Warren v. The Children's Hospital Corporation

UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

LUIGI WARREN,

Plaintiff,

v. No. 17-CV-12472-DLC

The CHILDREN’S HOSPITAL

CORPORATION,

Defendant.

MEMORANDUM AND ORDER ON DEFENDANT’S MOTION FOR SUMMARY JUDGMENT

(DKT NO. 51) AND PLAINTIFF’S MOTION TO AMEND (DKT NO. 72)

Cabell, U.S.M.J.

Plaintiff Dr. Luigi Warren sued defendant Children’s Hospital

Corporation (Children’s) for reportedly failing to honor the terms

of a revenue and equity policy regarding an invention of Dr.

Warren’s that is included in a patent Children’s owns. Children’s

demurred and moved for summary judgment. (Dkt. No. 51). Following

a hearing, the court denied Children’s motion, and Dr. Warren

subsequently moved to amend the complaint, which Children’s has

opposed. (Dkt. Nos. 70, 72, 87). For the reasons explained below,

the court vacates its prior order denying Children’s motion for

summary judgment, and now allows the motion. The court also denies

Dr. Warren’s motion to amend.

I. Factual Background

The facts are taken from the Defendant’s Statement of

Undisputed Material Facts (Dkt. No. 55), the Defendant’s

Memorandum of Law in Support (Dkt. No. 52), the Plaintiff’s

Statement of Material Facts (Dkt. No. 58), the Plaintiff’s

Memorandum in Opposition to Defendant’s Motion for Summary

Judgment (Dkt. No. 57), and the exhibits attached to these filings.

The facts are undisputed unless otherwise noted. As always on a

motion for summary judgment, the court views the facts in the light

most favorable to Dr. Warren as the non-moving party and draws all

reasonable inferences in his favor. Carlson v. Univ. of New

England, 899 F.3d 36, 43 (1st Cir. 2018).

A. Dr. Warren’s Work at the IDI

In November 2007, Dr. Warren began working at the Immune

Disease Institute (IDI) in an at-will capacity as a postdoctoral

researcher. (Dkt. No. 55, ¶ 3). While there, he co-invented, along

with Principal Investigator Dr. Derrick Rossi, a breakthrough

technique for “reprogramming” cells to induce them to become

pluripotent stem cells (the Invention). (Dkt. No. 52, pp. 3-4).

The parties quickly recognized the Invention’s great medical and

commercial potential.

Throughout the early part of 2010, Dr. Warren and Dr. Rossi

worked with other IDI personnel to begin the process of securing

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patents for the Invention. (Dkt. No. 57, p. 3). In April 2010,

IDI filed for a provisional patent with the United States Patent

and Trademark Office. (Id.) Dr. Warren left his position at IDI

shortly thereafter, in June of 2010. (Dkt. No. 55, ¶ 5). On

December 21, 2010, approximately six months after Dr. Warren left

IDI, IDI exclusively licensed the Invention to Moderna

Therapeutics, Inc. (Dkt. No. 55, ¶ 39).1

B. IDI’s Affiliation with Boston Children’s Hospital

During the patent and licensing process, IDI itself was in a

state of change. In or around 2008, IDI and Children’s began

exploring the possibility of a merger, executing an Affiliation

Agreement on December 24, 2008. (Id. at ¶ 28). Under that

agreement, any IDI intellectual property not licensed before the

affiliation was consummated (the “Effective Date”) became subject

to Children’s policies as of the Effective Date, including

Children’s revenue and equity policies. (Id. at ¶¶ 29, 31). The

parties agree that the Effective Date was February 20, 2009. (Id.

at ¶ 31; Dkt. No. 57, p. 2). In September 2012, IDI dissolved and

formally merged into Children’s. (Dkt. No. 55, ¶ 38).

1 At the time, Moderna was a newly founded start-up. Today, of course, Moderna

is best known for its COVID-19 vaccine. See About Us, MODERNA THERAPEUTICS,

https://www.modernatx.com/about-us/our-story (last visited Jan. 11, 2023).

