United States District Court Northern District of Illinois Eastern Division

Case: 1:20-cv-05729 Document #: 1 Filed: 09/25/20 Page 1 of 23 PageID #:1
UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
______________________________________
)
)
NORTHWESTERN UNIVERSITY and )
DR. FRASER STODDART )
)
)
Plaintiffs, ) Case No.______________
)
v. )
) Jury Trial Demanded
PANACEANANO, INC. and )
YOUSSRY BOTROS, )
)
)
Defendants. )
______________________________________)
COMPLAINT
Plaintiffs Northwestern University (“Northwestern”) and Dr. Fraser Stoddart (“Stoddart”)
(collectively, “Plaintiffs”) for their complaint against PanaceaNano, Inc. (“PN”) and Youssry
Botros (“Botros”) (collectively, “Defendants”), allege as follows:
Introduction
1. This is an action to correct inventorship under 35 U.S.C. § 256 with respect to
five United States patents: U.S. Patent No. 9,808,788 (“the ’788 patent”); U.S. Patent
No. 9,834,803 (“the ’803 patent”); U.S. Patent No. 9,816,049 (“the ’049 patent”); U.S. Patent
No. 10,583,147 (“the ’147 patent”); and U.S. Patent No. 10,736,967 (“the ’967 patent”)
(collectively, “the Patents”). Copies of the Patents are attached hereto as Exhibits A through E,
respectively.
2. Each of the Patents is assigned to PN and names Botros and his PN colleague,
Benjie Limketkai (“Limketkai”), as the only two named inventors.
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3. Northwestern is a world-renowned research university that fosters and creates
important progress in pure and applied science. Each year it is ranked as one of the world’s most
innovative universities in the U.S. and in the world.
4. Northwestern’s Innovation and New Ventures Office (“INVO”) facilitates
translation of its scientists’ research for the benefit of the public. INVO is dedicated to ensuring
that the efforts of university researchers are harnessed to develop usable intellectual property —
while respecting the IP rights of others — so the public can benefit from innovations discovered
and launched on campus. It does this through (among other things) successful commercialization
with responsible industry partners.
5. Dr. Fraser Stoddart (“Stoddart”) is a Professor of Chemistry at Northwestern, and
a pioneer in the development of the syntheses of two-state mechanically interlocked molecules
(“MIMs”). Dr. Stoddart was a co-winner of the 2016 Nobel Prize in Chemistry for “The Design
and Synthesis of Molecular Machines.” Stoddart’s many honors and awards include being
appointed by Her Majesty Queen Elizabeth II as a Knight Bachelor, and in 2019, Stoddart was
named to the National Academy of Inventors.
6. Stoddart runs a laboratory research group (“the Stoddart group”) as part of the
Department of Chemistry at Northwestern. The Stoddart group conducts on-going research
involving MIMs. Stoddart is a named author on approximately 1,200 technical journal articles.
Stoddart has been a member of the faculty at Northwestern since 2008. As explained below,
Stoddart and the Stoddart group have published extensively in the field of chemistry known as
cyclodextrin metal-organic frameworks (“CD-MOFs”).
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7. The research conducted by the Stoddart group at Northwestern has led to a
number of key discoveries and the establishment of start-up companies based on those
discoveries. PN is one such company. Botros is Chief Executive Officer of PN.
8. Northwestern owns several patents and applications that name Stoddart as an
inventor, including several patents related to CD-MOFs that predate the Patents at issue here.
PN has licensed relevant technology from Northwestern that was developed by the Stoddart
group in Evanston, Illinois. Botros’s collaboration with the Stoddart group over the past decade
is evident from the fact that Botros is named as a co-author with members of the Stoddart group
on numerous papers.
9. Despite this collaboration and the inclusion of Botros on many papers and articles
by the Stoddart group, and the sharing of non-public information with Botros about the Stoddart
group’s on-going research work in CD-MOFs, PN and Botros omitted Stoddart as a named
inventor on the five Patents at issue here. This action has been brought by Northwestern and
Stoddart to correct the inventorship on the five Patents under 35 U.S.C. § 256. Northwestern is
the assignee of Stoddart’s inventions and patent applications, including any rights or potential
rights to the Patents.
The Parties
10. Plaintiff Northwestern is a private, not-for-profit institution of higher education
and research organized and existing under the laws of Illinois, with a principal place of business
at 633 Clark Street, Evanston, Illinois 60208. Northwestern is the assignee of Stoddart’s right
and interest as an inventor in the inventions claimed in the Patents.
11. Plaintiff Stoddart is an individual and resides at 2720 Noyes Street, Evanston, IL
60201.
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12. Defendant PN is a Delaware corporation with a place of business for service of
