IMMUNOMEDICS, INC. v. THE BOARD OF DIRECTORS OF ROGER WILLIAMS MEDICAL CENTER et al

Filing 118

OPINION. Signed by Judge Jose L. Linares on 1/4/17. (DD, )

NOT FOR PUBLICATION
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
IMMUNOMEDICS, INC.,
Plaintiff,

Civil Action No.: 15-4526 (JLL)
OPINION

V.

ROGER WILLIAMS MEDICAL CENTER, et
at.,
Defendant.

LINARES, District Judge.
This matter comes before the Court by way of Defendants Dr. Steven C. Katz and Roger
Williams’ Medical Center’s Motion to Dismiss the Third Amended Complaint pursuant to Rule
12(b)(6) of the Federal Rules of Civil Procedure (ECF No. 93), and Defendant Dr. Richard P.
Junghans’ Motion to Dismiss the Third Amended Complaint pursuant to Rule 12(b)(6) of the
federal Rules of Civil Procedure (ECF No. 94). Plaintiff Immunomedics, Inc. has submitted an
opposition (ECF No. 104), which all Defendants have replied to (ECF Nos. 106, 107). The Court
decides this matter without oral argument pursuant to Rule 78 of the federal Rules of Civil
Procedure. For the reasons set forth below, the Court denies both Motions to Dismiss.

I.
A.

BACKGROUND’

The Parties

Plaintiff is a Delaware biopharrnaceutical corporation that focuses on the development on
monoclonal antibody-based products for the targeted treatment of cancer, autoimmune diseases
and other serious diseases. (See ECF No. 77 at

¶

20 (“Compi.”)). Defendant Roger Williams

Medical Center (“RWMC”) is a medical center that, inter alia, engages in the search and
development of drugs, and patents medical technologies, including those developed by RWMC
and its employees. Compi. at ¶ 21. Defendant Junghans is a physician and research scientist who
was employed by RWMC and is now currently employed by Tufts University School of Medicine.
Compl. at ¶ 22. Finally, Defendant Katz is a physician and researcher at RWMC. Compl.
Katz joined Junghans’ laboratory in 2014. Compl.
B.

¶ 23.2

¶J 72-74.

The Subject Antibodies and Material Transfer Agreements

Plaintiffs non-patent claims are based on three material transfer agreements (“MTA”)
from 1993, 2008 and 2010. Compi.

¶

32-65. Each MTA concerns a distinct material from

Plaintiff to Defendant Junghans and RWMC. Compi.

¶J 32, 44, 53.

The MTAs transferred a total

of three distinct antibodies from Plaintiff to Junghans and RMWC. Id., see also Cornpl. ¶34, 39.
The three transferred materials were: 1) murine MN-14 monoclonal antibody (“MN-14”); 2) a
humanized version of the murine MN-14 monoclonal antibody (“hMN-14”); and 3) the W12
antibody. Compl. ¶J 32-65; see also Compl. at Exhibits A-C. The first two antibodies are designed

This background is derived from Plaintiffs Third Amended Complaint, which the Court must accept as true at this
stage of the proceedings. See Alston i’. Cottntiywide Fin. Coip., 585 f.3d 753, 758 (3d Cir. 2009).
2
The Court notes that there are additional Defendants in this action who have filed a separate Motion to Dismiss
(ECf No. 102). However, said Motion is made for different reasons and is not presently returnable nor fully briefed.
Thus, for purposes of these Motions, the Court will oniy discuss the three moving Defendants, which shall be
collectively referred to as “Defendants.”

2

to recognize and bind to proteins called carcinoembryonic antigen (“CEA”) which is expressed
and released by many types of tumor cells. Compi. at Exhibits A-B. The W12 antibody recognizes
and binds to MN-14 antibodies. Id. at Exhibit C.
C.

The Subject Patents

Plaintiff claims Defendants have infringed on three of its patents, bearing the following
U.S. Patent Numbers: 1) 5,874,540 (“ ‘540 Patent”)(see Compi. at Exhibit A); 2) 6,926,893
Patent”)(see Compi. at Exhibit B); and 3) 6,676,924

Compi.

¶J 173-212. The

(“

(“

‘893

‘924 Patent”)(see Compi. at Exhibit C).

‘540 Patent was issued on february 23, 1999 and claimed humanized

monoclonal antibodies having variable regions with particular amino acid sequences (hMN-14).
Compi.

