KOMIPHARM INTERNATIONAL CO LTD VS BISSOX INCORPORATED ET AL

Tentative Rulings

Case Number: BC417818    Hearing Date: June 29, 2020    Dept: 40

Parties/Counsel Are Strongly Encouraged to Appear Telephonically

The Number of Persons Permitted In the Courtroom is Extremely Limited

Facial Masks/Coverings Are Mandatory for Courthouse/Courtroom Entry

MOVING PARTY: Defendant Sang Bong Lee

OPPOSITION: Plaintiff, Cross-Defendant, and Cross-Complainant Komipharm International Co., Ltd

Plaintiff Komipharm International Co., Ltd., (“Komipharm”) sues Defendant/Cross-Defendant Sang Bong Lee (“Lee”) based on allegations that Lee is not entitled to patent rights or profits from an arsenic-based anticancer drug.

In October 2004, U.S. Patent Application No. 10/962,357 (“the 357 application”) was filed listing Lee and Yong Jin Yang (“Yang”), President of Komipharm, as the inventors of the drug. In 2008, Lee signed an agreement by which he assigned his rights to the drug to Komipharm. Komipharm alleges that it subsequently discovered that Lee was not the inventor of the drug. Komipharm moved to remove Lee and Yang as inventors and moved to add Bernardus Rademaker (“Rademaker”) as the inventor of the drug.

Rademaker also assigned his interest in the drug to Komipharm. However, Lee opposed his deletion and in 2009 Komipharm filed a complaint. On October 31, 2011, Lee filed a continuation application, U.S. Patent Application No. 13/285,693 (“the 693 application”). Both the 397 and 693 applications are suspended pending a resolution of the ownership dispute.

Komipharm argues that it can establish ownership of the suspended applications based on 1) Lee assigning the applications to Komipharm and 2) Rademaker, as the sole inventor, assigning the applications to Komipharm.

The remaining issue is whether the Court can determine if either Lee or Rademaker is the true inventor of the patent applications.

Komipharm argues that the Court would have jurisdiction even if their ownership claims were solely based on Rademaker’s inventorship of the drug. Komipharm cites to Consolidated World Housewares, Inc. v. Finkle (Fed. Cir. 1987) 831 F.2d 261, 265, which stated “[t]hat a contract action may involve a determination of the true inventor does not convert that action into one ‘arising under’ the patent laws.” Komipharm also cites Intellisoft, Ltd. v. Acer America Corp. (Fed. Cir. Apr. 3, 2020) No. 19-1522, 2020 WL 1647241, at *3, 4, which held that the plaintiff company “did not need to prove inventorship under federal law to establish [trade secret] ownership” even though inventorship was the “only theory of its case.”

In Consolidated World Houseware, an inventor assigned the rights to an invention to a company. A second inventor then claimed to be the true inventor and assigned his rights to the company. The company proceeded to file a suit for a declaration as to which of the two inventors was the true inventor. (Id. at p. 263.) The Court of Appeal found that the district court lacked jurisdiction because “any controversy between the parties, if controversy there be, can only be contractual.” (Id. at p. 265.)

Consolidated World Houseware is not helpful because in that case it was undisputed that the company owned the invention and the patent applications because both purported inventors had assigned their rights to it.

Here, Komipharm’s alternate theory is that Lee had no rights to assign because he was not the inventor. Similarly, Intellisoft is also unhelpful because in that case the court found that a company did not need to prove inventorship to establish ownership and instead “needed to show only that Intellisoft [the company] by assignment from Bierman was the owner of the trade secrets.”

Komipharm also cites the decision from USPTO which states that “[t]he dispute over this application is now within the jurisdiction of the Superior Court of the State of California.” (Komipharm Ex. 1, p. 6.) However, USPTO’s ruling addressed the issue of whether Lee assigned his rights to Komipharm and did not discuss Rademaker’s assignment. In fact, the USPTO found that the ownership claim should be raised in state court only after finding “that none of the documents recorded in the USPTO for the instant application conclusively establish that Lee transferred his entire right, title, and interest in the instant application to Komipharm. (Ibid.) 

This Court agrees with USPTO that it can rule on the issue of whether Lee assigned his right to the applications.

The Court has jurisdiction and can adjudicate the ownership issue, i.e., whether Lee assigned his rights to the applications to Komipharm.

However, the Court does not have jurisdiction to determine whether Lee or Rademaker invented the drug. As acknowledged by Komipharm, the Rademaker alternate theory of ownership is “premised on Dr. Rademaker being the sole true inventor of the suspended applications….” (Oppo., 5-19:20.) The proper venue to decide the inventorship of the pending applications is the USPTO.

Conclusion: Lee’s Motion for Judgment on the Pleadings is DENIED.