3

C. The Two Invention Revenue and Equity Policies

The were some differences between IDI’s and Children’s

respective revenue policies. The IDI policy in effect when Dr.

Warren was hired, known formally as the IDI Research and Technology

Development Policy (IDI policy), provided among other things that

all technology was “owned by IDI,” (Dkt. No. 55-3, § E(1)(a)), and

employee-inventors would “provide technical information,

documentation, and all other assistance deemed necessary by IDI,

including an assignment of the Inventor’s rights in the Technology

to IDI.” (Id. at § F). In exchange, IDI would give one-third of

its technology-derived licensing revenue to the inventors. (Dkt.

No. 55-3, § H(4)).2 Further, if IDI accepted equity from a company

in exchange for licensing rights, the inventor’s share of the

equity would be deemed a “royalty” and “distributed to the

Inventors at the earliest opportunity.” (Id. at § I(3)). The IDI

policy also provided that IDI’s trustees “retain the discretion to

amend [the policy] from time to time.” (Id. at § A). The policy

required each “Covered Person,” including employees like Dr.

Warren, to “sign a Participation Agreement in which the Covered

2 Where, as here, an invention had multiple inventors, the policy provided that

the one-third inventor share would be divided into equal shares for each

inventor absent a contrary agreement among the inventors. (Dkt. No. 55-3, §

H(5)). Accordingly, under the IDI policy, Dr. Warren would be entitled to 16

2/3 percent of the net proceeds from the Moderna license.

4

Person agrees to comply with this Policy.” (Id. at § C). The

record is unclear as to whether Dr. Warren ever signed a

Participation Agreement. (Dkt. No. 57, p. 16; Dkt. No. 59, p. 5).

In contrast, the Children’s Hospital Policy on Inventions and

Intellectual Property (Children’s policy) contained materially

different and slightly more complicated terms regarding revenue

payments and equity sharing with employee-inventors. The

Children’s policy sets out different payment terms for inventors

still employed by Children’s and those who had left Children’s.

(Dkt. No. 55-9, p. 3). In the latter case, the inventor’s share

of license proceeds is 35 percent “up to” $500,000, then 25 percent

“above” $500,000. (Id.). Like the IDI policy, the Children’s

policy equally divided this share among all co-inventors. (Id.).

The parties do not dispute that Dr. Warren would receive a lesser

share under the Children’s policy than he would under the IDI

policy. The Children’s policy resembles the IDI policy regarding

ultimate ownership of inventions and duties of employee-inventors:

Every invention based on the Hospital’s intellectual

property . . . shall be the property of the Hospital .

. . . When the Hospital determines to seek the patenting

. . . of any invention . . . the inventor shall cooperate

fully in such effort, including execution of all

necessary or desirable agreements, applications,

assignments, and other forms and instruments.

(Id. at p. 2).

5

D. The Invention Assignments

In August 2010, after having left IDI, Dr. Warren voluntarily

executed an assignment of his “entire right, title, and interest”

in the Invention to IDI. (Dkt. No. 57-4). In February 2011, Ryan

Dietz (“Dietz”), a manager at IDI’s technology transfer office,

sent Dr. Warren an email asking him to assign his rights a second

time. (Dkt. No. 55-4, pp. 10-11). The subsequent assignment is

variously described in the record as a “follow-up assignment[],”

(Dkt. No. 55-1, 68:11-12), an “additional assignment of the same

invention,” (Dkt. No. 55, ¶ 46), and an “assignment pertain[ing]

to a second provisional application.” (Dkt. No. 55-4, p. 10).

Reluctant to execute any further assignments, Dr. Warren

requested a copy of the document purporting to require his

execution of the assignment. (Dkt. No. 55, ¶ 47). In response,

Dietz sent Dr. Warren the following excerpt from the IDI policy:

Ownership of Inventions. Each Invention shall be the

sole and exclusive property of IDI. I agree to execute

an assignment to IDI or its nominee of my entire right,

title, and interest in and to all Inventions (to which

IDI has ownership rights pursuant to the “Research and

Technology Development Policy”) without additional

compensation. I further agree, upon request of IDI and

at its expense, to execute such documents as may be

necessary or desirable in applying for and obtaining

patents on the Inventions in the United States and any

foreign country. I further agree, whether or not I am

employed by IDI, to cooperate to the extent and in the

manner reasonably requested by IDI in the prosecution or

defense of any claim involving a patent covering any

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Invention or any litigation or other claim or proceeding

involving any Invention . . . .