¶ 173-74. The ‘924 Patent was issued on January 13, 2004 and claimed methods treating

or diagnosing patients compromising administering a therapeutic or diagnostic agent bound to
hMN-14. Compi.

¶J 189-90. finally, the ‘893 Patent was issued on August 9, 2005 and claimed

methods for introducing cellular immune response against a tumor that expressed CEA. Cornpl.

¶J 202-03.
D.

Pertinent Facts

Prior to engaging in the subject research, Defendant Junghans was working on different
anti-bodies. Compi.

¶ 2, 33. However, Junghans became interested in the subject anti-bodies and

approached Plaintiff.

Junghans sought to experiment and research Plaintiffs antibodies,

specifically the hMN-14 antibody to the CEA antigen. Compl.

¶ 3. The DNA encoding for the

hMN-14 was the material provided by Plaintiff to Junghans and his then-employer New England
Deaconess Hospital, and the transfer was subject to the 1993 MTA with the unique encoding
referred to as “Research Material.” Compl. ¶ 34, 39. Under this agreement the Research Material
3

was only to be used in connection with a “Research Project” which was outlined in
communications between the parties. Compl.

¶ 34. The MTA defined Research Project as “the

research project outlined in the August 20, 1993 communications between Dr. Junghans and
[Plaintiff]” as it related to MN-14 which target CEA to be part of the “designer T cells” project.
Id.

Thereafter, Defendant Junghans created a chimeric antigen receptor (“CAR”) using the

materials provided by Plaintiff.

Compi.

¶ 68. CAR incorporates parts of hMN-14 which

recognizes CEA, and is referred to an anti-CEA or Car-T construct. Id. As a result, Junghans filed
for a patent under Patent Application No. 200201652360 (“the ‘360 publication”), as well as other
publications dealing with the CEA CAR construct, and authored numerous manuscripts and
articles regarding his research. Compl. ¶J 69-71. Plaintiff asserts that “[t]he amino acid sequences
of the MN-14 containing scfv, CAR, and CAR-I constructs disclosed in the ‘360 publication fall
within the claims of [Plaintiff s] ‘540 patent.” Compi.

¶ 71.

The murine MN-14 was provided to Junghans and RWMC by way of the 200$ MTA.
Compi.

¶ 44. Paragraph 1 of the 200$ MTA explicitly states that “the Research Material was to

be used solely in connection with the research project as described in an attachment to the 2008
MTA.” Compl.

¶ 45. The 200$ MTA also provided Plaintiff with a first right of refusal to an

exclusive license for any resulting “Research Product” and required Junghans and RWMC to
return all unused Research Materials and related writing. Compl.

¶ 47-48, 50. It also contained a

confidentiality provision which required both Junghans and RWMC to maintain the confidentiality
of all information relating to the Research Material covered by the 200$ MTA. Compi.

¶

4$.

Plaintiff asserts Defendants did not substantially comply with any of the discussed provisions and
was forced to bring this action. Cornpl.

¶ 51.
4

Finally, Plaintiff supplied Junghans and RWMC with W12 by way of the 2010 MTA.
Compi.

¶ 53.

W12 was provided to use in a research plan entitled “Anti-CEA designer T cells for

adenocarcinoma.” Compi.

¶

56. As with both the 1993 and 2008 MTAs, the 2010 MTA also

provided Plaintiff with a first right of refusal to an exclusive license for any resulting Research
Product. Compl.

¶ 62.

The 2010 MTA also included provisions restricting Defendants from using

the subject Research Material in any “consulting, licensing, or similar obligations to any other
commercial entity, unless written permission” was first obtained from Plaintiff. Compi.

¶

59.

Moreover, the Agreement restricted Defendants’ ability to disclose any results, data or conclusions
“drawn from the study.” Compl.

¶ 60.

The 2010 MTA was to terminate within two years, and

Defendants were to immediately return all research material to Plaintiff Compi.

¶ 63.

Plaintiff

asserts that Defendants believed the 2010 MTA was still in effect in August of 2015, because
Defendant Junghans wrote to Plaintiff, using RWMC letterhead, regarding the W12 Research
Material. Compl.

¶ 65.

Defendant Katz was copied on this correspondence. Id.

Plaintiff required Defendants Junghans and RWMC to sign the various MTAs because it
felt that it needed to protect its proprietary interests in MN-14 and W12.

Compl.

¶

67.

