United States District Court, D. Delaware
C. Grimm, Esq., Jeremy A. Tigan, Esq., Morris, Nichols, Arsht
& Tunnel LLP, Wilmington, De, Ellen A. Scordino, Esq.,
Elizabeth Trafton, Esq., COOLEY LLP, Boston, MA, Ivor Elrifi,
Esq., Jonathan Bach, Esq., Scott A. Sukenick, Esq., Cooley
LLP, New York, NY, attorneys for Plaintiff Intercept
Pazuniak, Esq., O'KELLY & ERNST, LLC, Wilmington, DE,
Glen M. Diehl, DIEHL LA w LLC, Watchung, NJ, attorneys for
Defendant Stephano Fiorucci.
ANDREWS, U.S DISTRICT JUDGE:
before the Court is Plaintiffs Motion for Partial Summary
Judgment on the Issue of Inventorship (D.I. 97) and related
briefing (D.I. 98, 114, 134), Defendant's Motion for
Partial Summary Judgment on the Issue of Ownership (D.I.
100), and Plaintiffs Cross-Motion for Partial Summary
Judgment on the Issue of Ownership (D.I. 111) and related
briefing (D.I. 101, 112, 132). For the reasons that follow,
Plaintiffs Motion for Partial Summary Judgment on the Issue
of Inventorship (D.I. 97) and Plaintiffs Cross Motion for
Partial Summary Judgment on the Issue of Ownership (D.I. 111)
are GRANTED and Defendant's Motion for
Partial Summary Judgment on the Issue of Ownership (D.I. 100)
a biopharmaceutical company, develops and commercializes new
drugs for treating disease. (D.I. 98 at 3). Plaintiff
collaborates with medical research scientists in Italy,
including Defendant and Dr. Pellicciari. (Id.).
Plaintiff, Defendant, and the University where Defendant
works collaborated under a series of agreements beginning in
2002. (D.I. 99-1 at Ex. A, Fiorucci Dep. 56:4-9, Nov. 13,
2015). The most recent of these agreements took effect in
July 2006. (D.I. 104-1 at Ex. A, Ex. B). Under these
agreements, Defendant worked on ligands to bind with the FXR
and TGR5 proteins in liver cells. (D.I. 104-1 at Ex. A
Defendant began his relationship with Plaintiff, Dr.
Pellicciari and Defendant worked together on compounds that
would treat liver disease through the FXR receptor. (D.I. 44
at ¶ 9). Defendant performed tests to discover the
properties and efficacy of the compounds. (Id.).
Three patents arise out of the research on the FXR ligands:
U.S. Patent No. 8, 546, 365 ("the '365
patent"), U.S. Patent No. 7, 932, 244 ("the
'244 patent"), and U.S. Patent No. 7, 858, 608
("the '608 patent") (collectively "the FXR
patents"). (D.I. 44 at ¶ 9). Both Dr. Pellicciari
and Defendant are named as joint inventors, and the patents
are assigned to Plaintiff.
2003, Dr. Pellicciari started developing chemical compounds
to develop a TGR5 agonist, which would bind with the TGR5
receptor to treat metabolic and inflammatory diss. (D.I. 99-1
at Ex. E, Pruzanski Dep. 39:6-40:8, Apr. 28, 2016). Dr.
Pellicciari began working with Plaintiff on the development
of these compounds in 2006. (Id. at 50:9-16).
Defendant was provided with the compounds in 2007 in order to
screen the compounds and perform efficacy tests.
(Id.). Plaintiff filed patents on the TGR5 compounds
starting in 2009. (D.I. 44 at ¶ 17). There are five
patents arising from the TGR5 research: U.S. Patent No. 8,
114, 862 ("the '862 patent"), U.S. Patent No.
8, 410, 083 ("the '083 patent"), U.S. Patent
No. 8, 445, 472 ("the '472 patent"), U.S.
Patent No. 8, 796, 249 ("the '249 patent"), and
U.S. Patent No. 8, 999, 964 ("the '964 patent")
(collectively "the TGR5 patents"). (D.I. 44 at
¶ 17). Dr. Pellicciari is named as the sole inventor on
these patents, and all are assigned to Plaintiff.
are three agreements at issue: the 2006 Consulting Agreement
("the CA"), the 2006 Sponsored Research Agreement
("the SRA"), and a 2008 final Letter Agreement
("the LA"), which terminated the relationship
between the parties. The SRA was executed contemporaneously
with the CA. All three Agreements state that Delaware law
shall apply. (D.I. 104-1 at Ex. A §7.8, Ex. B
§8.13, Ex. D ¶ 11(d)).
The C A
was an agreement between Plaintiff and Defendant under which
Defendant was hired by Plaintiff to work on ligands to bind
to FXR, TGR5, and other proteins. (D.I. 104-1 at Ex. A
§1.4). Under the CA, Defendant was to design and
implement research plans, lead compound screening efforts,
and coordinate patent preparation, among other
responsibilities. (Id. Appendix A). Defendant
assigned the rights to any inventions created during the term
of the agreement to Plaintiff and agreed to execute any
documents necessary to complete such assignment.
(Id. §4.1). In return, Plaintiff was to pay
Defendant a quarterly services fee and a yearly intellectual
property fee. (Id. §§3.1, 3.2).
was executed between Plaintiff, the University, and
Defendant. The SRA defined "Research Parties" as
the "University and Principal Investigator [i.e.,
Defendant] collectively or individually as the context
requires." (D.I. 104-1 at Ex. B §1.4). The SRA
repeatedly referred to both the "University, " the
"Principal Investigator, " and the "Research
Parties." Under the SRA, Defendant was to investigate
ligands for the FXR and TGR5 proteins, in addition to ligands
for other proteins. (Id. §2.1). Plaintiff, in
return, would sponsor the research by paying a fee to the
University and providing materials to Defendant.
(Id. §2.4). The SRA also stated that the
Research Parties would assign all rights in the project and
all patent rights associated with the project to Plaintiff:
Research Parties hereby assign to Sponsor all rights title
and interest in and to all Research Project Patent Rights and
Research Project Technology upon creation, each such
assignment to be effective as of the date of creation.
Research Parties shall cooperate with Sponsor in providing
assistance and executing any documentation necessary to
perfect such assignment.. ..Each of the ...