(Dkt. No. 55-4, p. 7). Dr. Warren also asked for the relevant

policy regarding revenue sharing and licensing royalties. (Id.).

Dietz again replied with the IDI policy’s revenue-sharing

schedule. (Id. at p. 6).

After receiving this information, Dr. Warren declined to

execute the subsequent assignment. (Dkt. No. 55, ¶ 52).

Subsequently, Dianne McCarthy, Children’s General Counsel, sent

Dr. Warren an email with the full IDI policy attached, reiterating

that Dr. Warren was obligated to execute the assignment. (Id.).

Dr. Warren also received an email from Children’s outside counsel

threatening a lawsuit if Dr. Warren persisted in his refusal.

(Dkt. No. 55-7). The email indicated that Dr. Warren’s “refusal

to execute the assignment [was] in direct contravention of [his]

obligations under IDI’s Research and Technology Development

Policy.” (Id. at p. 2). Attached to the email was a draft

complaint against Dr. Warren, replete with references to the IDI

policy and asserting a breach of contract claim against Dr. Warren

for violating said policy. (Id. at pp. 3, 5-6, 9). Shortly after

receiving this email, Dr. Warren executed two additional

assignments.3 (Dkt. No. 57-4, pp. 4-7).

3 The record is unclear why Dr. Warren executed two assignments instead of one.

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Six years later, in August 2017, when rumors of an initial

public offering for Moderna were circulating, Dr. Warren called

Dietz (now officially working for Children’s) to inquire about the

Moderna licensing agreement. (Dkt. No. 57, p. 6). Dietz informed

Dr. Warren that the references to the IDI policy back in 2011 were

in error and that Dr. Warren’s invention was subject to Children’s

policies on revenue and equity. (Id. at 7). Dietz offered Dr.

Warren the opportunity to sign onto a superior “ad hoc” revenue

policy that his co-inventor Dr. Rossi had negotiated with

Children’s, which Dr. Warren declined.4 (Dkt. No. 55, ¶¶ 57-61;

Dkt. No. 57, p. 7). Dr. Warren instead filed this suit, seeking

inter alia a declaratory judgment that Children’s is bound by the

IDI policy, and injunctive relief ordering Children’s to

distribute payments to him according to the IDI policy. (Dkt. No.

1).

II. Discussion

Broadly speaking, the parties appear to agree in their filings

that Dr. Warren’s complaint includes two claims: one for breach of

contract and one for promissory estoppel.5 The court also

4 Under the ad hoc policy, the inventors’ share of all net revenues would be

27.5 percent. (Dkt. No. 55, ¶ 60).

5 While Dr. Warren asserts that he suffered multiple injuries due to Children’s

failure to abide by the IDI policy, and seeks multiple forms of relief, each of

these assertions is predicated on the idea that Dr. Warren is entitled to

payment as set out in the IDI policy, either because the IDI policy is a valid

8

considers, but ultimately rejects, a possible negligent

misrepresentation claim.

A. Summary Judgment Standard

Summary judgment is appropriate “if the movant shows that

there is no genuine dispute as to any material fact and the movant

is entitled to a judgment as a matter of law.” Fed. R. Civ. P.

56(a). The moving party bears the initial burden of “assert[ing]

the absence of a genuine issue of material fact and then

support[ing] that assertion by affidavits, admissions, or other

materials of evidentiary quality.” Mulvihill v. Top-Flite Golf

Co., 335 F.3d 15, 19 (1st Cir. 2003). Once the moving party meets

that burden, the opposing party must “show that a factual dispute

does exist.” Fontanez-Nunez v. Janssen Ortho LLC, 447 F.3d 50,

54-55 (1st Cir. 2006) (internal quotation omitted). “Such a

showing ‘requires more than the frenzied brandishing of a cardboard

sword.’” Geshke v. Crocs, Inc., 740 F.3d 74, 77 (1st Cir. 2014)

(quoting Calvi v. Knox Cty., 470 F.3d 422, 426 (1st Cir. 2006)).

