Peter Pedersen, a professor in the Department of Biological Chemistry at The Johns Hopkins University School of Medicine is one of three named inventors on US Patent Nos. 7,547,673 and 8,119,116. The patents are directed towards chemotherapeutic uses of certain adenosine triphosphate (“ATP”) inhibitors, particularly 3-bromopyruvate. The patents have been exclusively licensed to a company called PreScience Labs. According to the company’s webpage, “PreScience Labs has successfully completed preclinical mechanistic, in–vitro and animal testing using the intro–arterial delivery of its proprietary drug 3–bromopyruvate ( “3–BrPA” or “PSL-001” ), and FDA has authorized Phase I testing.
One of the other named inventors on the patent is Young Hee Ko. According to court documents, Ko and Pedersen “have a lengthy professional history: Ko joined Plaintiff’s laboratory in 1991 and the two worked together until Ko’s resignation from JHU in 2006. The two also appear to have had some sort of domestic arrangement: Ko acknowledged in a 2006 deposition that she sometimes stayed overnight at Plaintiff’s house and that she co-owned a vehicle with plaintiff.”
The third named inventor on the patents is Jean-Francois Geschwind, a former member of The Johns Hopkins University School of Medicine Department of Radiology. He is currently identified on the PreScience Labs website as Founder and CEO.
On June 11, 2015, Pedersen filed a lawsuit in the District of Maryland seeking a (1) declaration under 35 USC 256 that Ko is the sole inventor of both patents and (2) an order directing the United States Patent and Trademark Office (USPTO) to issue a Certificate of Correction accordingly.
Even though Pedersen initiated the patenting process in 2001 by executing an invention disclosure with the Johns Hopkins Office of Technology Licensing identifying all three of them as inventors of the subject matter, he claims that at the time did not understand the distinction between inventorship and authorship. He now claims that Geschwind’s sole contribution during the experimentation phase of the invention was to “guide the catheter into the hepatic arteries” of laboratory animals and “push the plunger,” and that Geschwind “did not even know what 3-BrPA was before Ko educated him.”
On October 27, 2015, the court issued an order granting Defendants’ (Johns Hopkins and Geschwind) motion to dismiss. The court found that Pedersen lacked standing under Article III of the Constitution because he had failed to identify a “cognizable injury redressable by the section 256 relief that he seeks.”
In particular, the court rejected his argument that his status as “named inventor” was enough to allow him to sue the University for change inventorship. According to the court, “Plaintiff cannot seriously contend that he has standing to sue in federal court simply because he is unhappy with the manner in which a bona fide assignee of a patent chooses to deploy or license its interest. Such a theory would confer near-limitless standing on disaffected scientists, well beyond the bounds of the particularized injury that Article III mandates.”
The court also rejected Pedersen’s argument that he had financial interest in the matter sufficient to establish standing, pointing out that Pedersen currently enjoyed a financial interest equal to one-third of the 35% “inventors’ personal share” provided by the Johns Hopkins IP Policy, which he would lose if he succeeded in removing himself as an inventor on the patents.
Pedersen also argued for standing based purely on “reputational interest,” asserting that his status as a “fair and honest academician is and will be adversely affected by the inclusion of himself and Geschwind as co-inventors.” The court acknowledged the fact that a recent Federal Circuit decision held that “concrete and particularized reputational injury can give rise to Article III standing” (citing Shukh v. Seagate Technologies (decided October 2, 2015)). However, Shukh involved a plaintiff who argued he has been wrongfully omitted as an inventor. In contrast, the District Court characterized as “conclusory and speculative” Pedersen’s allegation that his reputation has been harmed by being wrongly included as a named inventor on the patents.