As

discussed, one way the MTAs protected Plaintiffs intellectual property was each agreement
limited Defendants’ use of the transferred “Research Material” solely to the research project
outlined in the MTA. Compl. ¶ 34. The MTAs contained additional protection for said intellectual
property by guaranteeing Plaintiff the first right of refusal to an exclusive license for any resulting
“Research Product.” Compl.

¶ 39.

Moreover, Plaintiff took additional measures to protect its

rights in the subject antibodies by obtaining patents for each. Compl.
Exhibits A-C.

5

¶

67; see also Compl. at

from 1993 through August of 2015, Defendants used Plaintiffs Research Materials for
research and published various articles, as well as a patent application, relating to the subject anti
bodies. Compl.

¶ 68-71. Both Katz and RWMC were aware of the MTAs and Katz knowingly

published papers that publicly acknowledged use of Plaintiffs Research Materials. Compl. ¶f 65,
75-78, 93. Specifically, Junghas filed the ‘360 publication with the United States Patent and
Trademark Office, authored a manuscript entitled “Neutrophil: lymphocyte ratios and serum
cytokine changes...” that was published in November of 2014 (‘2014 Manuscript”), co-authored
a manuscript entitled “Liver myeloid-derived suppressor cell expand... that was published in July
of 2015 (“2015 Manuscript”), co-authored a manuscript entitled “2’’ Generation Anti-CEA
Designer T Cells.

. .“

that was published in December of 200$ (“200$ Manuscript”), authored a

report entitled “T-Cell Gene Therapy to Eradicate Disseminated Breast Cancers” which was
published in January of 2011 (“2011 Report”), and co-authored a manuscript entitled “Anti-HIV
Designer T Cells Progressively Eradicate...” which was published in November of 2013 (“2013
Manuscript”). Compi.

¶J 69-82. Plaintiff asserts that Defendants failed to seek prior permission

with respect to these publications and/or the publications “exceeded the scope of permissible
activities under the MTAs.” Compl.

¶J 69-86.

Plaintiff further alleges that Katz remains in possession of “stocks of Research Material”
despite Defendant Junghans departure from RWMC in May 2014. Compl.

¶ $7. Accordingly,

Plaintiff alleges Defendant Katz “has used and will continue to use the Research Material without
license from [Plaintiff], and intends to submit the findings of his work with the Research Material
for publication without notice to or preclearance from [Plaintiff].” Compl.

6

¶ 88.

In May 2015, Plaintiff sent Defendant Junghans correspondence advising him that taking
any Research Material to Tufts would be “an unauthorized transfer of Research Material, and that
he otherwise had engage in numerous violations of the MTA, including” the submission of
manuscripts for publication without permission. Compl.

¶ $9. In that same letter, Plaintiff “made

three (3) demands upon [Defendant] Junghans:” (a) that

t] Junghans cease and desist from

conducting any further research with the Research Materials; (b) that [he] provide the required
notice prior to submitting any manuscripts on existing data; and (c) that [Defendant] Junghans
return the Research Material, including ‘all remaining stocks of [Plaintiffs] hMN-14 antibody or
derivatives thereof and/or nucleic acid sequences encoding the hMN- 14 antibody, antibody
fragment or derivatives thereof.” Compl. ¶ 90. Plaintiff then terminated the MTAs. Compi. ¶ $9.
Both RWMC and Tufts were copied on said letter. Compi.

¶ 91. Plaintiff alleges that, despite its

demands, Defendants failed to return the Research Material and continued to use same. Compl. ¶
92. On May 27, 2015, Plaintiff sent Defendants an additional letter demanding the return of all
remaining and unused Research Material.

Compi.

¶ 98. “Despite the May 27, 2015 letter,

Defendants failed to return” the demanded Research Materials. Compl.

¶ 99.

FurthenTlore, Plaintiff alleges Defendant Katz knew that the Research Material he was
using for his publications belonged to Plaintiff and was governed by the various MTAs. Plaintiff
bolsters this allegation by pointing to numerous pieces of correspondence between Plaintiff and
Defendant Katz discussing his use of the antibody, which he admits he received from Defendant
Junghans, in order to publish scholarly articles and papers. Compl. ¶J94-97.
In December 2015, Plaintiff inquired whether Defendants “had licensed any technology
from the Research Material to any party other than” Plaintiff. Compi.
7

¶ 103. “Defendants refused

to answer” Plaintiffs inquiries. Id. Plaintiff further alleges Defendants created shell companies
that “would serve as repositories for the at-issue intellectual property and Research Products.”
Cornpl.

