Lawsuit for Correction of Patent Inventorship Dismissed Without Prejudice for Lack of Personal Jurisdiction

Thursday, October 5, 2017

U.S. District Court Judge J. Frederick Motz dismissed without prejudice plaintiff Dr. Barnett’s lawsuit seeking, among other things, correction of inventorship of six patents.  Defendant Surefire Medical, Inc.’s contacts with Maryland consisted of Maryland sales of products covered by the patents, which sales accounted for 2-4% of Surefire’s total sales, and a single employee who lived in Maryland.  Co-defendant Dr. Arepally’s contacts with Maryland consisted of his ownership of a vacation home in Maryland and service as an unpaid investigator and consultant in trials in Maryland.  Judge Motz found general jurisdiction lacking because Surefire was neither incorporated in nor had its principal place of business in Maryland, and because Dr. Arepally was not domiciled in Maryland.  Turning to specific jurisdiction, Judge Motz found that all of the defendants’ contacts with Maryland were unrelated to Dr. Barnett’s patent-based claims, and that the defendants’ contacts with Maryland were not “extensive, continuous, and systematic” under the Maryland long-arm statute.  Finally, Judge Motz found that Dr. Barnett’s physical location in Maryland during the alleged inception of the invention that led to the patents was irrelevant, because it had no bearing on the defendants’ whereabouts during the acts that caused the alleged tortious injury.  The defendants’ alleged tortious conduct was the submission of patent applications without naming Dr. Barnett as an inventor.  That conduct did not occur in Maryland.  Barnett v. Surefire Med., Inc., No. JFM-17-1332, 2017 WL 4279497 (D. Md. Sep. 25, 2017).