This article covers California Northern District Court Case No. 3:16-cv-07396. From IPWatchdog, the case stems from a disagreement between the University of California (the Regents of the University; UC) and Roger Jinteh Arrigo Chen, a former graduate student at UC. In this case, UC alleges that Chen did not adhere to his contractual obligation to assign patents of which he was the inventor to UC. The inventions in question, which are described in US Patents 8,324,914 and 8,461,854, 9,041,420, and 9,377,437 are nanopore array systems useful for characterizing molecules complementary to the nanopores. Notably, US Patent Application Publications 20140034517A1, 20140346059A1, 20160040230A1 (the applicant of which is UC) predate the patents awarded to Chen and describe extremely similar technology (and many of the figures in Chen’s patents bear great resemblance to or seem to be adapted directly from the Patent Application Publications).
Chen first entered into an agreement with UC by swearing an Oath (“a valid, binding, and enforceable written agreement”) as one of the requirements to join the UC laboratory through which he was seeking employment. The Oath states Chen’s "obligation to assign inventions and patents” to UC. After leaving UC in 2008, Chen was evasive and misleading with UC as they repeatedly requested that he assign the patents in question to them, per their contract. He ignored many attempts by UC to contact him and directed them to consult his written materials at UC, which did not exist (Chen likely removed his notebooks from the campus illegally). In 2009, Chen founded Genia Technologies using the technology at issue and, by 2014, had assigned his patents to Genia. Upon the patent assignment, Roche purchased Genia to the tune of $125M, greatly benefiting Chen financially. In late 2016, UC filed this lawsuit.
The University is the plaintiff in this case and Chen is the defendant; the complaints of the case are:
1. Correction of Inventorship under 35 U.S.C. § 256;
2. Declaration of Patent Ownership;
3. Breach of Contract;
4. Breach of the Implied Covenant of Good Faith and Fair Dealing;
6. Constructive Trust
These complaints, in simpler terms, refer to the following concepts:
1. Because Chen did not sign the appropriate paperwork and the other inventor on the ‘914, ‘854, ‘420, and ‘437 patents is Randy Davis (who could not be an inventor as he was not involved with the UC project that gave rise to the technology protected by these patents), UC demands that Davis’ name is removed from the patents and the inventors listed on their US Patent Application Publications mentioned above (namely, Akeson, Deamer, Dunbar, and Wilson) are added to the Genia patents. 35 U.S.C. § 256 relates to the correction of misnamed or omitted inventors;
2. The University asserts that Genia obtained rights to the patents at issue through "improper and unauthorized assignment” so they demand either the rights to the patents or a reassignment from Genia to UC, as well as the assurance that any third-party agreements made by Genia relating to the patents are null and void;
3. Chen violated his contract with UC and, in doing so, must forfeit his rights to the patents at issue to UC in addition to his portion of the acquisition payment made by Roche to Genia and any further damages the University incurred through his breach of contract (to be determined by a jury);
4. The state of California has contract-related laws defining the implied good faith and fair dealing inherent to any deal made in California. By violating his contract, Chen also violated this law (CACI 325) and owes the University any further damages (to be determined by a jury);
5. Conversion relates to CACI 2100, another California-specific law that describes exercising wrongful control of personal property – UC asserts that Chen and Genia collaborated in the conversion of UC intellectual property and the illegal acquisition of Chen’s laboratory notebooks;
6. Some money from the Roche acquisition has been placed in a constructive trust to legally protect the funds that UC might be entitled to, depending on the outcome of this case.
Finally, UC summarized their demands at the end of their complaint in an eleven-point list. Essentially, they request judgement on (1-4) the proper ownership of the patents, (5) the return of Chen’s lab notebooks and other relevant documentation, (6-10) disgorgement of funds from Genia and Chen procured through the Roche acquisition or the Genia patents, and (11) compensation of the plaintiff’s attorney fees and further monetary relief for prejudgement interest.
Although I do not have legal experience beyond an undergraduate-level IP law class, it seems to me like Chen doesn’t have much ground to stand on. I think he underestimated the power and determination of UC’s legal team and expected his IP misappropriation to be ignored. His evasive behavior that brought light to his missing lab notebooks seems especially foolish – I think the judgement on this case will come with little deliberation as UC’s argument appears to be sound, thorough, and legally appropriate with the language of their Oath.