¶ 106. Specifically, Plaintiff claims Defendant Junghans fornied co-Defendant BDL

Products, Inc. on July 16, 2015. Compi. ¶f 110. Additionally, Plaintiff states Defendants Junghans
and Katz, along with other non-parties, formed Defendant Cargenix on October 3, 2014. Compi.

¶ 107. Moreover, Defendant Sorrento Therapeutics, Inc. is alleged to have formed Defendant TNK
Therapeutics, Inc. “as a wholly-owned Sorrento subsidiary fornied specifically to explore and
commercialize CAR technology.” Compl.

¶ 10$.

Defendant Jungans transferred and/or sold Research Products to Defendant Caregenix
shortly afier its creation. Cornpl.

¶ 109. Furthermore, Plaintiff alleges that, on August 7,

2015,

“Defendants entered into several transactions with each other over the Research Products that were
developed from” Plaintiffs Research Material. Compi.

¶ 112. These transactions include:

a) [Defendant] TNK and [Defendant] Sorrento entered into a Membership Interest
Purchase Agreement with [Defendant] Cargenix, in which [Defendant] TNK and
[Defendant] Sorrento purchased [Defendant] Cargenix for $6 million in TNK
common stock. The [Defendant] Cargenix closing was expressly cited in Section
6.18 of the BDL Products purchase agreement;” and b) [Defendant] TNK and
[Defendant] Sorrento also purchased BDL Products for $6 million in [Defendant]
TNK common stock. Section 3.14 of the purchase agreement expressly
contemplated the sale of all “rights, title and interest in and to any rights to
‘Research Products’ (as defined in the 1993 IM MTA...),” and defined the 1993
TM MTA as the “Material Transfer Agreement between New England Deaconess
Hospital and [Plaintiff] of September 17, 1993.” Section 3.14 also required that
[Defendant] Junghans “seek the issuance of waivers or declination of licensing and
other rights by (A) [Plaintiff] under the 1993 IM MTA.
Compl.

¶ 112. Additionally, none of the parties involved in these transactions sought the issuance

of waivers or declination of licensing and others rights by Plaintiff. Compl.

8

¶ 13.

Thereafter, RWMC entered into an agreement with Defendant Caregenix in which RWMC
“granted Caregenix an exclusive patent license to ‘anti-HIV designer T cells and/or CAR
technology.” Compl.

¶ 116. Plaintiff asserts that all of the above transactions and agreements

between each and every Defendant was made without its permission. Additionally, Defendants
engaged in all of the aforementioned activity with knowledge of the MTAs and Plaintiffs rights
under said Agreements. Compi.

¶ 117. Accordingly, Plaintiff brought this action seeking to

recover damages for the breach of the MTAs, conversion of its property, unjust enrichment, and
infringement on the ‘540, ‘893 ‘924 Patents.
II.

LEGAL STANDARD

To withstand a motion to dismiss for failure to state a claim, “a complaint must contain
sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.”

Ashcroft v. Iqbal, 556 U.S. 662, 67$ (2009) (quoting Bell Ati. Corp. v. Twombly, 550 U.S. 544,
570 (2007)). “A claim has facial plausibility when the plaintiff pleads factual content that allows
the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.”
Iqbal, 556 U.S. at 67$ (citing Twombly, 550 U.S. at 556). “The plausibility standard is not akin to
a ‘probability requirement,’ but it asks for more than a sheer possibility that a defendant has acted
unlawfully.” Id.
To determine the sufficiency of a complaint under Twombly and Iqbal in the Third Circuit,
the court must take three steps: first, the court must take note of the elements a plaintiff must plead
to state a claim; second, the court should identify allegations that, because they are no more than
conclusions, are not entitled to the assumption of truth; finally, where there are well-pleaded
factual allegations, a court should assume their veracity and then determine whether they plausibly

9

give rise to an entitlement for relief. See Connelly v. Lane Const. Corp., 809 F.3d 780, 787 (3d
Cir. 2016) (citations omitted). “In deciding a Rule 12(b)(6) motion, a court must consider only
the complaint, exhibits attached to the complaint, matters of public record, as well as undisputedly
authentic documents if the complainant’s claims are based upon these documents.” Mayer v.
Belichick, 605 F.3d 223, 230 (3d Cir. 2010).
III.