process in California at 24762 Jessica Place, Laguna Niguel, California 92677.
13. Defendant Botros is Chief Executive Officer of PN, and, on information and
belief, resides at 24762 Jessica Place, Laguna Niguel, California 92677.
Jurisdiction and Venue
14. This Court has subject matter jurisdiction over Plaintiffs’ patent inventorship
claims against Defendants under 28 U.S.C. § 1338(a), in that this action arises under the patent
laws of the United States, 35 U.S.C. § 256, and under 28 U.S.C. § 1331, as a civil action arising
under the Constitution, laws and/or treaties of the United States.
15. In addition, the Court has subject matter jurisdiction over Plaintiffs’ damages
claims pursuant to 28 U.S.C. § 1332(a)(1) because there is complete diversity of citizenship
between the parties, and the amount in controversy exceeds $75,000, exclusive of interest and
costs.
16. The Court also has supplemental jurisdiction over Plaintiffs’ damages claims
pursuant to 28 U.S.C. § 1367(a) because the damages claims are related to the claims that
support original jurisdiction under 28 U.S.C. § 1338(a).
17. Upon information and belief, PN has transacted business within the Northern
District of Illinois, including entering into collaboration and licensing agreements with
Northwestern, a citizen of Illinois, and has purposefully sought out and received the benefit of
services performed in this District by juristic and natural citizens of the District, using resources
residing within the District. PN, by Botros as its CEO, has negotiated, and entered into, license
agreements with Northwestern relating to a number of Northwestern-owned patents that relate to
technology developed by the Stoddart group. PN is therefore subject to the personal jurisdiction
of this Court.
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18. On information and belief, because of Stoddart’s and Northwestern’s, specialized
knowledge and significant background in the area of CD-MOFs, Botros and PN purposefully
sought out Stoddart and Northwestern, and the associated knowledge and services of Stoddart
and the members of the Stoddart group at Northwestern, as collaborative partners for PN and
Botros, as described in more detail below. Over the past decade, Botros has communicated with,
and visited, the research facilities of the Stoddart group at Northwestern, during which Botros
has been provided with detailed information concerning the on-going research of the Stoddart
group. Botros is therefore subject to the personal jurisdiction of this Court.
19. The inventorship question posed by this action arises out of the work conducted
by the Stoddart group at Northwestern’s facilities in Evanston, Illinois, and the collaboration of
Botros with that effort.
20. Venue is proper in this District under 28 U.S.C. §§ 1391(b) and (c) because
Defendants are subject to personal jurisdiction in this District and a substantial part of the events
that give rise to Plaintiffs’ claims took place within this District.
The Botros/PN/Stoddart/Northwestern Collaboration
21. On information and belief, Botros began his collaboration with Stoddart and the
Stoddart group at Northwestern at least as early as the 2009-10 timeframe. At that time, Botros
was employed at Intel Labs in Santa Clara, California. Their collaboration in 2009 is evidenced
by an article co-authored by Botros, Stoddart, et al., entitled “Mechanostereochemistry,”
published in 2010 in Pure Appl. Chem., Vol., 82, No. 8, pp. 1569-74. In the article, Botros lists
his affiliations as with Intel Labs in Santa Clara and with the National Center for Nano
Technology Research, in Riyadh, Saudi Arabia. Stoddart identifies his affiliation with
Northwestern.
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22. In 2010-11, among other times, the Stoddart group was actively involved in
research relating to CD-MOFs. For example, on March 17, 2011, members of the Stoddart group
filed U.S. Patent Application No. 13/050,709, which describes some of their seminal
developments relating to CD-MOFs. This application eventually issued as U.S. Patent
No. 9,085,460 (“the ’460 patent”), on July 21, 2015, and is one of several patents owned by
Northwestern and licensed to PN as part of their collaboration.
23. The Stoddart group along with Botros published at least one article describing the
absorption and release of CO2 from CD-MOFs, demonstrating the collaborative nature of their
relationship during the relevant time frame. In 2011, members of the Stoddart group, published a
paper in the Journal of the American Chemical Society (“JACS”), entitled “Strong and
Reversible Binding of Carbon Dioxide in a Green Metal-Organic Framework,” JACS 2011,
133:15312-15, which discusses the absorption of CO2 by CD-MOFs. Both Stoddart and Botros
are named as authors on this 2011 paper in JACS.
24. The Stoddard group also conducted its own independent research on CO2
