Case 1:20-cv-00755-RGA-JLH Document 45 Filed 11/03/20 Page 1 of 3 PageID #: 1422
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`UNITED THERAPEUTICS
`CORPORATION,
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`Plaintiff,
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`v.
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`Civil Action No. 20-cv-755-RGA
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`LIQUIDIA TECHNOLOGIES, INC.,
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`Defendant.
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`MEMORANDUM ORDER
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`Before me is Plaintiff’s motion to dismiss Defendant’s counterclaims pursuant to Rule
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`12(b)(6) or alternatively Rule 12(b)(1) of the Federal Rules of Civil Procedure. (D.I. 28). The
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`motion is briefed. (D.I. 29, 37, 38). For the following reasons, Plaintiff’s motion is denied.
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`Plaintiff United Therapeutics filed a complaint for patent infringement against Defendant
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`Liquidia on June 4, 2020. (D.I. 1). The complaint was amended on July 22, 2020 to add
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`infringement claims for a third patent, the newly issued U.S. Patent No. 10,716,793 (the
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`“‘793 patent”). (D.I. 16). Defendant filed an answer to Plaintiff’s amended complaint with
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`counterclaims, including counterclaim count V, which alleges invalidity of the ‘793 patent. (D.I.
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`23). Plaintiff filed a motion to dismiss Defendant’s counterclaim and related defenses based on
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`assignor estoppel as one of seven named inventors of the ‘793 patent – Dr. Robert Roscigno – is
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`(or was) “Senior Vice President, Product Development” of Defendant and therefore in privity
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`with Defendant. (D.I. 28). He had previously assigned his interest in the patent to Plaintiff.
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`(Id.).
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`IPR2021-00406
`United Therapeutics EX2016
`Page 1 of 3
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`Case 1:20-cv-00755-RGA-JLH Document 45 Filed 11/03/20 Page 2 of 3 PageID #: 1423
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`A Rule 12(b)(6) motion may be granted only if, accepting the well-pleaded allegations in
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`the complaint as true, and viewing them in the light most favorable to the complainant, a court
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`concludes that those allegations “could not raise a claim of entitlement to relief . . . .” Bell Atl.
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`Corp. v. Twombly, 550 U.S. 544, 558 (2007). “Rule 12(b)(1) allows a defendant to attack the
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`allegations in the complaint and submit contrary evidence in its effort to show that the court
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`lacks jurisdiction.” Davis v. Wells Fargo, 824 F.3d 333, 349 (Fed. Cir. 2016). However, “[t]he
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`Supreme Court has authorized courts to dismiss under Rule 12(b)(1) for lack of jurisdiction due
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`to merits-related defects in only narrow categories of cases . . . ‘where the alleged claim under
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`the Constitution or federal statutes clearly appears to be immaterial . . . or where such a claim is
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`wholly insubstantial and frivolous.’” Id. at 349-50 (quoting Bell v. Hood, 327 U.S. 678, 682–83
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`(1946)). The doctrine of “[a]ssignor estoppel also prevents parties in privity with an estopped
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`assignor from challenging the validity of the patent. Whether two parties are in privity depends
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`on the nature of their relationship in light of the alleged infringement. ‘The closer that
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`relationship, the more the equities will favor applying the doctrine’ of assignor estoppel.
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`Assessing a relationship for privity involves evaluation of all direct and indirect contacts.”
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`Mentor Graphics Corp. v. Quickturn Design Sys., 150 F.3d 1374, 1379 (Fed. Cir. 1998) (quoting
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`Shamrock Techs., Inc. v. Med. Sterilization, Inc., 903 F.2d 789, 793 (Fed. Cir. 1990)) (internal
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`citations omitted).
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`Plaintiff asserts that Defendant’s counterclaim for a declaration of invalidity of the ‘793
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`patent and the related defenses should be dismissed based on assignor estoppel. (D.I. 29 at 1).
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`Plaintiff is correct that assignor estoppel will apply to persons or entities in privity with the
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`inventor. See Diamond Sci. Co. v. Ambico, Inc., 848 F.2d 1220 (Fed. Cir. 1988). And it does not
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`Case 1:20-cv-00755-RGA-JLH Document 45 Filed 11/03/20 Page 3 of 3 PageID #: 1424
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`appear that there is any contested issue about whether Dr. Roscigno made an assignment of his
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`rights in the patent.
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`Determining whether privity exists, however, is more difficult. In order to apply assignor
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`estoppel based on privity requires assessing the relationship between the inventor and the
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`associated entity. See Shamrock, 903 F.2d at 793. Even accepting Plaintiff’s assertions as true,
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`it is unclear at this stage whether sufficient privity exists to apply assignor estoppel. A
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`determination that Defendant is in privity with a named inventor of the ‘793 patent will require a
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`fact intensive evaluation of their relationship and a balancing of the equities. See Mentor
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`Graphics, 150 F.3d at 1379. As a result, the finding of privity required for the Court to apply
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`assignor estoppel and dismiss Defendant’s counterclaim cannot appropriately be made in the
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`present posture, when the Court must consider the allegations in the light most favorable to the
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`nonmoving party. See Twombly, 550 U.S. at 558. Further, there is no indication that the
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`counterclaims at issue are “wholly insubstantial and frivolous” in order to warrant dismissal
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`under Rule 12(b)(1) for lack of subject-matter jurisdiction. Bell, 327 U.S. at 682–83.
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`For the reasons set forth above, I deny Plaintiff’s motion to dismiss Defendant’s
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`counterclaim.
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`IT IS SO ORDERED this 3rd day of November 2020.
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`_/s/ Richard G. Andrews___
`United States District Judge
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