Judge Wolf to Decide Lack of Standing Motion for Remicade Patent

In Janssen Biotech, Inc. et al v. Celltrion Healthcare Co., Ltd. et al., the Defendants have filed a motion to dismiss for lack of standing.  The Defendants' position is that the Patent at issue, U.S. Patent 7,598,083, was not properly assigned to the Plaintiff.  The '083 Patent claims soluble compositions suitable for producing a cell culture media. Judge Wolf will soon rule on the motion. Excerpts from the motion briefs are provided below:

Defendants' (Horpira and Celltrion) Motion

First, for named inventor Dr. Joseph Horwitz, Janssen is relying on a 1998 agreement with nearly identical language to an agreement the Federal Circuit has already ruled was not an assignment of patent ownership. In that case—which involved contract language Janssen admits is “the closest language” to Dr. Horwitz’s agreement (Dkt. 471 at 5)—the Federal Circuit held that the agreement was merely “an agreement to assign” in the future, which “must be implemented by written assignment.” IpVenture, Inc. v. Prostar Computer, Inc., 503 F.3d 1324, 1327 (Fed. Cir. 2007). Just like in IpVenture—and numerous other cases finding no assignment—Dr. Horwitz’s agreement is future-focused, stating, “I agree that I will … assign to CENTOCOR,” Janssen’s predecessor, “at its request … the entire world-wide rights to SUBJECT INVENTIONS” and “I will … execute all documents necessary to carry out the above.” Dkt. 446-3 at JANREM0098777. Dr. Horwitz did not “execute” any such assignment until after Janssen filed the 2015 lawsuit.

Second, although four other named inventors of the ’083 patent did assign their rights before the 2015 complaint, they assigned them not to Janssen alone, but to the “COMPANY,” which “means CENTOCOR and JOHNSON & JOHNSON and” other related entities. E.g., Dkt. 414-4 at JANREM0098780. They did so in employee “secrecy agreements” that purposely defined “COMPANY” broadly to protect important interests related to confidentiality and competition that all of the companies shared. Janssen, however, argues that “COMPANY” means only Centocor, directly contrary to the plain language of the agreements. Janssen argues that it would not have drafted an agreement that resulted in assignment of patent rights to a family of companies. But the agreements’ plain language does just that, and the Court may not rely on Janssen’s post hoc, litigation-driven statements about its unstated intent to “rewrite a contract for the parties better than or different from the one they wrote for themselves.” Kieffer v. Best Buy, 205 N.J. 213, 223, 14 A.3d 737, 743 (2011). Because other J&J affiliates who are not parties to the case remained co-owners of the ’083 patent before Janssen filed its 2015 complaint, Janssen lacks standing for Count 6 of the 2015 complaint. And although Janssen purported to execute assignments from the four inventors to Janssen after it filed its 2015 complaint, those documents were ineffective because the inventors at that point had no rights to convey. Accordingly, Janssen lacks standing for its 2016 complaint as well.

Janssen’s Opposition to Motion

Ignoring the Court’s views, Defendants move to dismiss the complaint on the ground that the assignment agreements in question are purportedly unambiguous. Janssen continues to believe that read as a whole the contracts are clear and leave no serious doubt that the ‘083 patent belongs to Janssen and Janssen alone. But to the extent there is ambiguity, the extrinsic evidence overwhelmingly confirms that Janssen has always been the sole owner of the ‘083 patent. Indeed, it is difficult to envision a case in which the real-world evidence of the intent of the parties to the contracts in issue is more one-sided and conclusive than this one. In most contract disputes, the plaintiff and the defendant are parties to the contract and disagree about what was intended. Here, however, the parties to the assignment agreements in question – the inventors and Janssen – have always agreed that the ‘083 patent belongs to Janssen alone. Furthermore, Janssen’s parent company Johnson & Johnson (“J&J”) agrees with Janssen and has disclaimed any assertion that the ‘083 patent inventors somehow assigned their rights jointly to J&J and its hundreds of subsidiaries. Where all of the parties to the contracts in question agree on its meaning, there is no reason not to give effect to that undisputed interpretation.

HORWITZ ASSIGNED HIS RIGHTS IN THE ‘083 PATENT TO JANSSEN IN 1998 Upon joining Janssen (then Centocor, Inc.) in 1998, inventor Joseph Horwitz signed an agreement (the “Horwitz Agreement”) stating “I agree that all SUBJECT INVENTIONS are the property of CENTOCOR.” Fischer Decl. Ex. H (Horwitz Decl. Ex. A) ¶ 11.1 The Horwitz Agreement continues “and I agree that I will . . . assign to CENTOCOR, at its request and without additional compensation, the entire world-wide rights to such SUBJECT INVENTIONS, to patent applications which may be filed and to patents which may issue on such SUBJECT INVENTIONS.” Id. Defendants have no linguistic explanation why Mr. Horwitz’s 1998 agreement that “all SUBJECT INVENTIONS are the property of CENTOCOR” does not mean that, in the present tense and as of 1998, all inventions made during the course of his employment were the property of Centocor. Instead, Defendants contend that case law somehow requires the Court to hold that the agreement did not legally accomplish what its language states. Defendants are wrong. In IpVenture v. Prostar Computer, Inc., 503 F.3d 1324 (Fed. Cir. 2007), which both parties agree is controlling here, the Federal Circuit held that an agreement with identical language was ambiguous and should be interpreted according to the extrinsic evidence of the parties’ intent. Here, that evidence unequivocally proves that Mr. Horwitz assigned the ‘083 patent to Janssen.