absorption by CD-MOFs. For example, in 2013, members of the Stoddart group published
another paper in the JACS, entitled “Direct Calorimetric Measurement of Enthalpy of
Adsorption of Carbon Dioxide on a CD-MOF-2, a Green Metal-Organic Framework,” JACS
2013, 135:6790-93. This 2013 paper in JACS, on which Stoddart, but not Botros, is named as an
author, discusses further work involving the Stoddart group work on the adsorption of CO2 by
CD-MOFs. In 2014, members of the Stoddart group published another paper in JACS, entitled
“A Metal-Organic Framework for Electrochemical Sensing of Carbon Dioxide,” JACS 2014,
136: 8277-8282. This 2014 paper in JACS also addressed detection of CO2 by use of MOFs.
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25. The Stoddart group’s discoveries relating to CD-MOF technology expanded well
beyond its use to absorb CO2. For example, members of the Stoddart group published a number
of technical articles describing their work involving cyclodextrins and metal complexes,
including gold. In 2010, members of the Stoddart group published an article in Angew. Chem.
entitled “Metal-Organic Frameworks from Edible Natural Products,” Angew. Chem. Int. Ed.
2010, 49:8630-34, in which they describe the use of metal salts to form CD-MOFs. Stoddart, but
not Botros, is listed as an author on the Angew. Chem. article.
26. The Stoddart group and Botros collaboration also extended into this area. In 2011,
members of the Stoddart group published an article in JACS entitled, “Nanoporous Carbohydrate
Metal-Organic Frameworks,” JACS 2011, 134:406-17. This JACS 2011 paper, on which both
Stoddart and Botros are included as authors, describes the use of metals with CDs in the
synthesis of CD-MOFs. In 2013, members of the Stoddart group published an article in
NatureCommnications, entitled “Selective Isolation of Gold Facilitated by Second-Sphere
Coordination with α–cyclodextrin,” NatureComm 2013, 4:1855. The NatureComm 2013 article,
which includes both Stoddart and Botros as authors, describes the recovery of gold metal from
raw materials using alpha-CDs.
27. Throughout the 2015-17 timeframe, among other times, Botros was kept apprised
of the work of the Stoddart group relating to CD-MOFs. Indeed, Botros was included as a co-
author on a number of technical articles and publications along with members of the Stoddart
group. These publications, which relate specifically to CD-MOFs and the subject matter of the
five Patents at issue here, demonstrate the collaboration between Botros, PN, Stoddart, and the
Stoddart group at Northwestern. Email correspondence over the past decade between Botros, on
one hand, and Stoddard and others from the Stoddart group, on the other, confirms that Botros
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was well-aware of the publications on which Botros was named as a co-author, as well as patents
and other publications involving the Stoddart group on which Botros was not named as a co-
author.
28. In June 2015, Botros and Limketkai, who was an employee of PN, travelled to
Northwestern for in-person education and training by the Stoddart group on the subject matter of
CD-MOFs. Botros and Limketkai spent June 24-26, 2015 in Evanston, Illinois, as guests of the
Stoddart group to observe various aspects of the formulation and characterization of CD-MOFs
in the laboratory at Northwestern.
The Patents
29. On July 29, 2015, one month after being trained at the Stoddart laboratory, Botros
and Limketkai filed U.S. Provisional Application No. 62/198,407 (“the ’407 provisional”). On
June 10, 2016, Botros and Limketkai filed non-provisional U.S. Patent Application
No. 15/179,555 (“the ’555 application”), which claimed priority to the ’407 provisional and
would eventually issue on November 7, 2017 as U.S. Patent No. 9,808,788 (“the ’788 patent”),
entitled “Method of Using Cyclodextrin-Based Metal Organic Frameworks.” Botros and
Limketkai are the only two inventors named on the ’788 patent, which is assigned to PN.
30. As the Abstract and specification of the ’788 patent explain, the ’788 patent is
directed to a method that includes contacting a solvent with a porous CD-MOF that is adsorbed
with carbon dioxide (CO2) to release the CO2, and then collecting the released CO2. The claims
of the ’788 patent are directed to this same subject matter. The claims recite, among other things,
contacting a solvent with a porous CD-MOF adsorbed with CO2 to cause the release of CO2.
31. The ’788 patent acknowledges (at Col. 3, ll. 25-28) that “[i]n general, the CD-
MOFs that can be used in the methods described herein can be those described in U.S. Pat.
No. 9,085,460 (“’460 patent”), the contents of which are hereby incorporated by reference in
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their entirely.” The ’460 patent names Stoddart as the first-named inventor of a group of four co-
inventors and is assigned to Northwestern. Neither Botros nor Limketkai are named as an
inventor of Northwestern’s ’460 patent. The ’460 patent describes, among other things, CD-
