Earlier this month, in Chen v. Jung, District Judge Manuel L. Real of the U.S. District Court for the Central District of California issued an order denying a motion for summary judgment filed by Defendants, finding that genuine issues of material fact existed with respect to Plaintiff's contribution to the conception of the claimed inventions of U.S. Patent Nos. 8,445,507, 8,802,689, and 9,388,159.  Plaintiff Degui Chen, Ph.D., had filed suit against Michael Jung, Ph.D., and Charles L. Sawyers, M.D., seeking correction of inventorship of the '507, '689, and '159 patents, which are directed to pharmaceutical compositions comprising the chemical compounds, A51 and A52 ("the A-series compounds"), and methods of administering those compounds.

In his complaint, Dr. Chen asserted that he had been a significant contributor to the conception of the A-series compounds.  Judge Real's order notes that the A-series compounds, which are used in the treatment of prostate cancer, were developed in the summer of 2004 in two labs at the University of California, Los Angeles, the labs being led by Drs. Jung and Sawyers.  Dr. Chen worked in Dr. Sawyers' lab until September of 2005.  Drs. Jung and Sawyers, along with three other individuals including Dr. Samedy Ouk, are named as inventors on the '507, '689, and '159 patents, which were licensed by The Regents of the University of California to Aargon Pharmaceuticals, Inc. (subsequently acquired by Johnson & Johnson), with the A52 compound ultimately being developed as the drug Erleada.

Dr. Chen asserted in his complaint that he was involved in a related project (the RD-series) to develop and test compounds for the treatment of prostate cancer.  Dr. Chen contended that he and Dr. Ouk met for lunch in October 2004 to discuss which RD-series compound could be used as a starting point for the development of a new compound, which became A51, and that they jointly came to the conclusion that the compound RD37 could be used.  Dr. Chen also contended that Dr. Ouk e-mailed him on October 13, 2004, to obtain a critical ingredient for the synthesis of A51 and that Ouk successfully synthesized A51 on January 23, 2005.  Dr. Chen further contended that he performed a series of complex bioassays, which he had developed himself, to test the biological activity and utility of A51, and established that A51 had therapeutic biological activity and thus could be developed into a drug for prostate cancer.

In denying the motion for summary judgment filed by Drs. Jung and Sawyers, Judge Real determined that genuine issues of material fact existed which prevented the entry of summary judgment.  In particular, those issues involved (1) whether the RD-series and A-series were distinct projects, (2) whether Dr. Chen conceived of the idea for A51 in collaboration with Dr. Ouk at the October 2004 lunch meeting, and (3) whether the bioassays Dr. Chen allegedly developed and utilized to test the biologic activity and utility of A51 were a sufficient contribution to conception to qualify Dr. Chen as an inventor on the A-series patents.

With respect to the first issue, Judge Real found that Dr. Chen "has put forth evidence that he and Dr. Ouk identified RD37 as the starting point for A51 and that his work on another RD-series compound, RD162, was essential to the synthesis of A52," and that the allegations in Dr. Chen's complaint were "sufficient to put Defendants on notice of Plaintiff's theory that the RD-series and A-series are a single project and that his work on the RD-series is a factor supporting his claim for inventorship on the A-series patents."  Drs. Jung and Sawyer also argued that even if Dr. Chen's work on the RD-series provided a foundation for the A-series, that alone was insufficient to confer inventorship because Dr. Chen did not conceive of the addition of a nitrogen molecule to the left-hand ring, a defining characteristic of the A-series compounds.  However, Dr. Chen countered that he did in fact conceive of that idea with Dr. Ouk at the 2004 lunch meeting, and the Court noted that his claim was "supported by multiple documents," including the October 13, 2004 e-mail from Dr. Ouk to Dr. Chen and a November 2013 letter to UCLA from counsel purportedly representing both Dr. Chen and Dr. Ouk that states that "Dr. Ouk and Dr. Chen have both confirmed that they two together conceived the structure of A51 in early October of 2004 on the lunch table at the bombshelter at UCLA."

With respect to the third issue, Dr. Chen contended that he was responsible for developing three bioassays that were used to test A51, that the development of these bioassays took six months, and that the bioassays were novel tests.  Judge Real noted that Drs. Jung and Sawyers "have not provided evidence sufficient to rebut Plaintiff's claims that the assays were non-public and non-routine, or that Plaintiff's alleged development and utilization of the bioassays were so essential to the A-series project as to confer inventorship."  Finding that "Defendants have not met their burden of negating an essential element of Plaintiff's claim or showing that Plaintiff lacks sufficient evidence of an essential element to carry his ultimate burden of persuasion at trial," the District Court denied the motion for summary judgement filed by Drs. Jung and Sawyer.

Chen v. Jung (C.D. Cal. 2019)
Order Denying Defendants' Motion for Summary Judgment by District Judge Real