Indiana Intellectual Property Law News
Lafayette, IN – Attorneys for the Purdue Research Foundation (“PRF”) of West Lafayette, Indiana have file a suit against the law firm of Morrison & Foerster, LLP alleging that Morrison & Foerster filed a patent application without PRF’s authorization, specifically for patent PCT2009/060273 and misappropriated trade secrets in the course of filing this patent application.
PRF filed the original complaint in Tippecanoe County Circuit Court on October 7, seeking a permanent injunction to prevent Morrison from continuing the patent application, on which Morrison listed itself and PRF as the co-applicants. The original complaint alleges that Morrison continued to breach its fiduciary duties to PRF
through continuing to prosecute the patent application. Morrison filed to have the case removed to federal court, arguing that the case involved the federal questions of the inventorship of the claimed invention under the ‘273 patent.
Morrison’s removal notice notes that PRF is currently involved in related lititgation against CoMentis Incorporated, who is Morrison’s client. In that lawsuit, PRF alleges that CoMentis improperly disclosed trade secrets, which are covered by PRF’s patents, when it filed the ‘273 patent application. Morrison states that this new case “is really an attempt by PRF to enjoin or otherwise interfere with an inventor’s (CoMentis’s) attempt to prosecute a patent application.”
Practice Tip: In this case, PRF has alleged that Morrison owed it a fiduciary duty since Morrison filed the patent application and listed PRF as a co-applicant. Morrison disputes that it owed a fiduciary duty to PRF and states that any existence of a fiduciary duty would be governed by the Code of Federal Register, thus creating a federal question. In addition to this federal question, Morrison states PRF’s complaint is really an “inventorship” dispute, which is also a federal question.
This case has been assigned to Joseph S Van Bokkelen and Paul R Cherry in the Northern District Court, and assigned Case No. 4:2011cv00061.
TippecanoeCountyComplaint
NoticeOfRemoval-SenttoNorthernDistrict
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