MOF-2 technology.
32. Over the past decade, including prior to the filing of the ’407 provisional,
Stoddart and the Stoddart group, at least partially in collaboration with Botros, performed
substantial work relating to CO2 absorption and release using CD-MOFs. Their collaboration
with Botros is corroborated by, inter alia, the publication of at least one paper that included
Botros as a co-author. Stoddart and the Stoddart group’s groundwork and discoveries contributed
to the conception of inventions claimed in the ’788 patent. Despite Stoddart’s contribution and
the collaboration between Botros and the Stoddart group on this subject, PN and Botros
improperly omitted Stoddart as a co-inventor on the ’788 patent.
33. On August 31, 2015, Botros and Limketkai filed U.S. Provisional Application
No. 62/212,026 (“the ’026 provisional”). On July 27, 2016, Botros and Limketkai filed U.S.
Non-Provisional Application No. 15/220,618 (“the ’618 application”), which claimed priority to
the ’026 provisional and would eventually issue on December 5, 2017, as U.S. Patent
No. 9,834,803 (“the ’803 patent”), entitled “Methods to Isolate Cyclodextrins.” Botros and
34. As the specification of the ’803 patent explains, the ’803 patent relates to methods
of isolating cyclodextrins (“CDs”) by contacting a CD production mixture with a metal salt, or a
“square planar metal complex.” The specification of the ’803 patent discloses a number of
embodiments of the square planar metal complex, including, for example, gold. The claims of
the ’803 patent relate generally to isolating CDs by, among other things, adding a “square planar
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metal complex” to a CD production mixture. Claim 23 of the ‘803 patent expressly recites that
the metal complex is gold.
35. Over the past decade, including prior to the filing of the ’026 provisional,
Stoddart and the Stoddart group performed substantial work relating to use of metals, including
gold, in CD production formulations. Their collaboration with Botros is corroborated by, inter
alia, at least two papers that include Botros as a co-author. Stoddart and the Stoddart group’s
groundwork and discoveries contributed to the conception of the claims of the ’803 patent,
including at least claim 23. Despite Stoddart’s contribution and the collaboration between Botros
and the Stoddart group on this subject, PN and Botros improperly omitted Stoddart as a co-
inventor on the ’803 patent.
36. On November 17, 2015, Botros and Limketkai filed U.S. Provisional Application
No. 62/256,423 (“the ’423 provisional”). On November 16, 2016, Botros and Limketkai filed
U.S. Non-Provisional Application No. 15/352,809 (“the ’809 application”), which claims priority
to the ’423 provisional and would eventually issue on November 14, 2017 as U.S. Patent
No. 9,816,049 (“the ’049 patent”), entitled “Fragrance-Containing Cyclodextrin-Based Metal-
Organic Frameworks.” Botros and Limketkai are the only two inventors named on the
’049 patent, which is assigned to PN.
37. As the Abstract and specification of the ’049 patent explain, the ’049 patent
relates to use of a porous CD-MOF for retention of a fragrance. The specification of the
’049 patent describes the preparation of CD-MOF crystals in accordance with the procedure
described in U.S. Patent No. 9,085,460 (described above), of which Stoddart is the first-named
inventor. The specification of the ’049 patent also describes a series of experiments involving the
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addition of lemon oil into varying amounts of CD-MOF crystal powder. The claims of the
’049 patent relate generally to a composition of a fragrance and a porous CD-MOF.
38. Both prior to, and after, the November 17, 2015 filing date of the
’423 provisional, Stoddart and members of the Stoddart group conducted research involving
porous CD-MOFs and aromatic compounds, such as fragrances. On June 6, 2014, members of
the Stoddart group filed U.S. Provisional Application No. 62/008,671 (“the ’671 provisional”)
describing some of that work. The provisional application was eventually filed as a non-
provisional application that issued as Northwestern’s U.S. Patent No. 10,239,044 (“the
’044 patent”), entitled “Carbohydrate-Mediated Purification of Petrochemicals,” on March 26,
2019. The specification of the ’044 patent includes data relating to refinement and separation of
aromatic hydrocarbons, such as pinene and limonene, which are fragrant essential oils, often
described as the precursors of common commercial fragrances. Stoddart, but not Botros, is listed
as an inventor on the ’044 patent owned by Northwestern. The ’671 provisional, from which the
’044 patent claims priority, is among the patent rights licensed to PN under a License Agreement
between Northwestern and PN effective January 28, 2015. Furthermore, a presentation delivered
by Stoddart at the Pacifichem conference in Hawaii on December 15, 2015 (“Pacifichem
