United States District Court, M.D. Alabama, Eastern Division
MEMORANDUM OPINION AND ORDER
F. MOORER UNITED STATES MAGISTRATE JUDGE
action is assigned to the undersigned magistrate judge to
conduct all proceedings and order entry of judgment by
consent of all the parties pursuant to 28 U.S.C. §
636(c). See Docs. 24, 25. Now pending before the
Court is Defendants' Motion to Dismiss and brief in
support (Docs. 12-13, filed December 5, 2016). After a
careful review of all the written pleadings, motions,
responses, and replies, the Court GRANTS Plaintiff's
alternative requests (Docs. 20 and 29) that the case be
severed and transferred to the more appropriate venues in the
Northern District of California and District of Maryland
pursuant to 28 U.S.C. § 1404(a). The motion to dismiss
pursuant to Fed.R.Civ.P. 12(b)(2) (Doc. 12) is DENIED as
moot. Any remaining motions including the remaining portion
of the motion to dismiss for 12(b)(6) (Doc. 12) remain
pending for the determination of the transferee courts.
asserts claims pursuant to 28 U.S.C. § 1332 (diversity
jurisdiction). Specifically, that the citizenship of all
parties is diverse and the amount in controversy exceeds $75,
000.00. He asserts state law claims for (1) fraud and
suppression, (2) Negligence, (3) Wantonness, (4) Negligent
and/or Wanton Training, Supervision, and Monitoring, (5)
Unjust Enrichment, and (6) Conversion. See Doc. 1.
No party contests subject matter and adequate support exists
for its determination. Defendants all contest personal
jurisdiction and is the basis for the subject motion.
See Docs. 12-13.
Parties and Background
is Mrinal Thakur (“Thakur” or
“Plaintiff”) is an individual who resides in
Auburn, Alabama. Doc. 1 at ¶ 1. Plaintiff is a professor
in the Department of Mechanical Engineering at Auburn
University and is the Director of Photonic Materials Research
Laboratory at the university. Id. at ¶ 7.
Plaintiff is the co-inventor of electrically conductive
polymers and has several patents and publications related to
nonconjugated conductive polymers. Id. On October 7,
2016, Plaintiff filed suit in this court alleging that
Defendants Eric Betzig (“Betzig”), Howard Hughes
Medical Institute (“HHMI”), William E. Moerner
(“Moerner”), and Stanford University
(“Stanford”) - collectively
“Defendants” - wrongfully plagiarized,
misappropriated, stole, and otherwise utilized
Plaintiff's work product to obtain the 2014 Nobel Prize
in Chemistry for the development of super-resolution
fluorescence microscopy. See Id. generally.
Plaintiff asserts claims for (1) fraud and suppression, (2)
negligence, (3) wantonness, (4) negligent and/or wanton
training, supervision and monitoring, (5) unjust enrichment,
and (6) conversion. Id. at ¶¶ 13-38.
Betzig and Moerner received the 2014 Nobel Prize in
Chemistry. Betzig resides in Ashburn, Virginia and HHMI
“employed Defendant Betzig as a scientist at its
Jenelia Research Campus and reaped the benefits of Defendant
Betzig's actions and conduct.” Doc. 1 at
¶¶ 2-3. HHMI is a corporation with its principal
place of business in Chevy Chase, Maryland. Id.
Moerner resides in Palo Alto, California and Stanford
University “employed Defendant Moerner as a scientist
and reaped the benefits of his actions and conduct.”
Doc. 1 at ¶¶ 4-5. Stanford is an educational
institution doing business as a corporation whose principal
place of business is Palo Alto, California. Id.
The 2014 Nobel Prize in Chemistry was awarded to Eric Betzig,
Stefan W. Hell and William E. Moerner for discovery of
“Super-Resolved Fluorescence Microscopy”. The
resolution in this microscopy transitions beyond standard
limits (Abbe's limit). Therefore, smaller structures
within a fluorescent organic material can be detected.
A major approach used in this microscopy that utilizes lasers
with short-duration (femtosecond) pulses, is based on third
order (nonlinear) optical effects in organic materials. The
earliest detailed third order optical studies on organic
crystals were initiated by Professor Mrinal Thakur and
colleagues back in 1985 - more than ten years earlier than
the first report of a successful demonstration of
super-resolved microscopy by the 2014 Nobel recipients.
