Synergy Advanced Pharmaceuticals, Inc. v. Capebio, LLC
2011 U.S. Dist. LEXIS 56285
S.D.N.Y.2011Background
- Synergy sues CapeBio, CombiMab, and Lindell in New York state court for breach of the 2007 Agreement and related conduct.
- CapeBio allegedly assigned inventions to Synergy and Lindell allegedly formed CombiMab as an alter ego and shell entity.
- The 2007 Agreement included an assignment of inventions to Synergy, and confidentiality, non-disclosure, and non-compete provisions surviving termination.
- Synergy previously filed a state court action in 2009; that action was discontinued without prejudice after Lindell swore no breach.
- Synergy refiled in 2009 (amended), asserting Lindell's related conduct through CapeBio and CombiMab, seeking, among other relief, assignment of patents.
- Defendants removed to federal court based on diversity; discovery occurred; Synergy later moved to remand upon discovering no diversity.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the action arises under federal patent law | Synergy argues federal patent law governs certain claims. | CapeBio/CombiMab contend the claim hinges on patent law. | The suit does not arise under patent law. |
| Whether CapBio and CombiMab are dispensable parties to preserve diversity | Synergy argues dismissal would prejudice it and disrupt the case. | Defendants rely on the Stipulation to equate Lindell's actions with the corporations. | CapeBio and CombiMab may be dismissed to create diversity jurisdiction. |
| Whether removal was improper due to lack of diversity and fraud | Synergy alleges fraudulent removal by omission of Delaware citizenship. | Defendants contend removal was proper and seek alternative jurisdiction under patents. | Removal was improper; dismissal of nondiverse parties cures jurisdiction. |
Key Cases Cited
- Christianson v. Colt Indus. Operating Corp., 486 U.S. 800 (U.S. 1988) (well-pleaded complaint must establish a federal patent-law basis)
- Franchise Tax Bd. of the State of Cal. v. Construction Laborers Vacation Trust for S. Cal., 463 U.S. 1 (U.S. 1983) (test for arising under jurisdiction and federal question jurisdiction)
- AT&T v. Integrated Network Corp., 972 F.2d 1321 (Fed. Cir. 1992) (conception of inventions may be broad; not all contract-language triggers patent jurisdiction)
- HIF Bio, Inc. v. Yung Shin Pharm. Indus. Co., Ltd., 600 F.3d 1347 (Fed. Cir. 2010) (patent-law issues must be essential to the claim to confer jurisdiction)
- Airlines Reporting Corp. v. S and N Travel, Inc., 58 F.3d 857 (2d Cir. 1995) (assignment/diversity considerations constrain federal jurisdiction)
- Simpson v. Providence Washington Insurance Group, 608 F.2d 1171 (9th Cir. 1979) (reverse assignment to manufacture diversity analyzed; unusual fact pattern)
- Kramer v. Caribbean Mills, Inc., 394 U.S. 823 (U.S. 1969) (diversity and jurisdictional limitations on fabricated party status)