Presentation”), included discussion of research shown in the ’044 patent and described the
relevance of the work on pinenes as a precursor for fragrances and perfumes. In 2016, members
of the Stoddart group published an article in JACS, entitled “CD-MOF: A Versatile Separation
Medium,” JACS 2016, 138:2292-2301, which describes the ability of pores within MOFs to
retain compounds, such as pinenes. Both Stoddart and Botros are included as authors on the
JACS 2016 article.
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39. The filing of the ’423 provisional on November 17, 2015 was just months after
Botros and Limketkai’s in-person visit to Northwestern for training on CD-MOF technology by
the Stoddart group in June 2015. During the in-person training and/or in the course of preparing
the JACS 2016 article and Pacifichem Presentation, Stoddart and his group communicated to
Botros and/or Limketkai, inter alia, about CD-MOFs with the ability to retain aromatic
hydrocarbon compounds, such as pinenes, within their pores. Such discoveries and contributions
can be found in the claims of the ’049 patent.
40. Despite Botros’s collaborations with Stoddart and the Stoddart group on
development of the inventions claimed and described in the ’049 patent and Botros’s awareness
of the Stoddart group’s work, including his awareness of the information contained in the related
patent applications, PN and Botros improperly omitted Stoddart as a co-inventor on the
’049 patent.
41. On March 24, 2016, Botros and Limketkai filed U.S. Provisional Application
No. 62/312,964 (“the ’964 provisional”). On March 23, 2017, Botros and Limketkai filed non-
provisional U.S. Patent Application No. 15/467,016 (“the ’016 application”), which claimed
priority to the ’964 provisional and would eventually issue on March 10, 2020, as U.S. Patent
No. 10,583,147 (“the ’147 patent”), entitled “Compositions Containing Cyclodextrin-Based
Metal-Organic Frameworks.” Botros and Limketkai are the only two inventors named on the
’147 patent, which is assigned to PN.
42. As the Abstract and specification of the ’147 patent explain, the disclosure of the
’147 patent relates to a composition that includes an active agent and a porous CD-MOF. The
specification of the ’147 patent describes a number of types of active agents, including, among
others, salicylic acid and ibuprofen. The claims of the ’147 patent relate generally to a
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composition of an active agent and a porous CD-MOF. Claim 7 of the ’147 patent expressly
recites ibuprofen as the active agent.
43. Prior to, and after, the March 24, 2016 filing date of the ’964 provisional, Stoddart
and members of the Stoddart group published technical articles and submitted patent applications
that describe their work involving porous CD-MOFs and active agents, specifically ibuprofen;
i.e., the subject matter described and claimed in the ’147 patent. On November 15, 2015 and
November 2, 2016, Stoddart and members of the Stoddart group filed U.S. Provisional
Applications Nos. 62/255,490 (“the ’490 provisional”) and 62/416,334 (“the ’334 provisional”),
which were eventually combined and filed as a non-provisional application and issued as
Northwestern’s U.S. Patent No. 10,500,218 (“the ’218 patent”), entitled “Uptake of
Pharmaceuticals Within Cyclodextrin-Based Porous Materials,” on December 10, 2019. The
’218 patent includes data relating to the encapsulation of salicylic acid and ibuprofen in porous
CD-MOFs. Stoddart, but not Botros, is listed as an inventor on the ’218 patent owned by
Northwestern. In 2017, members of the Stoddart group published the research on ibuprofen
encapsulation and porous CD-MOFs in an article in MolecularPharmaceutics, entitled
“Encapsulation of Ibuprofen in CD-MOF and Related Bioavailabilty Studies,” MolecularPharma
2017, 14:1831-39. Both Stoddart and Botros are listed as authors on the 2017 paper.
44. Stoddart and the Stoddart group performed substantial work relating to
compositions of active agents with porous CD-MOFs, including extensive research on the
encapsulation of ibuprofen in porous CD-MOFs, as evidenced by the ’218 patent. As a result of
the Stoddart group’s collaboration with Botros, Stoddart’s discoveries in this area were
communicated to Botros, and Stoddart’s inventive discoveries contributions were incorporated
into the subject matter claimed in the ’147 patent. The Stoddart group’s collaboration with
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Botros is corroborated by the publication of the paper in 2017 that includes Botros as a co-
author. Despite the collaboration between Botros and the Stoddart group on this subject and
Stoddart’s contributions to the claims of the ’147 patent, PN and Botros improperly omitted
Stoddart as a co-inventor on the ‘147 patent.
45. On January 5, 2016, Botros and Limketkai filed U.S. Provisional Application
No. 62/274,962 (“the ’962 provisional”). On December 30, 2016, Botros and Limketkai filed
