940 F. Supp. 2d 233
E.D. Pa.2013Background
- Two MTAs between Penn and St. Jude, 2003 and 2007, govern use of the Campana and June constructs; the 2003 MTA defines Material broadly and restricts human use and commercial exploitation without St. Jude approval.
- The University alleges June and Campana collaboration produced CAR-based immunotherapy research; St. Jude contends its ownership/approval rights extend to progeny or derivatives of the Campana construct.
- In 2011, June reported study results; St. Jude claims Penn did not acknowledge St. Jude’s contributions and failed to properly credit or share the Materials.
- Penn terminated the MTAs in 2011; Penn and Novartis pursued a collaboration with funding opportunities; by 2012 there were substantial negotiations with Novartis.
- St. Jude filed a breach-of-contract action in Tennessee in July 2012 seeking injunctions and damages; the University filed this Pennsylvania action alleging tortious interference with prospective contractual relations; the Tennessee action was transferred to this district and consolidated, leading to the Noerr-Pennington/sham-litigation analysis.
- The court applies Pennsylvania law for tort claims, assesses whether St. Jude’s Tennessee action was a sham, and ultimately grants dismissal of Count I and related counterclaim.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is Noerr-Pennington applicable to Penn’s Pennsylvania tort claim? | Noerr-Pennington immunizes petitioning, but Penn argues it does not apply outside antitrust contexts without extension to PA torts. | St. Jude contends Noerr-Pennington protects its litigation activity, including the Tennessee suit, from tort liability. | Yes; Noerr-Pennington applies to Pennsylvania tort claims and immunizes St. Jude unless the suit is a sham. |
| Was the Tennessee action a “sham” that defeats Noerr-Pennington protection? | Penn argues the Tennessee suit was baseless and aimed at disrupting negotiations with Novartis. | St. Jude contends the Tennessee action sought legitimate rights under the MTAs and was not objectively baseless. | No; the Tennessee action was not objectively baseless and is protected by Noerr-Pennington. |
| What law governs the tort claim: Tennessee or Pennsylvania? | Penn argues Pennsylvania law applies with no true conflict given business relation location. | St. Jude argues either state could apply; argues no true conflict or that Tennessee interests prevail. | Pennsylvania law is applied; there is no true conflict between Tennessee and Pennsylvania law. |
| Can Noerr-Pennington be decided on a Rule 12(b)(6) motion given disputed intent? | Penn argues intent is factual; Noerr-Pennington requires a sham, which is a fact question. | St. Jude contends intent is irrelevant if the facts show the action is not a sham and can be decided as a matter of law. | Yes; Noerr-Pennington can be decided on a motion to dismiss where predicate facts are undisputed. |
Key Cases Cited
- Brownsville Golden Age Nursing Home v. Wells, 839 F.2d 155 (3d Cir. 1988) (Noerr-Pennington bars tort claims for actions that influence government action outside social acceptable conduct)
- Cheminor Drugs, Ltd. v. Ethyl Corp., 168 F.3d 119 (3d Cir. 1999) (Noerr-Pennington extends to petitioning activities beyond antitrust contexts)
- Noerr Motor Freight v. Eastern Rail Presidents Conf., 365 U.S. 127 (1961) (Noerr-Pennington protects petitioning government, including courts)
- California Motor Transport Co. v. Trucking Unlimited, 404 U.S. 508 (1972) (Extended Noerr-Pennington to protect the right to petition the courts)
- Pryor v. Nat’l Collegiate Athletic Ass’n, 288 F.3d 548 (3d Cir. 2002) (Noerr-Pennington determinations may be made on the basis of undisputed facts)