“The nonmovant must point to materials of evidentiary quality,

. . . and such materials must frame an issue of fact that is more

than merely colorable.” Irobe v. U.S. Dep’t of Agriculture, 890

F.3d 371, 377 (1st Cir. 2018) (internal quotations and omitted).

contract or because of Children’s representations surrounding the second

assignment.

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When determining whether summary judgment is appropriate,

“[t]he court must view the record in the light most favorable to

the non-moving party and draw all reasonable inferences in [his]

favor.” Carlson, 899 F.3d at 43. “‘Where the record taken as a

whole could not lead a rational trier of fact to find for the

nonmoving party, there is no genuine issue for trial.’” Scott v.

Harris, 550 U.S. 372, 380 (2007) (quoting Matsushita Elec. Indus.

Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986)) (further

internal quotation marks omitted).

B. Breach of Contract

Dr. Warren claims that the IDI policy constitutes an implied

contract which Children’s breached by failing to honor the IDI

terms on profits and equity sharing. Children’s contends that the

IDI policy is not a contract because IDI could amend it at will,

and that, in any event, under the Affiliation Agreement, the

Children’s policy replaced the IDI policy for intellectual

property not licensed by February 20, 2009. Since the Invention

was not licensed until December 2010, the Children’s policy applies

to Dr. Warren, not the IDI policy.

To establish a breach of contract under Massachusetts law, “a

plaintiff must demonstrate that there was an agreement between the

parties; the agreement was supported by consideration; the

plaintiff was ready, willing, and able to perform his or her part

10

of the contract; the defendant committed a breach of the contract;

and the plaintiff suffered harm as a result.” Bulwer v. Mount

Auburn Hosp., 473 Mass. 672, 690 (2016) (citing Singarella v. City

of Boston, 342 Mass. 385, 387 (1961)). As the party seeking to

enforce the alleged contract, the plaintiff bears the burden of

proving a contract existed. Kauders v. Uber Techs, Inc., 486 Mass.

557, 572 (2021); see Canney v. New England Tel. & Tel. Co., 353

Mass. 158, 164 (1967) (“Where the existence of a contract is in

issue, the burden is on the plaintiff to show it was made.”).

Massachusetts law provides that personnel manuals and other

employer policies may form the basis of a contract between an

employer and an employee. O’Brien v. New England Tel. & Tel. Co.,

422 Mass. 686, 691 (1996) (citing Jackson v. Action for Boston

Cmty. Dev., Inc., 403 Mass. 8, 13 (1988)); see Weber v. Cmty.

Teamwork, Inc., 434 Mass. 761, 780 (2001) (“Where an employee signs

a personnel policy, negotiates specific terms as a condition of

beginning or continuing employment, or where an employer calls

special attention to the policy, a finding that the terms of the

policy form the basis of an implied contract may be justified.”).

There is no “rigid list of prerequisites” for determining if

an employment policy is an enforceable contract, but there are

several factors that inform the analysis. O’Brien, 422 Mass. at

692. Some factors, when present, suggest the existence of a

11

contract. These include negotiation between the employee and the

employer about the policy’s terms, the employer calling “special

attention” to the policy, and the employee manifesting assent to

the policy. Pearson v. John Hancock Mut. Life Ins. Co., 979 F.2d

254, 256 (1st Cir. 1992) (citing Jackson, 403 Mass. at 14-15).

Factors pointing in the opposite direction include the employer

reserving the right to unilaterally modify the policy and a

characterization that the policy is meant to provide “guidance”

rather than commit the employer to certain conduct. Id. The

overarching questions are whether the employee believed that the

policy “constituted the terms or conditions of employment, equally

binding on employee and employer” and whether such belief was

“reasonable under the circumstances.” Derrig v. Wal-Mart Stores,

Inc., 942 F. Supp. 49, 55 (D. Mass. 1996) (describing O’Brien, 422

Mass. at 694).

