United Therapeutics Corporation v. Vanderbilt University
278 F. Supp. 3d 407
D.D.C.2017Background
- United Therapeutics (Delaware corp., DC office) collaborated with Vanderbilt University and Dr. James Loyd (Tennessee) to develop an inhalable form of the drug treprostinil; work occurred largely in Tennessee and with United Therapeutics personnel in North Carolina.
- United Therapeutics paid for a pilot study (one check from its D.C. office) and the parties executed a Research Grant Agreement governed by Tennessee law; negotiations and signatures occurred without Vanderbilt principals traveling to D.C.
- Patent prosecution work was handled by United Therapeutics’ counsel at Foley & Lardner in Washington, D.C.; inventors later executed assignments transferring rights to United Therapeutics (signed in Tennessee).
- In 2016 United Therapeutics sought the defendants’ cooperation in third-party infringement litigation; defendants asserted ownership rights, prompting this declaratory-judgment/damages suit in D.C.
- Defendants moved to dismiss for lack of personal jurisdiction, improper venue, and failure to state a claim; the court denied a motion to strike parts of a plaintiff declaration but granted the motion to dismiss for lack of personal jurisdiction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether D.C. courts have personal jurisdiction under D.C. Code §13-423(a)(1) (transaction of business) | United: defendants negotiated Agreement and Assignment with United Therapeutics’ D.C. office, engaged in long-term collaboration, and had continuous dealings sufficient to establish minimum contacts | Vanderbilt/Loyd: research, negotiations, signing, and execution occurred in Tennessee (and collaboration was with NC personnel); few contacts with D.C. and no purposeful availment | Held: No personal jurisdiction under §13-423(a)(1); contacts were insufficient and primarily out-of-forum (Tennessee/NC) |
| Whether Vanderbilt is subject to jurisdiction under §13-423(a)(4) (tortious injury in D.C. from out-of-forum act where defendant regularly does business or has persistent conduct in D.C.) | United: Vanderbilt has substantial D.C. presence via its Office of Federal Relations (advocacy, work with NGOs, seminars, internships) | Vanderbilt: Office primarily engages in federal advocacy; such government-directed contacts are protected by the government-contacts doctrine and are insufficient for jurisdiction | Held: No jurisdiction under §13-423(a)(4); Office activities fall within government-contacts doctrine and do not supply a persistent course of conduct for jurisdiction |
| Whether the Assignment created sufficient D.C. contacts | United: Execution of Assignment demonstrates collaboration to protect inventions and invoked D.C. contacts | Defs.: Assignment arose from Agreement, was signed in Tennessee without negotiation and did not create ongoing obligations in D.C. | Held: Assignment contacts were limited and did not create minimum contacts with D.C. |
| Whether plaintiff’s submission (Fisher declaration) should be struck | United: Fisher had personal knowledge and records support his statements; personal-knowledge may be inferred from position | Defs.: Certain Fisher paragraphs lack proper personal-knowledge foundation | Held: Denied motion to strike; court can infer Fisher’s personal knowledge and considered his declaration, but even if considered, jurisdictional facts were insufficient |
Key Cases Cited
- Burger King Corp. v. Rudzewicz, 471 U.S. 462 (jurisdictional minimum-contacts and purposeful availment analysis)
- Thompson Hine LLP v. Taieb, 734 F.3d 1187 (D.C. Cir.) (nonresident’s retention of D.C. firm insufficient absent other purposeful contacts)
- Int'l Shoe Co. v. Washington, 326 U.S. 310 (minimum contacts standard for due process)
- World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (foreseeability and contacts principles in jurisdictional analysis)
- Hanson v. Denckla, 357 U.S. 235 (unilateral activity of forum residents insufficient to confer jurisdiction)
- Health Communications, Inc. v. Mariner Corp., 860 F.2d 460 (D.C. Cir.) (narrow relationship with D.C. firm insufficient for jurisdiction)
- Mwani v. bin Laden, 417 F.3d 1 (prima facie burden and consideration of extrinsic materials in jurisdictional disputes)
- GTE New Media Servs., Inc. v. BellSouth Corp., 199 F.3d 1343 (plaintiff must plead specific jurisdictional facts; conclusory allegations insufficient)