IP Law Daily, PATENT NEWS: Inventor of technology to deter opioid abuse sues to correct inventorship, alleges fraudulent scheme, (Jun 30, 2016)

By Peter Reap, J.D., LL.M.

Dr. John K. Thottathil has accused defendants Waterville Valley Technologies and its founder James Peltier of engaging in a fraudulent scheme to steal his invention of a prodrug technology related to oxycodone and oxymorphone ("the Thottathil Prodrug Technology") that would aid in deterring opioid abuse by patients of prescription opioids. In a complaint filed in the federal district court in Chicago, Thottathil contends that the defendants fraudulently filed a provisional patent in the second quarter of 2015 based on and encompassing the Thottathil Prodrug Technology without the knowledge or agreement of Thottathil, without naming Dr. Thottathil as the inventor.

As detailed in the complaint, Thottathil’s Prodrug Technology delays the immediate euphoria that drug abusers seek and is therefore a valuable technology to deter abuse. Further, his Prodrug Technology protects against accidental and intentional overdose, misuse and abuse through crushing and intranasal snorting, non-prescribed methods of use (e.g., intravenous), and "dose–dumping" (e.g., mixing with alcoholic beverages).

Thottathil and the defendants entered into an agreement on September 9, 2014, that envisioned (1) the securing of funding by the defendants to develop new Oxymorphone drug technologies based on Thottathil’s new prodrug platform; (2) Thottathil receiving royalties and profits for the project; and (3) joint ownership by the parties of the patents and intellectual property generated by the partnership. However, there is no agreement between Dr. Thottathil and Waterville and Peltier relating to the use of the Thottathil inventions, ideas, or confidential information other than for Oxymorphone.

Subsequently, under Dr. Thottathil’s leadership and direction several oxymorphone drug candidates based on the Thottathil Prodrug Technology were developed. Then, Thottathil contends, in February 2015 while Dr. Thottathil was out of the country, upon information and belief, Waterville and Peltier secretly initiated a second project based on Dr. Thottathil’s Prodrug Technology targeting the opioid known as oxycodone. Starting in November 2015, Thottathil has been totally excluded and cut-off by the defendants from information regarding the research, development and manufacturing of the products that are based on Thottathil’s Prodrug Technology.

The complaint includes a claim to correct the inventorship of one or more patent applications filed by the defendants’ that are based on Thottathil’s Prodrug Technology. It also includes claims for breach of contract, fraud, and a claim for violation of the Illinois Trade Secret Act, alleging that the defendants misappropriated Thottathil’s trade secrets to pursue the commercialization of the Thottathil Prodrug Technology without his consent. Thottathil requests injunctive relief, rescission, and damages.

The complaint in Thottathil v. Waterville Valley Technologies, Inc., Case No. 1:16-cv-06826, was filed June 29, 2016.

Attorneys: Karl W. Roth (Roth Law Group LLC) for Dr. John K. Thottathil.

Companies: Waterville Valley Technologies, Inc.

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