MMAS Research: Ninth Circuit Ruling Revives Morisky Widget IP Lawsuit

• MMAS Research has filed a new lawsuit against Donald Morisky, alleging fraud and breach of contract related to a 2020 settlement concerning the Morisky Widget.
• A 2024 Ninth Circuit decision determined that the 2020 settlement, intended to transfer ownership of the Morisky Widget to Morisky, was never finalized, preserving MMAS Research's standing to sue for infringement.
• Donald Morisky is also pursuing a separate lawsuit in Seattle, filed five years ago, seeking a ruling that he is the rightful owner of the Morisky Medication Adherence Scale and the Morisky Widget.
• MMAS Research claims Morisky surrendered his 50% ownership interest in the Morisky Widget on June 21, 2019, upon his withdrawal from the company.
• The dispute originated from a 2020 disagreement over a 50-50 licensing revenue split for the widely used Morisky Medication Adherence Scale and its associated digital tool.

This complex and multi-jurisdictional MMAS Research Morisky Widget IP lawsuit underscores the critical importance of ensuring settlement agreements, particularly those involving intellectual property transfers, are fully executed and finalized.

A new complaint filed in the U.S. District Court for the Central District of California has added another chapter to the protracted and contentious MMAS Research Morisky Widget IP lawsuit. MMAS Research has accused Donald Morisky, a professor emeritus of community health sciences at UCLA, of fraud and breach of contract. These allegations stem from a 2020 settlement agreement between the former business partners, which followed Morisky's departure from the company.

The core of the dispute revolves around the ownership and licensing rights of a widely recognized method for assessing patient medication adherence and its accompanying digital tool, known as the Morisky Widget. After leaving MMAS Research, Morisky established a new entity, Morisky Medication Adherence Research (MMAR). In 2021, he announced plans to phase out the Morisky Widget, which had been licensed through MMAS Research, and directed licensees to transition to his new company's digital platform. This move directly challenged MMAS Research's continued claims of ownership and licensing authority over the valuable intellectual property.

Central to MMAS Research's new claims is a pivotal 2024 decision from the Ninth Circuit. This ruling, issued in a copyright lawsuit brought by MMAS Research against a German hospital, determined that the 2020 settlement agreement—which was intended to transfer ownership of the Morisky Widget to Donald Morisky—was never formally finalized. Consequently, the Ninth Circuit affirmed that MMAS Research retained the legal standing to pursue infringement claims related to the tool.

In its recent complaint, MMAS Research explicitly asserts that MMAR possesses no legitimate right, title, or interest in the Morisky Widget that would permit it to license the technology to any party. Furthermore, MMAS Research contends that Morisky relinquished his 50% ownership interest in the Morisky Widget through a written acceptance dated June 21, 2019, as part of his withdrawal from the company, and has held no ownership stake in the intellectual property since that date. This complex and multi-jurisdictional MMAS Research Morisky Widget IP lawsuit underscores the critical importance of ensuring settlement agreements, particularly those involving intellectual property transfers, are fully executed and finalized.

The California lawsuit is not the only legal front in the ongoing Donald Morisky IP litigation. Donald Morisky himself initiated a separate lawsuit five years ago in Seattle, seeking a judicial declaration that he is the rightful owner of both the Morisky Medication Adherence Scale and the Morisky Widget. In that case, MMAS Research is currently facing a motion for default judgment on Morisky's claims. This development follows an April decision by the Seattle judge, who agreed that MMAS Research had defaulted by repeatedly violating court orders and employing delay tactics.

Adding to the intricate legal landscape, a federal judge in Los Angeles earlier this year dismissed another lawsuit filed by MMAS Research against Morisky and certain users of the Morisky IP. The dismissal was predicated on the judge's finding that the claims presented in the Los Angeles case were based on the same underlying issues already being litigated in the ongoing Seattle proceedings, further illustrating the interconnected nature of these disputes.

The origins of the Morisky Widget ownership dispute trace back to Donald Morisky's development of the Morisky Medication Adherence Scale, a methodology widely regarded as a "gold standard" globally for medical practitioners and researchers to predictively assess patient compliance with medication protocols. In 2011, Morisky established MMAS Research LLC with the purpose of licensing these scales, providing training to licensees on proper usage, and verifying the accuracy of results.

Steven Trubow, who currently leads MMAS Research, joined the company a few years after its inception. Trubow assumed responsibility for the licensing operations, with an agreement stipulating a 50-50 split of the resulting revenue with Morisky. The company also developed the Morisky Widget as the exclusive digital tool designed to utilize the Morisky scales. By 2020, however, a disagreement emerged when Morisky believed he was not receiving his agreed-upon 50% share of the licensing revenue. This contention led to his attempt to revoke MMAS Research's authority to license the products, initiating the first lawsuit in Nevada federal court. The subsequent 2020 settlement, which aimed to transfer the intellectual property to Morisky, was ultimately deemed unfinalized by the Ninth Circuit, setting the stage for the current multi-jurisdictional legal battles. The new complaint also names two licensees of the Morisky Widget who reportedly attempted to resolve usage conflicts directly with Morisky, bypassing MMAS Research.

This case highlights the critical importance of ensuring settlement agreements, especially those involving intellectual property transfers, are fully executed and finalized. Legal professionals should scrutinize settlement terms for clarity and completion to prevent protracted multi-jurisdictional disputes over ownership and licensing rights.

Source: Original reporting via Courthouse News