company that was formed in April 2014. IPX purports to maintain a principal place of business in Nashville, Tennessee. It has five members: (1) IP Equity Management, a Texas corporation; (2) Alexander Shtil, a resident of Russia and one of the Invention's inventors, (3) Igor Roninson, a resident of South Carolina and one of the Invention's inventors, (4) Senex Biotechnology, a Delaware corporation with a principal place of business in South Carolina,  and (5) Karthik Gopalakrishnan, a resident of North Carolina. The court will refer to Roninson and Shtil as the "Inventors." The defendant, Millennium, is a Delaware corporation that is headquartered in Massachusetts. Millennium manufactures and markets an anti-cancer drug called "VELCADE®."
On July 28, 2014, IPX filed a Complaint against Millennium. (Docket No. 1.) In the Complaint, IPX alleges that it is the "owner of all right, title, and interest in" the 786 Patent and that Millennium's marketing and sale of VELCADE® has infringed the 786 Patent. The Complaint is essentially a form pleading with no contextual allegations.
II. The Motion to Dismiss
Millennium has moved to dismiss the Complaint on two grounds. First, Millennium has moved to dismiss for lack of subject matter jurisdiction under Rule 12(b)(1), contending that IPX lacks standing to sue for past infringement of 786 Patent. Second, Millennium has moved to dismiss for failure to state a claim under Rule 12(b)(6), contending that IPX has failed to plead a claim for direct infringement.
Particularly with respect to the issue of standing, the parties have filed a substantial volume of materials and multiple legal briefs. The progression of the briefing and the supporting materials is atypical and requires some explanation.
In support of its Motion to Dismiss, Millennium filed a Memorandum of Law (Docket No. 33) and the supporting Declaration of Leizel A. Ching (Docket No. 34), which attaches publicly available records from the United States Patent and Trademark Office ("USPTO") relating to the issue of IPX's standing. With respect to standing, Millennium argued - with appropriate citation to USPTO records - that (1) the Inventors had assigned their interests in the Invention and its related patents to the Board of Trustees of the University of Illinois (the "University") in 1995,  (2) there was no public record indicating that the University subsequently assigned any interest in the 786 Patent back to the Inventors, and (3) as a consequence, a publicly recorded assignment in April 2014 between the Inventors and IPX (the "April 2014 IPX Assignment Agreement"), in which the Inventors purported to assign to IPX the right to sue for past infringement of the 786 Patent, was a legal nullity.
IPX filed a Response in opposition to the Motion to Dismiss (Docket No. 40), in support of which it filed the Declaration of Cole R. Gresham (Docket No. 40, Attach. No. 1). The Gresham Declaration attached (1) a copy of a March 2014 "Invention Assignment Agreement" between the University and the Inventors, and (2) a copy of a Form 10-K filed by Millennium on March 10, 2004. In its Response, IPX argued that the March 2014 Invention Assignment Agreement, which was not recorded with the USPTO, showed that the University had in fact assigned its interests in the 786 Patent (including the right to sue for past infringement) back to the Inventors in March 2014. IPX argued that, as a consequence, the Inventors in fact possessed the right to sue for past infringement when they executed the (recorded) April 2014 IPX Assignment Agreement, which assigned that right to IPX.
Millennium filed a Reply (Docket No. 43), in which it asserted that, as a matter of contractual interpretation, the March 2014 Invention Assignment Agreement (of which Millennium was unaware until IPX filed its Response brief) did not convey the right to sue for past infringement to the Inventors.
