DCT

1:25-cv-03141

Fitch Even Tabin Flannery LLP v. Dorsey

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-03141, N.D. Ill., 03/25/2025
  • Venue Allegations: Venue is alleged to be proper as the individual defendants reside in the district and a substantial part of the events giving rise to the claim occurred there.
  • Core Dispute: Plaintiff, a law firm, seeks a declaratory judgment from a federal court that Defendant Dorsey, the CEO of its former client, is not an inventor of U.S. Patent No. 11,622,705, an issue that is central to a state-law malpractice claim Defendants have filed against the firm.
  • Technical Context: The patent relates to medical devices for continuous in-utero monitoring of fetal physiological parameters, such as pH and blood oxygen, to detect conditions like fetal acidosis during labor.
  • Key Procedural History: This action follows a state-court malpractice lawsuit filed by Defendant Prenatal-Hope, Inc. against Plaintiff Fitch Even. The malpractice suit alleges that Fitch Even was negligent for failing to name Defendant Dorsey as an inventor on the patent application that matured into the patent-in-suit. This federal action seeks to resolve the inventorship question, which a state court lacks jurisdiction to correct, in an apparent effort to defeat the basis of the state-law claim.

Case Timeline

Date Event
2019-10-16 Priority date of '705 Patent (Provisional App. '094 filed)
2020-10-16 International Application ('050) filed, claiming priority to '094
2022-10-12 First malpractice action filed by PNH against Fitch Even
2023-04-11 '705 Patent issues
2023-05-05 First malpractice action dismissed as premature
2024-05-24 Second malpractice action filed by PNH against Fitch Even
2025-03-25 Complaint for Declaratory Judgment of Non-Inventorship filed

II. Technology and Patent(s)-in-Suit Analysis

  • Patent Identification: U.S. Patent No. 11,622,705, "APPARATUS AND METHOD FOR DETERMINING PHYSIOLOGICAL PARAMETERS OF AN INFANT IN-UTERO," issued April 11, 2023.

The Invention Explained

  • Problem Addressed: The patent addresses the shortcomings of prior fetal monitoring techniques, which were often invasive, prone to error, or provided discontinuous data (Compl. ¶20; ’705 Patent, col. 1:22-54). Specifically, reliance on fetal heart rate monitoring alone was identified as having a high error rate for diagnosing conditions requiring Cesarean procedures, and prior pH sensors were fragile or became contaminated easily (’705 Patent, col. 1:39-54).
  • The Patented Solution: The invention is a monitoring system comprising a fetal sensor unit that attaches directly to the fetus (e.g., via a helical wire embedded in the scalp) and a separate reference unit that engages an external surface of the mother's skin (’705 Patent, Abstract; Fig. 1A). The fetal sensor measures physiological parameters like pH, while the external reference unit provides comparative reference signals, allowing for more accurate, continuous, and reliable monitoring during labor without requiring repeated invasive procedures (’705 Patent, col. 1:61-col. 2:2).
  • Technical Importance: The technology aims to provide clinicians with reliable, real-time metabolic data from the fetus, moving beyond simple heart-rate interpretation to more directly assess fetal distress and potentially reduce the rate of unnecessary C-sections (’705 Patent, col. 1:41-46).

Key Claims at a Glance

  • The complaint does not specify which claims are the focus of the inventorship dispute, but refers generally to the "subject matter claimed in" the patent (Compl. ¶1). Independent claim 1 is representative.
  • Independent Claim 1 of the ’705 Patent recites:
    • An apparatus for monitoring a physiological condition of a fetus in utero, comprising:
    • a body with an attachment portion configured to be inserted into the skin of the fetus;
    • an ion-sensitive field-effect transistor (ISFET) sensor mounted to the attachment portion that is inserted into the skin; and
    • a reference sensor, positioned externally from the body, configured to engage an outer surface of the skin of the fetus to generate reference data.
  • The complaint does not reserve the right to address dependent claims, as the dispute concerns inventorship of the patent as a whole.

III. The Disputed Claim of Inventorship

  • Subject of Dispute: The central dispute is not over an infringing product but over Defendant Tammy E. Dorsey's assertion that she is a rightful inventor of the subject matter claimed in the '705 Patent (Compl. ¶40, ¶60).
  • Functionality and Market Context: Defendant Dorsey is the CEO and Co-Founder of Defendant Prenatal-Hope, Inc. ("PNH"), a medical technology company that claims to develop and commercialize the technology at issue, referred to as the "Halo II" technology (Compl. ¶13, ¶14, ¶20). Her claim to be an inventor forms the legal predicate for a state-court malpractice action filed by PNH against the Plaintiff, Fitch Even, which alleges the law firm committed professional negligence by omitting her as a named inventor on the patent application (Compl. ¶43-44, ¶46-47). The complaint alleges that correcting inventorship is an issue of federal law over which the state court lacks jurisdiction (Compl. ¶63, ¶66).