U.S. Non-Provisional Application No. 15/395,138 (“the ’138 application”), which claimed
priority to the ’962 provisional and would eventually issue as U.S. Patent No. 10,736,967
(“the ’967 patent”), entitled “Method of Preparing Cyclodextrin Complexes.” Botros and
46. As the Abstract and specification of the ’967 patent explain, the disclosure of the
’967 patent relates to a method of preparing an agent-cyclodextrin complex. The specification of
the ’967 patent describes a number of drug embodiments of the agent, including, among others,
salicylic acid and ibuprofen. The specification of the ’967 patent describes a number of fragrance
embodiments of the agent, including, among others, limonene. The claims of the ’967 patent
relate generally to a method for preparing an agent-cyclodextrin complex. Claim 1 of the ‘967
patent expressly recites ibuprofen as the drug agent and limonene as the fragrance agent.
47. As explained above, prior to, and after, the January 5, 2016 filing date the
’962 provisional, members of the Stoddart group published a number of technical articles, made
presentations and submitted patent applications that describe their work involving porous CD-
MOFs and active agents, specifically ibuprofen and limonene; i.e., the subject matter described
and claimed in the ’967 patent. On November 15, 2015 and November 2, 2016, Stoddart and
members of the Stoddart group filed the ’490 provisional and the ’334 provisional, respectively,
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which were eventually combined and filed as a non-provisional application and issued as
Northwestern’s ’218 patent on December 10, 2019. The ’218 patent includes data relating to the
encapsulation of ibuprofen in porous CD-MOFs. Stoddart, but not Botros, is listed as an inventor
on the ’218 patent owned by Northwestern. In 2017, members of the Stoddart group published
research on ibuprofen encapsulation and porous CD-MOFs in an article in
MolecularPharmaceutics, entitled “Encapsulation of Ibuprofen in CD-MOF and Related
Bioavailabilty Studies,” MolecularPharma 2017, 14:1831-39. Both Stoddart and Botros are
listed among the authors on the 2017 paper. On June 6, 2014, Stoddart and members of the
Stoddart group filed U.S. Provisional Application No. 62/008,671, which was eventually filed as
a non-provisional application and issued as Northwestern’s ’044 patent on March 26, 2019.
Northwestern’s ’044 patent includes data relating to refinement and separation of aromatic
hydrocarbons. The specification of the patent includes data for testing of limonene, which is an
essential oil, or a precursor of common commercial fragrances.
48. The Stoddart group performed substantial work relating to compositions of active
agents with porous CD-MOFs, including extensive research on the encapsulation of ibuprofen in
porous CD-MOFs, as evidenced by the ’218 patent, and extensive research on limonene in CD-
MOFs, as evidenced by Northwestern’s ’044 patent. The Stoddart group’s collaboration with
Botros and contributions are found in the subject matter claimed in the ’967 patent. The
communication of these contributions to Botros is corroborated by the publication of the papers
in 2017 that include Botros as a co-author. Despite the collaboration between Botros and the
Stoddart group on this subject and Stoddart’s contributions to the claims of the ’967 patent, PN
and Botros improperly omitted Stoddart as a co-inventor on the ’967 patent.
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49. As demonstrated above, the claims of the Patents include inventive contributions
by Stoddart made while the Stoddart group was working in collaboration with Botros, which
contributions were not well-known or considered within the state of the art at the time the
inventions were made.
50. In his meetings and other communications with Botros and Limketkai, Stoddart
did more than merely provide Botros and Limketkai with well-known principles or explain the
state of the art. As part of their collaboration, Stoddart contributed ideas to the total inventive
concepts that are embodied in one or more claims of each of the Patents. Consequently, Stoddart
should have been named as a joint inventor on each of the Patents.
51. As part of its mission to disseminate innovative CD-MOF discoveries across the
United States and throughout the world, Northwestern seeks an order correcting inventorship on
the Patents. One of Northwestern’s objectives in pursuing this action is to confirm its ability to
grant non-exclusive licenses to companies interested in further development of CD-MOF
technologies for the benefit of the public.
52. PN’s and Botros’s failure to name Stoddart on the Patents as a joint inventor
deprived him of a partial ownership interest in each of the Patents as a co-inventor.
53. At all relevant times, Stoddard was under an obligation to assign, and in fact did
assign, any and all of his ownership interest in the Patents to Northwestern.