ANALYSIS

Plaintiffs amended complaint alleges nine causes of action, eight of which the moving
Defendants seek to have dismissed: Count II
of Research Material; Count III

—

—

Breach of Contract for Improper Use and Sharing

Breach of Contract for Failure to Provide Plaintiff with

Contractual First Right of Refusal; Count IV

—

Conversion; Count V

—

Tortious Interference;

Count VI for Unjust Enrichment; Counts VII, VIII, and IX for Patent Infringement on the ‘540,
‘924 and ‘893 Patents, respectively. The Court will address each Count separately.
A. Breach of Contract (Counts Il-Ill)

To survive dismissal of a breach of contract claim under New Jersey law, a plaintiff must
allege “(1) the existence of a valid contract between the parties; (2) failure of the defendant to
perform its obligations under the contract; and (3) a causal relationship between the breach and the
plaintiffs alleged damages.” Sheet Metal Workers Int’l Ass’n Local Union No. 27, AfL—CIO v.
E.F. Donnelly, Inc., 737 F.3d 879, 900 (3d Cir.2013) (citing Coyle v. Englander’s, 199 N.J. Super.
212 (N.J. Super. Ct. App. Div. 1985)).
In this matter, the Court finds that Plaintiff has pled prima fade causes of action for both
counts of breach of contract (Counts Il-Ill). The Complaint explicitly details three MTAs that
Plaintiff entered into with Defendant Junghans, one of which Defendant RWMC was also a party

10

to.

See Compi.

¶] 32,

44, 53. Specifically, Plaintiff and Defendant Junghans entered into the

1993, 2008, and 2010 MTAs, and Defendant RWMC was a party to the 2008 MTA as well. Id.
Defendants do not assert that the MTAs are invalid in any way.

Therefore, Plaintiff and

Defendants entered into three separate, valid contractual relationships.
Plaintiffs Second Count claims Defendants and Junghans breached the MTAs through
improper use and sharing of its Research Material. Compl. at

¶ 131. As discussed, the MTAs

required Defendants to seek approval before publishing any articles, manuscripts, abstracts, and/or
patent applications. Cornpl. at

¶J 38, 49, 60. Additionally, said MTAs prohibited the disclosure

of any results and data that were produced from their research and to maintain the confidentiality
of said Research Materials and Research Products. Compi. at

¶J 37, 48, 60. Finally, the 2010

MTA prohibited Defendants from using the Research Materials for any commercial or consulting
purposes. Compl.

¶J 56, 59.

Defendants are alleged to have breached these MTAs in numerous ways. First, Defendant
Junghans disclosed “the amino acid sequences of [Plaintiff s] constructs

...

in various publications

authored by [Defendant] Junghans, including but not limited to” the ‘360 publication. Compl.

¶

69. Plaintiff further alleges that the 2014 Manuscript, 2015 Manuscript, 2008 Manuscript, 2011
Report, and 2013 Manuscript, were all made without the requisite approval pursuant to the MTAs.
Compl.

¶J 69-82. These publications, Plaintiff avers, exceeded the scope of the MTAs. Compl. ¶

86. Moreover, Plaintiff alleges that Defendant Junghans’ taking of the Research Materials also
exceeded the scope of the MTAs. Plaintiff claims that these actions have caused it to suffer
damages and irreparable harm. Compl.

¶f 133-34. Therefore, the Court is satisfied that Plaintiff

has successfully pled aprimafacie cause of action for improperly using and sharing the Research

11

Material thereby breaching the parties’ MTAs as it has properly alleged an enforceable contract
that was breached by Defendants, causing Plaintiff to suffer damages. Thus, the Court will deny
Defendants’ Motion to Dismiss Plaintiffs Second Count of the Third Amended Complaint.
Count III of Plaintiffs complaint alleges that Defendants breached the MTAs by failing to
give Plaintiff a first right of refusal to an exclusive license for any resulting Research Products
from Defendants’ research. As discussed, the parties entered into three valid contracts by way of
the three MTAs. Each MTA provided Plaintiff with a first right of refusal to an exclusive license
for any resulting Research Products. Compl.

¶ 47-48, 62.

Plaintiff states that the aforementioned

improper use and sharing of the Research Material, which is the subject of Count II, deprived
Plaintiff from its contractual right of first right refusal. Compl.

¶ 132.

Moreover, Plaintiff claims

various actions by Defendants that deprived it of its first right of refusal in contravention of the
MTAs. Compl.
Compl.

¶

¶ 44, 50, 53, 62.