In this case, the parties do not dispute that Dr. Warren

earnestly believed that the IDI policy was binding. His pursuit

of a breach of contract claim throughout this litigation makes

that clear. Whether his belief was reasonable is a more difficult

question, with factors supporting both sides. The IDI policy

states explicitly that it “is intended to serve as a guide for

members of the IDI community” and that IDI “retain[s] the

discretion to amend [the] Policy from time to time,” suggesting

12

that the policy was not binding. (Dkt. No. 55-3, Preamble and §

A) (emphasis added). At the same time, IDI both called special

attention to the policy’s terms and induced its employees to

manifest assent insofar as it required all covered employees to

“sign a Participation Agreement in which the [employee] agrees to

comply with this Policy.” (Id. at § C). Ultimately, the court

need not decide this issue, as Dr. Warren’s breach of contract

claim suffers from a separate fatal flaw.

Even assuming arguendo the IDI policy was a contract, it was

not immutable. Rather, IDI specifically reserved the right to

amend the policy at its discretion. (Id. at § A). It did just

that by entering into the Affiliation Agreement, which provided

that any IDI inventions not licensed by the Effective Date would

be subject to Children’s revenue policy as of that date. (Dkt.

No. 55, ¶¶ 29, 31). The parties agree that the Effective Date was

February 20, 2009. (Id. at ¶ 31; Dkt. No. 57, p. 2). IDI did not

license the Invention until December 21, 2010. (Dkt. No. 55, ¶

39). As such, the Invention was unlicensed as of February 20,

2009, which meant that it became subject to the Children’s policy

on that date. By the time IDI licensed the Invention to Moderna,

it was the Children’s policy that controlled the revenue-sharing

terms, not the IDI policy. As a matter of law, then, Children’s

did not breach the IDI policy by failing to distribute revenue

13

according to its terms because the IDI policy was no longer the

controlling agreement between the parties.

Dr. Warren tries mightily to escape this conclusion. First,

he points to the fact that, in February 2011, two senior IDI

officials and IDI’s outside counsel all pointed him to (and

threatened him with) the IDI policy, not the Children’s policy.

Second, Dr. Warren denies, without any supporting authority, that

IDI had the right to unilaterally alter its policy “to abrogate

specific promises made to employees.” (Dkt. No. 57, p. 15).

Finally, Dr. Warren argues that the Children’s policy, by its

express terms, only applied to Children’s employees, not IDI

employees. Each of these contentions misses the mark.

Regarding IDI’s mistaken reference to the IDI policy in

seeking to obtain the plaintiff’s signature, lawyers, despite all

jokes to the contrary, are human, and sometimes make mistakes.

Here, two senior lawyers and an IDI manager all mistakenly informed

Dr. Warren that the IDI policy controlled his revenue share in

2011. That mistake was regrettable but it does not in any way

alter or abrogate the fact that the Children’s policy superseded

the IDI policy in February 2009. Regardless of whether their

misrepresentations are otherwise legally significant (as discussed

below), they do not control when or whether the IDI policy remained

effective.

14

As to Dr. Warren’s second point, he offers no authority to

suggest that IDI did not have the right to unilaterally amend the

IDI policy despite its explicit reservation of such right, and the

court is aware of no such authority.

Finally, Dr. Warren cites to this provision from the

Children’s policy for the proposition that the policy does not

apply to him:

This policy provides that Children’s Hospital pays

royalties only to its own inventors. However, when a

Children’s Hospital inventor makes an invention with a

co-inventor in another academic or non-profit

institution, and the institutions agree to market the

invention jointly, the Director of Research

Administration may authorize an agreement whereby each

institution pays all inventors according to the terms of

its own intellectual property policy.