54. As a result of Stoddart’s assignment of his ownership rights to the Patents to
Northwestern, the failure of PN and Botros to name Stoddard as an inventor on each of the
Patents deprived Northwestern the ability to commercialize the inventions embodied and claimed
by each of the Patents.
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55. For example, Northwestern was precluded from seeking partnerships with third
parties to develop technology and products that would embody the claimed inventions and seek
monetary compensation by way of licensing revenue or otherwise resulting from the
commercialization of such products. Moreover, to the extent Northwestern might have included
its rights in the Patents within the scope of intellectual property rights licensed to PN under the
License Agreement, PN’s and Botros’s failure to name Stoddart as a joint inventor permitted PN
to pay lower compensation to Northwestern under the License Agreement.
56. Therefore, the failure by PN and Botros to name Stoddard as a co-inventor on the
Patents, led the Defendants to retain a benefit, namely exclusive ownership of the Patents, that
results in financial and economic harm to Northwestern, in addition to the reputational harm to
Stoddart resulting from not being acknowledged as a co-inventor on patents to which he was a
key contributor.
57. Furthermore, by not having to recognize Northwestern as a co-owner of the
Patents, upon information and belief, PN and Botros were able to secure partnerships with third
parties, such as Beauty Molecules, Inc., to potentially utilize the inventions claimed by the
Patents on an exclusive basis.
58. PN’s and Botros’s decision to not name Stoddart as an inventor on each of the
Patents violated the fundamental principles of justice, equity and good conscious.
Count I
(Correction of Inventorship of U.S. Patent No. 9,808,788)
59. Plaintiffs repeat and re-allege the allegations set forth in paragraphs 1 through 58
of the Complaint as if those allegations have been set forth herein.
60. Stoddart made significant contributions to the conception of subject matter
claimed in the ’788 patent.
17
61. Based on his contributions to the joint conception of the invention covered by at
least one claim of the ’788 patent, Stoddart should have been named a joint inventor of the
’788 patent.
62. The nonjoinder of Stoddart as a joint inventor occurred without any deceptive
intent on the part of Stoddart.
63. Pursuant to 35 U.S.C. § 256, Stoddart and Northwestern request that the Court
order the U.S. Patent & Trademark Office to issue a certificate correcting the inventorship of the
’788 patent by joining Stoddart as an inventor.
Count II
least one claim of the ’803 patent, Stoddart should have been named a joint inventor of the ’803
patent.
18
Count III
’049 patent.
Count IV
’147 patent.
19
Count V
’967 patent.
Count VI
(Claim for Damages)
20
85. As a result of PN’s and Botros’s above actions, Northwestern has suffered
monetary damages. These damages include, without limitation, lost business opportunities for
Northwestern as a result of not being at least a partial owner of one or more of the Patents, which
relate to subject matter not being commercially pursued by PN. In addition, Northwestern, and
Stoddart, were denied the prestige stemming from issuance of one or more of the Patents naming
Stoddart as a joint inventor, and Stoddart lost compensation as a result.
86. As a direct and proximate result of PN’s and Botros’s wrongful conduct, as
described more fully herein, Northwestern has sustained monetary damages in excess of
$75,000, in an amount to be determined at trial.
Count VII
(Unjust Enrichment)
88. As a result of the above actions by PN and Botros, they were able to secure more
lucrative agreements with third parties to license the Patents than if Northwestern was named as
a co-owner of the Patents.
89. These opportunities and agreements came at the expense of Northwestern. It
would be inequitable for PN and Botros to retain these benefits without compensation to
Northwestern and Stoddart.
JURY DEMAND
Northwestern and Stoddart hereby demand a trial by jury on all issues so triable.
21
PRAYER FOR RELIEF
WHEREFORE, Plaintiffs respectfully request that this Court:
1. Determine that Dr. Fraser Stoddart is a joint inventor of each of the
Patents;
2. Order the United States Patent and Trademark Office to issue a certificate
correcting the inventorship of each of the Patents by joining Stoddart as joint inventor
pursuant to 35 U.S.C. § 256;
3. Order that PN and Botros pay Northwestern and Stoddart adequate
compensation to redress PN’s and Botros’s unjust enrichment;
4. Determine that this is an exceptional case under 35 U.S.C. § 285 and
award Plaintiff its reasonable attorney fees and costs;
5. Grant Plaintiffs damages in an amount to be determined at trial; and,
6. Grant Plaintiffs such further and additional relief that is appropriate.
22
Date: September 25, 2020 Respectfully submitted,
/s/ Gary M. Elden /s/ Manish K. Mehta