This breach caused Plaintiff to be harmed and sustain damages.

139-41. Once again, the court is satisfied that Plaintiff has pled aprimafacie cause of

action for Defendants’ breach of contract for failure to honor Plaintiffs right of first refusal to an
exclusive license to any resulting Research Product. This is because Plaintiff has sufficiently pled
an enforceable contract existed between the parties, Defendants breached the contract by failing
to give Plaintiff its right of first refusal, and Plaintiff has been damaged by such actions. Hence,
the Court denies Defendants’ Motion to Dismiss the Third Count of the Third Amended
Complaint.
B. Conversion

Count IV of the Third Amended Complaint is for conversion. Under New Jersey law,
conversion is “an unauthorized assumption and exercise of the right of ownership over goods or

12

personal chattels belonging to another, to the alteration of their condition or the exclusion of an
owner’s rights.”

LaPlace v. Briere, 404 N.J. Super. 585, 595 (N.J. Super. Ct. App. Div.

2009)(quoting Barco Auto Leasing Corp. v. Holt, 22$ N.J. Super. 77, 83 (N.J. Super. Ct. App. Div.
1988)). “The theory behind conversion is that the actor has exerted such a major and serious
interference with the plaintiffs rights to the chattel that in essence the law will force a judicial sale
of the chattel upon the defendant.” LaPlace, 404 N.J. Super. at 596. “Sustaining a claim of
conversion requires a plaintiff to demonstrate, as a preliminary matter, that defendant exercised
dominion” over its property. Sunset Fin. Res., Inc. v. Redevelopment Group V, LLC, 417 F. Supp.
2d 632, 650 (D.N.J. 2006)(citing Mueller v. Technical Devices Corp., 8 N.J. 201, 207 (N.J. Sup.
Ct. 1951).
Here, Plaintiff has sufficiently pled aprimafacie claim for conversion. As noted, Plaintiff
was entitled to a first right of refusal to an exclusive license for any resulting Research Products,
and that it was the sole owner of the Research Material. Compi.

¶ 144. Plaintiff avers that

Defendants actions in exceeding the scope of the MTAs and failing to give Plaintiff its first right
ofrefusal shows that Defendants improperly exercised dominion over its property. Plaintiff further
alleges that Defendants have failed to return all of its Research Material. This, Plaintiff alleges,
also constitutes an unauthorized exercise of dominion over its property. Indeed, these allegations
in Count IV and the rest of the Third Amended Complaint are sufficient to overcome Defendants’
Motion to Dismiss Plaintiffs conversion claim, and the Motion is denied with respect to this
Count.

13

C. Tortious Interference

Count V of the Third Amended Complaint is for tortious interference against Defendant
Katz. To state a claim for tortious interference with prospective economic advantage under New
Jersey law, a plaintiff must allege the following elements: “(1) a reasonable expectation of
economic advantage to the plaintiff; (2) an interference done intentionally and with ‘malice’; (3)
a causal connection between the interference and the loss of prospective gain; and (4) actual
damages.” See Speth v. Goode, No. 95-0264, 2012 U.S. Dist. LEXIS 112040, at *1516 (D.N.J.
Aug. 9, 201 2)(citations omitted). A valid claim for tortious interference with economic advantage
requires a plaintiff to allege those same four elements, as well as “the defendant’s knowledge” of
a reasonable expectation of economic advantage. See Metromedia Energy, Inc. v. Griffin, No. 101692, 2011 U.S. Dist. LEXIS 104177, at *7 (D.N.J. Sept. 13, 2011). New Jersey courts have
defined “malice” as “the intentional doing of a wrongful act without justification or excuse.” See,
e.g., Printing Mart-Morristown v. Sharp Elecs. Corp., 116 N.J. 739, 756 (N.J. Sup. Ct. 1989). As
this Court has previously observed, a plaintiff need not allege that a defendant acted with “ill will”
to adequately plead the malice element of a tortious interference claim. See Metro foods, Inc.
Kelsch, No. 11-3306, 2012 U.S. Dist. LEXIS 19379, at *13 (D.N.J. Feb. 14, 2012)(citation
omitted).
The Court is satisfied Plaintiff has sufficiently pled a claim for tortious interference. Katz
does not dispute that Plaintiff has successfully pled that it had a reasonable expectation of
economic advantage and a causal connection between the interference and the loss of prospective
gain. See Defendant Katz’s Moving Brief (ECF No. 93-2 (“Katz Mov. Br.”)) at 18-20. Rather,
Katz argues the Third Amended Complaint fails to properly plead any “intentional interference”

14

and damages. Id. However, Katz is mistaken as Plaintiff has pled that he intentionally interfered
by alleging that he was aware of the MTAs which governed the scope of use of the Research
Material and that he ignored same. Compi.