(Dkt. No. 55-9, p. 3). Dr. Warren reads this provision to say

that because he was never an employee of Children’s, the Children’s

policy commands that he be paid in accordance with his own

institution’s policy, namely IDI’s. But Dr. Warren fails to

explain how this provision, which explicitly applies to situations

“when a Children’s Hospital inventor makes an invention with a co-

inventor in another . . . institution,” applies here. More

significantly, Dr. Warren’s contention flies in the face of basic

principles of contract interpretation. It is a “cardinal principle

of contract construction[] that a document should be read to give

effect to all its provisions and to render them consistent with

15

each other.” Mastrobuono v. Shearson Lehman Hutton, Inc., 514

U.S. 52, 63 (1995); see also Restatement (Second) of Contracts §

202(5) (Am. Law Inst. 1981) (“Wherever reasonable, the

manifestations of intention of the parties to a promise of

agreement are interpreted as consistent with each other.”).

Likewise, “if the principal purpose of the parties is ascertainable

it is given great weight.” Restatement (Second) of Contracts §

202(1).

The Affiliation Agreement provided that, as of the Effective

Date, all unlicensed IDI inventions would become subject to the

Children’s policy. Under Dr. Warren’s reading, applying the

Children’s policy to IDI inventions (and inventors) would just

point right back to the IDI policy, making the entire provision

completely frivolous. This clearly was not the parties’ intention.

Further, maintaining a separate IDI revenue-sharing policy would

be contrary to the entire purpose of the Affiliation Agreement,

which was to bring IDI and Children’s closer together in

preparation for a later merger. In short, IDI and Children’s can

have only intended exactly what they said in the Affiliation

Agreement: the Children’s policy would apply to IDI inventions and

inventors. The court thus rejects Dr. Warren’s contrary

interpretation.

16

For the foregoing reasons, the court finds that, as a matter

of law, the former unlicensed intellectual property of IDI,

including the Invention, became subject to the Children’s policy

on February 20, 2009 by the terms of the Affiliation Agreement.

As such, there can be no breach based on the IDI policy.

C. Promissory Estoppel

Although the IDI policy no longer applied to the Invention as

of February 2009, that does not necessarily end this dispute. When

Dr. Warren asked IDI about equity in February 2011, three different

individuals referred Dr. Warren to the IDI policy rather than the

applicable Children’s policy. These misrepresentations, which the

defendant acknowledges, justify an inquiry into whether Dr. Warren

is entitled to compensation in line with the IDI policy under a

theory of promissory estoppel.

Through promissory estoppel, alternatively called a reliance-

based theory in Massachusetts law, a noncontractual promise can be

enforceable in whole or in part by virtue of an offeree’s

reasonable reliance on it. Loranger Constr. Corp. v. E.F.

Hauserman, Co., 376 Mass. 757, 760-61 (1978). The promise is then

in every way a “contract” and enforceable pursuant to “traditional

contract theory.” Treadwell v. John Hancock Mut. Life Ins. Co.,

666 F. Supp. 278, 286 (D. Mass. 1987) (citing Loranger Constr.

Corp., 376 Mass. at 761). In other words, “[i]n the absence of a

17

contract in fact, promissory estoppel implies a contract in law

where there is proof of an unambiguous promise coupled with

detrimental reliance by the promisee.” Malden Police Patrolman’s

Ass’n v. City of Malden, 92 Mass. App. Ct. 53, 60 (2017) (citing

R.I. Hosp. Tr. Nat’l Bank v. Varadian, 419 Mass. 841, 848 (1995)).

A promissory estoppel claim can only succeed in the absence of an

enforceable contract. Id. at 61.

A party seeking to assert promissory estoppel must

demonstrate that “(1) a promisor makes a promise which he should

reasonably expect to induce action or forbearance of a definite

and substantial character on the part of the promisee, (2) the

promise does induce such action or forbearance, and (3) injustice

can be avoided only by enforcement of the promise.” Loranger

Constr. Corp. v. E.F. Hauserman Co., 6 Mass. App. Ct. 152, 154

(1978), aff’d, 376 Mass. 757 (1978). Additionally, the promisee’s

reliance on the promise must be reasonable. See R.I. Hosp. Tr.

Nat’l Bank, 419 Mass. at 850.

In considering Dr. Warren’s breach of contract claim, the

court assumed without deciding that the IDI policy (later displaced

by the Children’s policy) was an enforceable contract. The court

will now give Dr. Warren the benefit of the opposite assumption in

considering promissory estoppel. Even so, any promissory estoppel

18

claim fails because Dr. Warren cannot prove that IDI’s

misrepresentations induced him to act.

