Carr & Ferrell Defeats Motion to Dismiss Complaint Filed Against ALZA Corporation for Correction of Inventorship Claim on J&J Patent Covering Concerta®

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Judge rules not to dismiss Dr. James Swanson's case of correct inventorship filed against patent holders of Johnson & Johnson drug Concerta®.

This is an early important win for Dr. Swanson in his effort to establish his inventorship rights to ALZA’s patents covering the block buster drug, Concerta®.

Carr & Ferrell LLP, a Menlo Park based law firm, has defeated a motion to dismiss a complaint filed on behalf of Dr. James M. Swanson against ALZA Corporation (“ALZA”) seeking an order declaring that he is the true inventor on three patents that cover Concerta®, Johnson & Johnson’s block buster drug used for the treatment of attention-deficit/hyperactivity disorder (“ADHD”). The ruling includes a preliminary finding of subject matter jurisdiction to correct inventorship and maintenance of Dr. Swanson’s claims of invalidity and unenforceability, breach of fiduciary duty, unfair competition, ownership rights in ALZA’s patents, inequitable conduct and fraud. The Court said that these causes of action cannot be dismissed at this stage of the proceeding and that an evidentiary record must be developed before further disposition.

Carr & Ferrell litigation partner, Gerald Dodson, who is lead attorney for Dr. Swanson, said, “This is an early important win for Dr. Swanson in his effort to establish his inventorship rights to ALZA’s patents covering the block buster drug, Concerta®. We are looking forward to developing the record for the Court and for the jury to confirm that Dr. Swanson is the sole inventor on these ALZA patents.”

Dr. Swanson is Emeritus Professor of Pediatrics at the University of California, Irvine. Dr. Swanson asserts that he invented what is claimed in three patents presently assigned to ALZA while employed at UC Irvine and that ownership interest in the patents has been assigned to him by the University in exchange for a percentage of any recovery in the lawsuit.

Judge Phyllis J. Hamilton of the U.S. District Court for the Northern District of California determined that with regard to the correction of inventorship claim, “there are numerous factual disputes regarding the UC employment/patent agreement and the ALZA consulting agreement. At a minimum, it is too early in the case for ALZA to be seeking an interpretation from the court of the provisions of those agreements, or a determination regarding which of the agreements, (if any) governs the invention claimed by Dr. Swanson.” Judge Hamilton ruled similarly on ALZA’s other grounds for dismissal while dismissing Dr. Swanson’s causes of action for unjust enrichment and constructive trust.

On August 30, 2012, Dr. Swanson filed the original complaint in this action. The Court has scheduled a case management conference for March 28, 2013.
The case is Dr. James M. Swanson v. ALZA Corporation, No. C 12-4579 PJH. Pleadings can be found at

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Jerry Dodson
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