¶J 65, 93. Katz further argues that he was not “aware

of the specific first right of refusal” and therefore could not have intentionally interfered. Id. at
18. This argument is non-persuasive since the law only requires Plaintiff to plead enough factual
content for this Court to reasonably infer that Katz may be liable for tortious interference, which
it has. See Iwomblv, 550 U.S. at 556.
Next, Katz argues that “Plaintiffs failure to identify a prospective licensee alone renders
its pleading insufficient.” Katz Mov. Br. at 19-20. This argument also fails, as Plaintiff has
identified property interests in both its Research Material and its right of first refusal which Katz
deprived Plaintiff of, and allegedly sold same for significant profit. Compi. ¶ 65, 72-77, 93, 107,
112.

Accordingly, Plaintiff has alleged concrete and specific damages stemming from the

purported tortious interference. Therefore, the Court finds Plaintiff has sufficiently pled all four
elements necessary for a claim of tortious interference to overcome Defendant Katz’s Motion to
Dismiss, and the Motion is denied with respect to Count five.
D. Unjust Enrichment

Plaintiff asserts a claim of unjust enrichment in Count VI of the Third Amended Complaint.
“The doctrine of unjust enrichment rests on the principle that a person shall not be allowed to
enrich himself unjustly at the expense of another.” Assocs. Commercial Corp. v. Wallia, 211 N.J.
Super. 231, 243 (N.J. Super. App. Div. 1986)(citing Caltano v. Oak-wood ParkHomes Corp., 91
N.J.Super. 105, 108 (N.J. Super. App. Div.1966)). “A cause of action for unjust enrichment
requires proof that ‘defendant received a benefit and that retention of that benefit without payment

15

would be unjust.” County of Essex v. First Union Nat. Bank, 373 N.J. Super. 543, 549—50 (N.J.
Super. App. Div. 2004)(quoting VRG Corp. v. GKNRealtv Corp., 135 N.J. 539, 554 (N.J. Sup. Ct.
1994)), affd, remanded by 186 N.J. 46 (N.J. Sup. Ct. 2006).
To assert a prima fade cause of action for unjust enrichment a plaintiff must allege that:
“(1) at plaintiffs expense (2) defendant received a benefit (3) under circumstances that would
make it unjust for defendant to retain the benefit without paying for it.” In re K-DUr, 33$ F. Supp.
2d 517, 544 (D.N.J. 2004)(citing Restatement of Restitution

§

1 (1937)); see also VRG Corp, supra

at 554 (stating that a plaintiff seeking to assert a claim for unjust enrichment must establish that
“defendant received a benefit[,J and that retention of that benefit without payment would be
unjust[,]

...

[and plaintiff] expected remuneration from the defendant at the time it performed or

conferred a benefit on defendant and that the failure of remuneration enriched defendant beyond
its contractual rights.”).
The Court finds that Plaintiff has sufficiently pled aprimafacie cause of action for unjust
enrichment.

As noted, Defendants Junghans and RWMC were parties to the MTAs, which

outlined the scope of usage for the Research Materials provided by Plaintiff. Compl.

¶ 44,

53.

Moreover, all Defendants, including Katz, used said Research Material in publications and
presentations, and specifically recognized Plaintiff for providing reagents. Compl.

¶J 75-82,

93-

94. Plaintiff further alleges that Defendants ignored the provisions of the MTAs and sold the
Research Products and/or the unretumed Research Materials for a large sum of money. Cornpl.

¶

12, 1-4, 112-13, 122. Hence, Plaintiff claims that Defendants received a benefit that Plaintiff
would expect to receive, specifically money, at Plaintiffs expense.