IV. Analysis of Non-Inventorship Allegations

The complaint does not allege patent infringement. Instead, it seeks a declaratory judgment that Defendant Dorsey is not an inventor. The core allegations focus on the legal requirements for inventorship, specifically conception and corroboration. No probative visual evidence provided in complaint.

Legal Requirement for Inventorship Complaint's Factual Allegation Regarding Defendant Dorsey Complaint Citation
Contribution to Conception Alleges Dorsey "did not conceptualize, reduce to practice, or otherwise invent any of the subject matter" of the patent. ¶34, ¶37, ¶54, ¶59
Originality of Idea Alleges the subject matter was "invented solely by Balman." ¶33, ¶37
Corroboration of Contribution Alleges Dorsey has provided "no evidence to corroborate" her claim of inventorship, despite discovery requests in the related state court action. ¶52, ¶53, ¶55, ¶58
  • Identified Points of Contention:
    • Evidentiary Question: The dispute appears to center on a question of fact: can Defendant Dorsey produce corroborated evidence demonstrating that she contributed to the conception of at least one claim of the '705 Patent? The complaint's primary thrust is that she has failed to do so and cannot (Compl. ¶52, ¶55).
    • Legal Question: Should Dorsey present evidence of a contribution, the court would need to determine if that contribution rises to the level of co-inventorship. This involves assessing whether she contributed to the "definite and permanent idea of the complete and operative invention" for at least one claim, as distinct from merely providing well-known principles or explaining the state of the art.

V. Key Legal Standard for Determination

  • The Term: Inventor
  • Context and Importance: The determination of whether Defendant Dorsey qualifies as an "inventor" under 35 U.S.C. § 100(f) and § 116 is the sole issue presented in the declaratory judgment action. Practitioners may focus on this determination because its resolution is alleged to be dispositive of the pending state-law malpractice claims against the Plaintiff law firm (Compl. ¶65).
  • Intrinsic Evidence for Interpretation: The analysis turns not on the patent's text but on the application of patent law principles to the facts alleged in the complaint.
    • Evidence for a Finding of Non-Inventorship (from Complaint): The complaint alleges that Defendant James R. Balman was the sole inventor and filed the underlying provisional application independently (Compl. ¶22, ¶33). It affirmatively states that Dorsey "did not conceptualize, reduce to practice, or otherwise take actions that would qualify her" as an inventor (Compl. ¶34). The most emphasized point is the alleged complete lack of corroborating evidence for her claim (Compl. ¶52, ¶58).
    • Evidence for a Finding of Inventorship (from Complaint): The complaint, by its nature, does not present evidence supporting Dorsey's inventorship claim. It only acknowledges her assertion that she "had instructed Fitch Even to name her as an inventor" (Compl. ¶40). Evidence supporting her claim would need to be introduced by the Defendants.

VI. Related State Court Litigation

  • Malpractice Action: The complaint alleges that this federal action is a direct result of a state-court lawsuit, Prenatal Hope, Inc. v. Fitch, Even, Tabin & Flannery LLP, Case No. 2024-L-005767, pending in Cook County, Illinois (Compl. ¶46).
  • Basis of State Claim: The state action is predicated on claims of professional negligence and breach of fiduciary duty, arising from Fitch Even's alleged failure to name Defendant Dorsey as an inventor on the international application ('050 application) that matured into the '705 Patent (Compl. ¶46-47).
  • Jurisdictional Issue: The complaint asserts that because state courts lack the authority to order the correction of inventorship on a U.S. patent, this federal declaratory judgment action is necessary and proper to resolve the central underlying issue (Compl. ¶61, ¶63, ¶66).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central evidentiary question will be one of corroboration: can Defendant Dorsey produce sufficient, corroborated evidence to demonstrate she contributed to the conception of at least one claim of the '705 Patent, a burden the complaint alleges she has already failed to meet in a related state court proceeding?
  • A key procedural question will be one of jurisdiction and standing: is a federal declaratory judgment action for non-inventorship, brought by a law firm against its former client's CEO, a proper vehicle to resolve a predicate element of a pending state-law malpractice claim, particularly where the firm itself has an interest in the outcome?