Opinion
20-CV-1786 TWR (DEB)
06-04-2021
IMMUNITYBIO, INC., Plaintiff, v. FOX CHASE CANCER CENTER FOUNDATION, INSTITUTE FOR CANCER RESEARCH, and DOES 1 to 10, inclusive,, Defendants. INSTITUTE FOR CANCER CENTER RESEARCH,, Cross-Complainant, v. IMMUNITYBIO, INC.,, Cross-Defendant.
ORDER GRANTING MOTION TO REMAND AND DENYING MOTION TO DISMISS
(ECF Nos. 5, 6)
Honorable Todd W. Robinson United States District Judge
Plaintiff ImmunityBio, Inc. has moved to remand its state claims and dismiss the Institute for Cancer Research's Cross-Complaint. (ECF Nos. 5, 6.) For the reasons set forth below, the Court GRANTS the Motion to Remand (ECF No. 5) and DENIES the Motion to Dismiss. (ECF No. 6.)
BACKGROUND
A. Underlying State Court Action
This case arises out of a contract dispute. (ECF No. 1.) ImmunityBio, Inc., formerly known as NantKwest, Inc., is a clinical-stage immunotherapy company that uses immune cells called “natural killer” cells to help patients get life-saving treatments for “cancer, infectious diseases, and inflammatory diseases.” (Id. ¶ 16.) These natural killer cells, which are a “unique type of white blood cells, ” “rapidly seek and destroy abnormal cells” like cancer cells or those that are virally infected. (Id. ¶ 17.) A particular type of natural killer cells known as “NK-92” lie at the center of this case. These cells have a “robust ability” to attack and kill cancer cells. (Id. ¶ 18.) ImmunityBio has strictly monitored the NK-92 cell line, sharing it with others only through “material transfer agreements” that allow limited use of the cells for research and prohibiting it from further distribution. (Id. ¶ 20.) In December 2003, ImmunityBio entered into a material transfer agreement with Fox Chase Cancer Center (“Fox Chase”). (Id. ¶ 21.) As part of this agreement, Fox Chase was prohibited from using the cells for commercial purposes or transferring them to a third party. (Id.)
But that is exactly what happened. Things took a turn when Dr. Kerry Campbell, a Fox Chase scientist, obtained the proprietary NK-92 cells from a third party, experimented with them, and used a virus to “insert a genetic sequence” into the cells so that they can “express a particular surface protein” called “CD16.” (Id. ¶ 24.) Without permission from ImmunityBio, Dr. Campbell and Fox Chase sold the new NK-92 cells now virally transfected with CD16. (Id. ¶ 25.) When ImmunityBio became aware of this, it contacted Fox Chase in April 2004, and the two reached a new agreement, known as the License Agreement, which granted ImmunityBio the exclusive right to the Virally Transfected CD16, NK-92 cells. (Id. ¶ 26.) In return, Fox Chase asked for royalties, “milestone payments, ” and continued research rights into the Virally Transfected, CD16 NK-92 cells. (Id.) Three years later, the two parties renegotiated the terms of the License Agreement. (Id. ¶ 34.) Fox Chase offered to become a “true business partner” by facilitating the sublicensing and supply of the new NK-92 cells in return for more royalties. (Id. ¶¶ 34- 35.) As a result of the new agreement, Dr. Campbell became more involved, helping fulfill orders for the NK-92 cells and distributing them to ImmunityBio's sublicensees throughout the country, including California. (Id. ¶ 36.)
Fox Chase tried to renegotiate the terms of the License Agreement several times afterward. (Id. ¶¶ 37, 40.) Although ImmunityBio struggled economically for some part and fell behind on royalty payments, it managed to recover, successfully going public in 2015 and progressing sufficiently for human clinical trials. (Id. ¶¶ 40-41.) It also obtained approval from the U.S. Food & Drug Administration to conduct a clinical study for a “therapeutic product candidate.” (Id. ¶ 41.) ImmunityBio invested heavily in preparing patent applications for the CD16, NK-92 Cell Line Technology, and up to the filing of this case, it had filed eight U.S. patent applications. (Id. ¶ 43.) In April 2020, the parties met again at Fox Chase's request. (Id. ¶ 44.) The meeting concerned the CD16, NK-92 cell line technology. (Id.) The meeting was “generally friendly” and largely uneventful. (Id. ¶ 44.) The parties did not raise any concerns about either party's obligations or performance under the License Agreement. (Id.)
But all this changed five weeks later. In May 2020, Fox Chase sent ImmunityBio a notice of termination. (Id. ¶ 46.) In the letter, Fox Chase listed seven alleged breaches of the License Agreement by ImmunityBio and provided sixty days to cure them or else it would terminate the contract. (Id.) In June 2020, ImmunityBio sent a response letter to Fox Chase, claiming that it had investigated Fox Chase's allegations and found them to be “untrue, invalid, vague, untimely, or incorrect characterizations of ImmuntyBio's obligations.” (Id. ¶ 50.) ImmunityBio asked for additional details and an explanation as to how those breaches, even if committed, were “material” under the License Agreement. (Id.) Fox Chase did not retract any of its claims. (Id. ¶ 59.) On July 21, 2020, ImmunityBio then sued in San Diego Superior Court, seeking declaratory relief. (Id. ¶ 60.) ImmunityBio requested the court to find that (1) it had not breached any of its material obligations under the License Agreement, and that (2) Fox Chase could not terminate the contract because it had not given “the required notice with an opportunity to cure required by the License Agreement.” (Id.) ImmunityBio further argued that Fox Chase's claims were “vague” and “inaccurate, ” and even if those breaches did occur, they were not material enough to warrant termination. (Id. ¶¶ 48-49.) Fox Chase answered and filed a cross-complaint. (ECF No. 2.) The cross-complaint provides the sole federal question in this case.