With leave of court, IPX has responded to Millennium's position concerning the March 2014 Invention Assignment Agreement by filing a Sur-Reply (Docket No. 52). In the Sur-Reply, IPX has pivoted its legal position concerning standing. IPX now takes two positions that are essentially at odds with the arguments in its Response: (1) in its Sur-Reply, IPX does not dispute that, as a matter of law, the March 2014 Invention Assignment Agreement did not convey the right to past enforcement back to the Inventors, but (2) IPX now contends that the March 2014 Invention Assignment Agreement was not the operative assignment document for purposes of standing. Instead, IPX now represents that the University had actually assigned all of its interests in the 786 Patent (including the right to sue for past infringement) to the Inventors in February 1999 - fifteen years before the March 2014 Invention Assignment Agreement between the same parties. IPX argues that the agreement is reflected in a February 2, 1999 letter from Susan F. Gray, a Marketing and Transfer Specialist for the University's Intellectual Property Office, to Kevin E. Noonan, the prosecuting attorney for the Invention. IPX's Sur-Reply refers to this letter as a "Letter Agreement." The court will simply refer to it as the "Gray Letter." In support of its position, IPX has filed (1) the Declaration of Jill Tarzian Sorensen (Docket No. 52, Attach. No. 1), a University administrator who avers that the parties entered into this agreement as reflected in the attached Gray Letter, and (2) the Declaration of Igor Roninson (Docket No. 50, Ex. 2), who also avers that the parties entered into this agreement in 1999, that he construed the Gray Letter as reflecting that agreement, that he paid all of the prosecution and maintenance expenses associated with the 786 Patent from that point forward, and that he regarded the March 2014 Invention Assignment Agreement as merely providing "a more formal confirmation of the February 1999 agreement that assigned the 786 patent back to Dr. Shtil and me, in order to facilitate the transaction with IPXpharma."
In response to IPX's Sur-Reply, Millennium has filed a Supplemental Response (Docket No. 56), in which it addresses IPX's arguments concerning the purported February 1999 agreement between the University and the Inventors. Millennium argues that IPX has not demonstrated that the University and the Inventors entered an actual, valid, and binding assignment agreement in February 1999 for multiple reasons. In support of one of its arguments, Millennium has filed the supplemental Declaration of Leizel A. Ching (Docket No. 56, Attach. No. 1), which attaches a copy of the University's "Rules of Organization and Procedure."
III. Motion To Transfer Venue
Millennium has also filed a Motion to Transfer Venue under 28 U.S.C. § 1404(a), contending that the relevant factors justify a transfer of this case to the United States District Court for the District of Massachusetts.
The Motion to Transfer Venue has also spawned a substantial volume of filings. In support of its Motion to Transfer, Millennium has filed (1) a Memorandum of Law (Docket No. 28), (2) the Declaration of Linda McCampbell (Docket No. 29), a paralegal who personally investigated whether IPX in fact maintains a principal place of business in Nashville; (3) the Declaration of Leizel A. Ching (Docket No. 30); and (4) the Declaration of Stephen M. Gansler, Millennium's Senior Vice President of Human Resources (Docket No. 31). IPX has filed a Response in opposition to the Motion to Transfer (Docket No. 41), in support of which it has filed the Affidavit of Richard Maradik ( id., Attach. No. 1) and the Affidavit of Ed Powell ( id., Attach. No. 2). Millennium has filed a Reply (Docket No. 49), in support of which it filed the supplemental Declaration of Leizel A. Ching ( id., Attach. No. 1).
Because the case is subject to dismissal based on lack of standing alone, the court will address the standing inquiry first.
MOTION TO DISMISS FOR LACK OF SUBJECT MATTER JURISDICTION
I. Legal Standard for Rule 12(b)(1) Motion
"Standing goes to a court's subject matter jurisdiction." Kepley v. Lanz, 715 F.3d 969, 972 (6th Cir. 2013) (internal quotation and brackets omitted). Thus, a complaint may be dismissed for lack of subject matter jurisdiction under Rule 12(b)(1) if the plaintiff lacks standing to bring suit. See, e.g., Taylor v. KeyCorp, 680 F.3d 609 (6th Cir. 2012) (affirming district court's grant of Rule 12(b)(1) motion to dismiss for lack of standing); Allstate Ins. Co. Global Med. Billing, Inc., 520 F.Appx. 409, 410-11 (6th Cir. 2012) (stating that lack of standing is treated as an attack on the court's subject matter jurisdiction and is therefore considered under Rule 12(b)(1)). When a defendant challenges the plaintiff's standing to sue under Rule 12(b)(1), the burden is on the ...