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Fox IP Team Wins Critical First Round in Battle Over Patent Rights for Cancer Treatment Device

April 19, 2019 – Press Releases

In a federal lawsuit involving a cutting-edge cancer treatment device, a Fox Rothschild IP Litigation team has secured a significant first-round victory that allows the case to proceed and keeps the litigation in the United States.

In the suit, Fox client TheraBionic, Inc. contends that Dr. Frederico Perego Costa, a Brazilian oncologist, misappropriated the company’s trade secrets that he was entrusted with while under contract to conduct clinical trials with a TheraBionic device that transmits electromagnetic fields at specific frequencies to treat certain cancers.

A Fox team led by Partner Gerard P. Norton, Ph.D., filed a seven-count suit alleging that Costa breached his contract, misappropriated trade secrets, violated the Defend Trade Secrets Act and converted TheraBionic’s intellectual property to his own use. The suit demands an injunction requiring Costa to formally assign all interests in patent applications to TheraBionic and a court order restoring TheraBionic’s sole intellectual property rights.

Costa sought dismissal of the case on the grounds that Alabama was an inconvenient legal forum for a citizen of Brazil and that none of TheraBionic’s claims were legally valid.

But U.S. District Judge Karon Owen Bowdre rejected all of Costa’s arguments and concluded instead that his signed agreement with TheraBionics specifically said any legal disputes should be waged in an Alabama state or federal court.

“This is an important threshold victory for TheraBionic because the case will now proceed in a U.S. court and because the judge has recognized that our claims are not baseless and deserve to be litigated,” Norton said.

“We are particularly grateful that the court enforced the forum selection clause in TheraBionics’ non-disclosure agreement,” Norton said.

In her 20-page opinion in TheraBionic, Inc. v. Costa, Judge Bowdre found that by signing the NDA, Costa had “expressly consented to this court’s exercise of personal jurisdiction over him.”

The judge also rejected Costa’s argument that none of the seven counts in the suit had stated a cognizable claim.

In a succinct summary of the case, Judge Bowdre wrote: “TheraBionic’s many claims rest on a simple contention — that Dr. Costa breached his contract and exploited TheraBionic’s confidential information.”

In green-lighting the case to proceed to the discovery phase, she wrote: “TheraBionic alleges a plausible breach of contract in this case.”

Norton, the Chair of Fox’s IP Litigation Group, was assisted in the case by Jonathan R. Lagarenne, Christopher R. Kinkade and Melanie E. Schulman.