A well-settled rule in the field of contracts is that

“performance of a pre-existing legal duty that is neither doubtful

nor subject to honest and reasonable dispute is not valid

consideration where the duty is owed to the promisor.” In re

Lloyd, Carr & Co., 617 F.2d 882, 890 (1st Cir. 1980); accord

Restatement (Second) of Contracts § 73; see also Johnny’s Oil Co.

v. Eldayha, 82 Mass. App. Ct. 705, 714 (2012) (“Detrimental

reliance on an offer or a promise . . . is a substitute for

consideration.”). “The policy underlying this rule is to

discourage parties under such a duty from using the threat of

nonperformance to extort greater compensation for doing only that

which they were already obligated to do.” In re Lloyd, Carr &

Co., 617 F.2d at 890. It stands to reason that a promise cannot

induce a promisee to act if the promisee already has a clear legal

duty to act.

In this case, Dr. Warren had a preexisting legal duty to

assign his rights in the Invention to IDI. The “general rule [is]

that rights in an invention belong to the inventor.” Bd. of Trs.

of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563

U.S. 776, 785 (2011) (citations omitted). When, however, an

individual is “employed to make an invention, . . . [he] is bound

19

to assign to his employer any patent obtained.” United States v.

Dubilier Condenser Corp., 289 U.S. 178, 187 (1933); accord Standard

Parts Co. v. Peck, 264 U.S. 52, 59-60 (1924); Nat’l Dev. Co. v.

Gray, 316 Mass. 240, 247 (1944); see Banks v. Unisys Corp., 228

F.3d 1357 (Fed. Cir. 2000) (“[W]here an employee is hired to invent

something or solve a particular problem, the property of the

invention related to this effort may belong to the employer.”).

IDI hired Dr. Warren to work as a postdoctoral research fellow in

the Rossi Lab. Dr. Warren developed the Invention in an IDI lab,

while being paid by IDI, doing exactly the type of work for which

IDI hired him. Per the precedent cited above, these circumstances

strongly suggest that Dr. Warren had a common-law duty to assign

the Invention to IDI.

And there is more. Not content to rely on the common law,

IDI adopted its own policy on the subject. No one disputes that

this policy was in force when Dr. Warren joined IDI in 2007. This

policy explicitly required Dr. Warren, as an “Inventor,” to among

other things assign his rights in the Invention to IDI.6 (Dkt.

No. 55-3, § F). Under Massachusetts law, such policies are

generally valid and binding upon employees, even if the employees

6 Drs. Warren and Rossi did not formally disclose their invention to IDI until

May 2010, by which time the Children’s policy had supplanted the IDI policy.

Because the Children’s policy imposes substantially identical obligations on

inventors, see (Dkt. No. 55-9, p. 2), the result is the same regardless of which

policy applies.

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are not specifically aware of them. See Greene v. Ablon, Civil

Action No. 09-10937-DJC, 2012 WL 4104792, at *14-*15 (D. Mass.

Sept. 17, 2012); Grocela v. Gen. Hosp. Corp., Civil Action No. 11-

991-BLS1, 2012 WL 3205616, at *4-*5 (Mass. Super. Ct. July 18,

2012). As such, separate and apart from the common law, Dr. Warren

had a legal duty to assign the Invention to IDI pursuant to the

IDI policy.7 This remained true even after he left IDI. See E.I.

Du Pont de Nemours & Co. v. Okuley, 344 F.3d 578, 585 (6th Cir.

2003) (obligation to assign invention to employer survives “until

fulfilled,” even after employee’s resignation).

In light of the foregoing, the court finds that Dr. Warren

had a preexisting legal duty to assign the Invention to IDI when

Dietz and others mistakenly referred him to the IDI policy. As

such, Dr. Warren was not thereby legally induced to execute the

subsequent assignments, and there can accordingly be no promissory

estoppel.