16

Accordingly, the Third

Amended Complaint contains a sufficiently pled cause of action for unjust enrichment. Thus,
Defendants’ Motion to Dismiss Count VI is denied.
E. Infringement of the ‘540, ‘924 and ‘893 Patents

finally, Counts VII, VIII, and XI are for infringement of the ‘540, ‘924, and 893 Patents,
respectively. Form 18 in the Appendix of the federal Rules of Civil Procedure, sets forth a sample
complaint for direct patent infringement. As explained by the Federal Circuit, “Form 18 requires:
(1) an allegation of jurisdiction; (2) a statement that the plaintiff owns the patent; (3) a statement
that defendant has been infringing the patent ‘by making, selling, and using [the deviceJ
embodying the patent’; (4) a statement that the plaintiff has given the defendant notice of its
infringement; and (5) a demand for an injunction and damages.” In re Bill ofLading Transmission
& Processing Sps. PatentLitig., 681 F.3d 1323, 1334 (Fed. Cir. 2012)(internal citations omitted).
“The sample complaint in the Appendix of Forms is relevant because Federal Rule of Civil
Procedure 84 states that ‘the fon-ns in the Appendix suffice under these rules and illustrate the
simplicity and brevity that these rules contemplate.” Id. (quoting Fed. R. Civ. P. 84). As such, a
direct infringement claim is sufficient “[a]s long as the complaint in question contains sufficient
factual allegations to meet the requirements of Form 1$.” Id. at 1336.
Here, Plaintiff has properly pled three counts of patent infringement. Preliminarily, there
is no dispute that jurisdiction is proper. Next, the Third Amended Complaint contains sufficient
allegations of ownership for each patent. Compl.

¶

173-74,189-90, 202-03. The Third Amended

Complaint also contains many allegations of infringement. For example, Plaintiff asserts that
Defendants, on numerous occasions, published various articles and manuscripts without seeking
the necessary prior approval from Plaintiff thereby exceeding the scope of their licenses under the

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MTAs. Compi.

¶J 7 1-85.

Plaintiff further alleges that breaching the MTAs is an infringement of

the subject patents. Compi.

¶

102.

Further, the Third Amended Complaint contains allegations that Plaintiff gave Defendants
notice of the infringement. Defendants first received notice of the infringement when they were
granted limited patent licenses through the MTAs. Compl.

¶J 34, 45, 56,

102. Moreover, Plaintiff

alleges that “Defendants were notified of infringement” when the first complaint was filed.
Compi.

¶J

182, 196, 209. Thus, Plaintiff has sufficiently pled that Defendants had notice of the

infringement. Lastly, the Third Amended Complaint contains a prayer for relief which seeks both
money damages and injunctive relief in connection with the infringement.
Defendants’ argument that the claims for patent infringement are barred pursuant to the
Safe Harbor Defense, 35 U.S.C.

§

271(e)(l), fails for several reasons. First, the Safe Harbor

Defense is an affirmative defense and is a separate and distinct defense from a non-infringement
defense that Defendants must prove by a preponderance of the evidence.

See Amgen v. F.

Hoffman-LaRoche, Ltd., 456 F. Supp. 2d 267, 273 (D. Mass. 2006); see also Merck KGaA v.
Integra Lzfesciences I, Ltd., 545 U.S. at 200 (2005). This affirmative defense immunizes certain

activity that may otherwise be viewed as infringement if the activity is “solely for uses reasonably
related to the development and submission of information under Federal Law...” 35 U.S.C.

§ 271

(e)(2); see also Merck, 545 U.S. at 204-06 (2005). Since it is an affirmative defense, Defendants
must plead it in their answer and not raise it by way of Motion to Dismiss. See Schmidt v. Skotas,
770 F.3d 241, 249 (3d Cir. 2014). Thus, Defendants have prematurely raised this argument.
Additionally, and as Plaintiff correctly notes, failure to allege the Safe Harbor Defense is
in and of itself a pleading deficiency. See Dann v. Lincoln Nat. Corp., 274 F.R.D. 139, 145-46

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(E.D. Pa. 2011)(”[W]hen an affinnative defense omits a short and plain statement of facts entirely
and fails totally to allege the necessary elements of the claim, it has

not

satisfied the pleading

requirements of the Federal Rules.”). A review of Defendants prior answers (ECF Nos. 19-20)
shows Defendants have never asserted the Safe Harbor Defense. Therefore, even if this Court
were to consider the defense at this point in the litigation, Defendants have failed to meet the
pleading standards. Hence, Defendants’ Motion to Dismiss Count Vil-IX is denied.
CONCLUSION
For the aforementioned reasons, Defendant’s Motion to Dismiss Plaintiff Counts Il-IX is
hereby denied in its entirety.

DATED: January[, 2017
JOSE’t. LTNARES
UIFED STATES DISTRICT JUDGE

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