Gary M. Elden Manish K. Mehta
Hugh A. Abrams Samuel J. Ruggio
Amy Y. Cho Benesch, Friedlander, Coplan & Aronoff, LLP
Shook, Hardy & Bacon, L.L.P. 71 S. Wacker Dr., Suite 1600
111 South Wacker Dr., Suite 4700 Chicago, IL 60606
Chicago, IL 60606 T: 312.212.4949
T: (312) 704-7700 F: 312.767.9192
F: (312) 558-1195 [email protected]
[email protected] [email protected]
[email protected]
[email protected] Charanjit Brahma (pro hac vice application to
be filed)
Attorneys for Plaintiff Benesch, Friedlander, Coplan & Aronoff, LLP
Dr. Fraser Stoddart One Montgomery Tower
120 Kearny Street, Suite 2700
San Francisco, CA 94104
T: 628.600.2241
F: 628.221.5828
[email protected]
Attorneys for Plaintiff

Northwestern University
23

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Case: 1:20-cv-05729 Document #: 1 Filed: 09/25/20 Page 1 of 23 PageID #:1

UNITED STATES DISTRICT COURT

Plaintiffs Northwestern University (“Northwestern”) and Dr. Fraser Stoddart (“Stoddart”)

Botros (“Botros”) (collectively, “Defendants”), allege as follows:

1. This is an action to correct inventorship under 35 U.S.C. § 256 with respect to

Benjie Limketkai (“Limketkai”), as the only two named inventors.

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3. Northwestern is a world-renowned research university that fosters and creates

innovative universities in the U.S. and in the world.

4. Northwestern’s Innovation and New Ventures Office (“INVO”) facilitates

with responsible industry partners.

5. Dr. Fraser Stoddart (“Stoddart”) is a Professor of Chemistry at Northwestern, and

a pioneer in the development of the syntheses of two-state mechanically interlocked molecules

named to the National Academy of Inventors.

Department of Chemistry at Northwestern. The Stoddart group conducts on-going research

cyclodextrin metal-organic frameworks (“CD-MOFs”).

7. The research conducted by the Stoddart group at Northwestern has led to a

discoveries. PN is one such company. Botros is Chief Executive Officer of PN.

8. Northwestern owns several patents and applications that name Stoddart as an

rights to the Patents.

10. Plaintiff Northwestern is a private, not-for-profit institution of higher education

and interest as an inventor in the inventions claimed in the Patents.

12. Defendant PN is a Delaware corporation with a place of business for service of

process in California at 24762 Jessica Place, Laguna Niguel, California 92677.

belief, resides at 24762 Jessica Place, Laguna Niguel, California 92677.

Jurisdiction and Venue

under the Constitution, laws and/or treaties of the United States.

claims pursuant to 28 U.S.C. § 1332(a)(1) because there is complete diversity of citizenship

support original jurisdiction under 28 U.S.C. § 1338(a).

agreements with Northwestern relating to a number of Northwestern-owned patents that relate to

18. On information and belief, because of Stoddart’s and Northwestern’s, specialized

group. Botros is therefore subject to the personal jurisdiction of this Court.

Botros with that effort.

The Botros/PN/Stoddart/Northwestern Collaboration

by an article co-authored by Botros, Stoddart, et al., entitled “Mechanostereochemistry,”

developments relating to CD-MOFs. This application eventually issued as U.S. Patent

Northwestern and licensed to PN as part of their collaboration.

Reversible Binding of Carbon Dioxide in a Green Metal-Organic Framework,” JACS 2011,

are named as authors on this 2011 paper in JACS.

another paper in the JACS, entitled “Direct Calorimetric Measurement of Enthalpy of

Adsorption of Carbon Dioxide on a CD-MOF-2, a Green Metal-Organic Framework,” JACS

“A Metal-Organic Framework for Electrochemical Sensing of Carbon Dioxide,” JACS 2014,

not Botros, is listed as an author on the Angew. Chem. article.

synthesis of CD-MOFs. In 2013, members of the Stoddart group published an article in

NatureCommnications, entitled “Selective Isolation of Gold Facilitated by Second-Sphere

raw materials using alpha-CDs.

in the laboratory at Northwestern.

entitled “Method of Using Cyclodextrin-Based Metal Organic Frameworks.” Botros and

improperly omitted Stoddart as a co-inventor on the ’788 patent.

of isolating cyclodextrins (“CDs”) by contacting a CD production mixture with a metal salt, or a

the metal complex is gold.

inventor on the ’803 patent.

No. 9,816,049 (“the ’049 patent”), entitled “Fragrance-Containing Cyclodextrin-Based Metal-

’049 patent, which is assigned to PN.

’049 patent relate generally to a composition of a fragrance and a porous CD-MOF.

’044 patent”), entitled “Carbohydrate-Mediated Purification of Petrochemicals,” on March 26,

by Stoddart at the Pacifichem conference in Hawaii on December 15, 2015 (“Pacifichem

JACS 2016 article.