The central correlation governing the line-width (resolution)
controllably decreasing with laser light intensity is given
in equation 3 of the 2014 Nobel document preserved at the
Nobel Foundation website. This equation shows that detectable
radiation (line-width) can go beyond Abbe's limit if
higher light intensity is used. This equation is based on
saturation dynamics in third order optics, in particular in
this case, involving fluorescence of organic dye molecules
(stimulated emission depletion). A derivation of this
equation using the theory and experiments previously
published by Thakur et al. has been recently published in the
Journal of Macrornolecular Science, Part A, Pure and Applied
Chemistry. This is a refereed journal in which scientific
reports are not accepted without expert reviews.
It is important to note that no derivation of equation 3 was
given by the Nobel Prize recipients in their published
articles. In some of their publications other equations based
on kinetics studies have been developed but those are
different and inaccurate. The equation 3 as given in the
Nobel document is correct and can only be derived using the
theoretical mode' (phase-space filling) for nonlinear
Optics in organic materials as developed and experimentally
verified by Professor Thakur and colleagues. While there are
other approaches discussed in the document for achieving
super-resolution, equation 3 provides the only systematic and
reliable procedure to gain super-resolution by increasing
laser light intensity at selected wavelengths. Therefore,
understanding the origin of this equation is critical. As
given in Professor Thakur's recent article, this equation
can be derived in a fairly straight-forward manner using the
basic equation in phase-space filling model on nonlinear
optics published about 10 years earlier than the publications
on demonstration of super-resolution.
Professor Thakur and colleagues published and presented
hundreds of articles on experiments and theory of nonlinear
optical properties of organic crystals and films, in highly
reputed journals and conferences (e.g. Physical Review
Letters, Applied Physics Letters, Macromolecules, Journal of
Materials Science, MRS Proceedings and others) beginning on
around 1985. Thus, the nonlinear optical coefficients,
excited-state lifetimes and the detailed saturation dynamics
and their quantitative interpretations have all been
established prior to the works on super-resolved fluorescence
microscopy. This microscopy would not be possible to
demonstrate without the in-depth knowledgebase established by
Professor Thakur and colleagues.
Doc. 1 at ¶¶ 8-12.
crux of the allegations against the individual defendants
(Betzig and Moerner) rests on the assertion that they had a
duty to represent and/or disclose that they utilized
Plaintiff's work product in the development of
super-resolution fluorescence microscopy - which ultimately
enabled them to receive the Nobel Prize. Rather, Plaintiff
alleges Betzig and Moerner falsely represented to the Nobel
Prize Committee that no one else's work product was
utilized in developing their research and specifically
suppressed that Plaintiff's work product was utilized.
Id. at ¶¶ 14-18 (Count 1 - Fraud and
Suppression). Moreover, Betzig and Moerner had a duty to
reveal they utilized Thakur's work product and breached
that duty by concealing their use of the work. Id.
at ¶¶ 19-22 (Count 2 - Negligence). Finally, Betzig
and Moerner wantonly, recklessly, knowingly, and purposefully
misappropriate Plaintiff's work product. Id. at
¶¶ 23-25 (Count 3 - Wantonness).
allegations against the corporate defendants (Stanford and
HHMI) stem from their employment and supervision of the
individual defendants. Specifically, HHMI and Stanford
negligently and/or wantonly failed to properly train,
supervise, and/or monitor Betzig and Moerner. Id. at
¶¶ 26-29 (Count 4 - Negligent and/or Wanton
Training, Supervision and Monitoring). As a result, they
inequitably benefitted from the individual defendants'
actions. Id. at ¶¶ 30-34.
all Defendants converted for their own use - illegally and
unlawfully - work product created and developed by Plaintiff
which was his intellectual property. The conversion was
wanton and done without the knowledge or consent of Thakur.
Id. at ¶¶ 35-38. For damages, Plaintiff
seeks compensatory and punitive damages plus costs.
December 5, 2016, Defendants filed their collective Motion to
Dismiss for Lack of Jurisdiction and for Failure to State a
Claim. Docs. 12-13. They assert that (a) the Court lacks
personal jurisdiction over Defendants, (b) the Complaint
fails to comply with minimal pleading standards, (c) Counts
1-2 of the complaint fail to allege that he relied on any
alleged misrepresentation, and (d) the wantonness, unjust
enrichment, and conversion claims are all displaced by the
Alabama Trade Secrets Act.
December 29, 2016, Plaintiff submitted his response in
opposition, alleging that this Court does have personal
jurisdiction, or alternatively, if it does not, can transfer
the case to an appropriate venue where jurisdiction will not
be a contested issue. Doc. 20. If transferred then the
remaining issues would be left for resolution by the gaining
court. Plaintiff specifically requests that the case be