D. Negligent Misrepresentation

In its previous order denying the motion for summary judgment

(Dkt. No. 70), the court contemplated (without so specifying) that

this case could survive summary judgment to the extent that the

7 Children’s separately argues that Dr. Warren incurred a legal duty to execute

the subsequent assignments by executing the first assignment. The court

acknowledges but does not reach this argument.

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complaint sets forth a claim for negligent misrepresentation based

on the misrepresentations IDI officials made to Dr. Warren in 2011.

On further reflection, though, the court now finds that any such

claim fails for substantially the same reasons discussed above.

In order to recover for negligent misrepresentation, the

plaintiff must prove that the defendant: (1) in the course of his

or her business, (2) supplied false information for the guidance

of others, (3) in their business transactions, (4) causing and

resulting in pecuniary loss to those others (5) by their

justifiable reliance upon the information, and that the defendant

(6) failed to exercise reasonable care or competence in obtaining

or communicating the information. DeLuca v. Jordan, 57 Mass. App.

Ct. 126, 136-37 (2003) (quoting Restatement (Second) of Torts §

552(1) (Am. Law Inst. 1977)).

Here, Dr. Warren cannot prove that he suffered any pecuniary

loss or that he justifiably relied on the misrepresentations. Dr.

Warren’s theories of loss in this case are based on Children’s

compensating him less generously than the IDI policy provides, but

the IDI policy no longer applies. In fact, Children’s has

heretofore provided Dr. Warren more generous compensation than

what is set out in the controlling Children’s policy. Similarly,

Dr. Warren cannot have relied on the misrepresentations as a matter

of law since he already had a legal duty to assign the Invention

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to IDI. These deficiencies are fatal to any negligent

misrepresentation claim.

E. Motion to Amend

Where, as here, a defendant has filed a responsive pleading

or a motion for summary judgment, “a party may amend its pleading

only with the opposing party’s written consent or the court’s

leave.” Fed. R. Civ. P. 15(a)(2). “The court should freely give

leave when justice so requires.” Id. The decision to grant or

deny such a motion is within the discretion of the district court.

See Steir v. Girl Scouts of the USA, 383 F.3d 7, 14 (1st Cir.

2004). The court will deny a motion to amend a complaint where

the proposed amendment would be futile, “mean[ing] that the

complaint, as amended, would fail to state a claim upon which

relief could be granted.” Rife v. One West Bank, F.S.B., 873 F.3d

17, 21 (1st Cir. 2017) (internal quotation omitted); but see

Resolution Tr. Corp. v. Gold, 30 F.3d 251, 253 (1st Cir. 1994)

(where motion to amend is not filed until after defendant moves

for summary judgment, plaintiff is “required to demonstrate . . .

that the proposed amendments [are] supported by substantial and

convincing evidence”) (internal quotation omitted).

Dr. Warren seeks to amend his complaint to add a conversion

claim “based on [his] right to ownership of his share of the

Moderna equity at lock-up expiry under the IDI Policy, the

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defendant’s willful interference with [Dr. Warren’s] taking

possession of stock over [Dr. Warren’s] objection and the economic

harm he suffered as a result.” (Dkt. No. 73, ¶ 14). As set out

in the proposed amended complaint, the new count is specifically

based on Children’s acting contrary to the terms of the IDI policy.

(Dkt. No. 72-1, ¶ 70). As discussed above in detail, however, the

terms of the IDI policy do not govern any revenue or equity

distributions between Children’s and Dr. Warren. As such, the

proposed conversion claim, based as it is on the IDI policy, fails

to state a claim for which relief can be granted, see Rife, 873

F.3d at 21, and it is certainly not “supported by substantial and

convincing evidence.” See Gold, 30 F.3d at 253. The proposed

amendment is therefore futile.

III. Conclusion

For the foregoing reasons, the court VACATES its previous

order denying summary judgment (Dkt. No. 70), ALLOWS Children’s

motion for summary judgment (Dkt. No. 51), and DENIES Dr. Warren’s

motion to amend (Dkt. No. 72).

So Ordered. /s/ Donald L. Cabell

DONALD L. CABELL, U.S.M.J.

DATED: January 20, 2023

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