Purdue Research Foundation v. Sanofi-Synthelabo, S.A.Purdue Research Foundation v. Sanofi-Synthelabo, S.A.
OPINION
This matter is before the Court on defendant’s motion to dismiss for lack of personal jurisdiction pursuant to
I. BACKGROUND
A. Facts
From 1987 to 1992, plaintiff entered into three Cooperative Research Agreemеnts with Sterling Drug, Inc. (“Sterling Drug”) and its successors-in-interest for the purpose of developing certain antiviral drugs. See Complaint, Exhibits 3-5 (“1987 Cooperative Research Agreement,” “1990 Cooperative Research Agreement,” “1992 Cooperative Research Agreement”). 1 The 1987 Agreement stated that Purdue scientists had been cooperating with Sterling Drug scientists since January 1, 1986, and that their research had led to “increased understanding of the interactions of rhinovirus аnd other picornaviruses with certain antiviral agents invented at Sterling Drug.” 1987 Agreement at 2. The Agreement called for a continuation of the cooperation between Purdue scientists and Sterling Drug in order to further the development of antiviral agents of interest to Sterling Drug. See id. at 3. The Agreement obligated Sterling Drug to compensate plaintiff for product achievements made related to the sponsored research. See id. 2
During the period covered by these agreements, the parties collaborated on
In 2001, SSBO France granted ViroP-harma, Inc., a Delaware corporation with its principal place of business in Pennsylvania, an exclusive royalty-bearing license to develop, mаrket, and sell pleconaril-containing products in the United States and Canada. See Def. Mem. at 3. Plaintiff contends that the license, intellectual property rights, and other considerations constitute commercial benefits covered by the Agreements, and that plaintiff is “entitled to payment in connection with any and all such commercial benefits.” Complaint ¶ 13. Plaintiff also seeks declaratory relief in the form of a “declaration of the Court regarding Sanofi’s prospective obligations to PRF under [the] agreements.” Id. ¶ 19.
B. Procedural History
On December 20, 2001, plaintiff filed an action for breach of contract in the Superi- or Court for Tippecanoe County, Indiana.
See Purdue Research Found, v. Sanofi-Synthelabo, S.A.,
Plaintiff appealed the district court’s decision to the United Stаtes Court of Appeals for the Seventh Circuit.
See Purdue Research Found, v. Sanofi-Synthelabo, S.A.,
On September 16, 2003, plaintiff filed with this Court a breach of contract action alleging that plaintiff was “entitled to payment in connection with any and all ... commercial benefits” accruing from plaintiffs licensing agreement with ViroPhar-ma, Inc., as well as plaintiffs intellectual property rights and other considerations related to pleconaril. Complaint ¶ 13. Plaintiff alleged that defendant “and/or its predecessors in interest have breached their obligations to PRF under the Cooperative Research Agreements ... and caused damage to PRF by failing to perform payment obligations thereunder to PRF.”
Id.
¶ 17. On December 22, 2003, defendant filed a motion to dismiss for lack
II. DISCUSSION
In its opposition to defendant’s motion to dismiss, plaintiff concedes that this Court may not exercise personal jurisdiction over defendant under the District of Columbia long-arm statute, but argues that personal jurisdiction is appropriate under the federal patent long-arm statute.
See
Purdue Research Foundation’s Opposition to Sanofi-Synthelabo’s Motion to Dismiss For Lack of Personal Jurisdiction (“P1.0pp.”) at 3. In evaluating defendant’s motion to dismiss, the Court therefore will focus its analysis on the applicability of
A
Plaintiff bears the burden of establishing personal jurisdiction over defendant. In order to meet its burden, plaintiff must allege specific facts on which personal jurisdiction can be based; it cannot rely on conclusory allegations.
See GTE New Media Services, Inc. v. Ameritech Corp.,
B. The Federal Patent Long-Arm Statute
1. Case Law Construing
The federal patent long-arm statute confers on the United States District Court for the District of Columbia personal jurisdiction over patentees who do not reside in the United States if the foreign patentee fails to designate in writing a person in the United States for receipt of process, or if that person cannot be found,
and
the claims at issue in the case respect the foreign patentee’s patent or rights thereundеr.
See
Every patentee not residing in the United States may file in the Patent and Trademark Office a written designation stating the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder. If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the District of Columbia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs. The court shall have the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court.
Since Congress enacted
In
Neidhart v. Neidhart S.A.,
In
Riker Laboratories, Inc. v. Gistr-Bro-cades N.V.,
The most recent court of appeals decision interpreting the scope of
This Court most recently considered the scope of
2. Application of Case Law to Plaintiffs Claims
In support of its contention that this Court has personal jurisdiction over defendant in this case, plaintiff argues that
National Patent
and the court of appeals’ endorsement of the
Neidhart
dissent require the Court to exercise personal jurisdiction over defendant under
The Court disagrees. Plaintiff has not demonstrated that even
National
Patent’s interpretation of
Moreover, because the subject matter of this dispute is distinguishable from the facts addressed by Judge Leventhal’s dissent in
Neidhart,
the court of appeals’ subsequent adoption of Judge Leventhal’s reasoning does not authorize the Court to exercise personal jurisdiction over defendant here. Judge Leventhal in
Neidhart
stated that
While undeniably a broader interpretation of
Plaintiffs contention that
Plaintiff also argues that the policy underlying
was intended to cope with the problem thаt nonresidents could obtain valuable United States patent rights, and yet stay beyond the reach of both state and Federal process as long as they were not present or “doing business” within the United States. Congress sought to assure Americans a forum in the United States for proceedings “affecting the patent or rights thereunder.”
Id.
(quoting
Neidhart v. Neidhart, S.A,
Even accepting plaintiffs interpretation of the congressional intent underlying
An Order consistent with this Opinion shall issue this same day.
SO ORDERED.
FINAL ORDER AND JUDGMENT
For the reasons stated in the Opinion issued this same day, it is hereby
ORDERED that defendant’s Motion to Dismiss for Lack of Personal Jurisdiction [2] is GRANTED; it is
FURTHER ORDERED that this case is dismissed without prejudice from the docket of this Court. This is a final ap-pealable order.
See
SO ORDERED.
Notes
. The three agreements contain the same provisions relevant to this case and the parties make no effort to distinguish the 1987 Agreement from the later cоntracts. See Sanofi-Synthelabo's Memorandum in Support of its Motion to Dismiss for Lack of Personal Jurisdiction (''Def.Mem.”) at 2 n. 1. For convenience, the Court therefore refers only to the 1987 Agreement.
. Plaintiff initially filed a breach of contract action in Indiana state court alleging that defendant failed to perform its obligations under this Agreement.
See Purdue Research Pound, v. Sanofi-Synthelabo,
S.A.,
The 1987 Agreement (and subsequent agreements) recognized that the collaborative research could lead to four types of product achievements: (1) joint inventions; (2) inventions made solely by Sterling Drug personnel; (3) inventiоns made solely by Purdue University personnel; and (4) inventions made jointly with third parties.
See
1987 Agreement ¶ 7. Although it is unclear from the filings in this suit which category is at issue, the Seventh Circuit concluded that it was the second category that was at issue in the parties' dispute.
See Purdue Research Found, v. Sanofi-Synthelabo, S.A.,
. The court of appeals rejected what it speculated may have been the "prime consideration” motivating the
Neidhart
majority — "its fear that a less restrictive reading of