B. The Institute for Cancer Research's Cross-Complaint (ECF No. 2)
In its federal claims, the Institute for Cancer Research (“the Institute”) seeks to establish itself and Dr. Campbell as joint owners and co-inventors of the ‘420 patent (Patent No. 10, 456, 420), respectively. The ‘420 patent refers to the “methods of using genetically modified NK-92 cells for the treatment of cancer.” (ECF No. 2 ¶ 17.) Claim 1 of the ‘420 patent refers to a specific method of using a “plasmid expression vector” to create NK-92 cells that “express a CD16 polypeptide.” (Id.) Here, the Institute argues that Dr. Campbell collaborated and made significant contributions to the ‘420 patent and yet was left out as a named inventor. (Id. ¶¶ 20-22.) Dr. Campbell spoke with the named inventors of the NK-92 cells on several occasions, allegedly making significant contributions to the design and creation of the plasmid vector that expresses CD16. (Id. ¶¶ 23-27.) Still, ImmunityBio did not list Dr. Campbell on the patent application (referred to here as the ‘848 Application). When Fox Chase reached out to discuss the omission, ImmunityBio gave “cursory, non-substantive” responses. (Id. ¶ 31.) Fox Chase shared evidence of Dr. Campbell's contributions to the ‘420 patent and his collaboration with the named inventors through “emails, publications, grant applications, research agreements.” (Id. ¶ 32.) It also conveyed its concerns about the ‘848 application, namely how it might run afoul of several provisions under the License Agreement. (Id. ¶ 33.) When Fox Chase asked to meet about the matter, ImmunityBio refused. (Id.) According to ImmuntiyBio, Fox Chase did not have the right under the License Agreement to meet about intellectual property issues, such as correction of inventorship claims at issue here. (Id.)
After asserting claims for Correction of Inventorship under 35 U.S.C. § 256 and declaratory judgment, the Institute removed this case to federal court under 28 U.S.C. § 1454(a). (ECF No. 2.) ImmunityBio now moves to remand its state law claims and dismiss the Institute's Cross-Complaint. (ECF Nos. 5, 6.) For the reasons set forth below, the Court GRANTS the Motion to Remand and DENIES the Motion to Dismiss.
LEGAL STANDARD
Rule 12(b)(6) allows a court to dismiss a complaint for “failure to state a claim upon which relief can be granted.” Fed.R.Civ.P. 12(b)(6). To survive a motion to dismiss, the complaint must contain a “short and plain statement showing that the pleader is entitled to relief, ” backed by sufficient facts that make the claim “plausible on its face.” Fed.R.Civ.P. 8(a)(2); Ashcroft v. Iqbal, 556 U.S. 662, 678, (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 547 (2007)). Plausibility requires “more than a sheer possibility that a defendant has acted unlawfully.” Iqbal, 566 U.S. at 678. Rather, it demands enough factual content for the court to “draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id. (citing Twombly, 550 U.S. at 556). The court must accept as true “all factual allegations in the complaint” and “construe the pleadings in the light most favorable to the nonmoving party.” Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008). This presumption does not extend to conclusory allegations, “unwarranted deductions of fact, or unreasonable inferences.” In re Gilead Scis. Sec. Litig., 536 F.3d 1049, 1055 (9th Cir. 2008).
ANALYSIS
A. Supplemental Jurisdiction
1. Common Nucleus of Operative Facts
In cases where district courts have original jurisdiction, they can also exercise supplemental jurisdiction over the other claims asserted if they “form part of the same case or controversy under Article III of the United States Constitution.” 28 U.S.C. § 1367(a). To form a part of the “same case or controversy, ” the state and federal claims must “derive from a common nucleus of operative fact.” Ballon v. L. Offs. of Robin W. Enos, No. 06-CV-74-IEG (WMC), 2007 WL 9776494, at *2 (S.D. Cal. Apr. 6, 2007) (quoting United Mine Workers of Am. v. Gibbs, 383 U.S. 715, 725, 86 S.Ct. 1130, 1138, 16 L.Ed. 2D 218 (1966). Still, a district court may decline to exercise supplemental jurisdiction over a claim if “(1) the claim raises a novel or complex issue of [s]tate law, (2) the claim substantially predominates over the claim or claims over which the district court has original jurisdiction, (3) the district court has dismissed all claims over which it has original jurisdiction, or (4) in exceptional circumstances, there are other compelling reasons for declining jurisdiction.” 28 U.S.C. § 1367(c). In exercising its discretion, courts may also consider “judicial economy, convenience, fairness and comity.” Edwards v. JPMorgan Chase Bank, N.A., No. 13CV1629 JAH KSC, 2014 WL 1676721, at *1 (S.D. Cal. Apr. 28, 2014) (citation omitted).
Here, the Court declines to exercise supplemental jurisdiction over the state law claims. To be sure, the declaratory judgment action and the correction of inventorship claim arise out of a common nucleus of operative facts. In other words, the same facts underlying part of the declaratory judgment action have also given rise to the correction of inventorship claim. Those facts are the following: (1) the filing of the ‘848 patent by ImmunityBio and (2) Dr. Campbell's communications with the named inventors of the ‘420 patent. For the correction of inventorship claim, the relevance of Dr. Campbell's conversations is clear: The Court must determine whether his contributions were significant enough in light of the entire ‘420 patent such that he should be named a co-inventor. Those same conversations appear relevant in determining whether ImmunityBio committed at least two breaches in the declaratory action: (1) whether ImmunityBio should have met with Fox Chase about the ‘848 application that allegedly contained Dr. Campbell's contributions, and (2) whether ImmuntiyBio breached two confidentiality provisions by submitting the ‘848 patent application using the information that Dr. Campbell provided. So long as the same underlying facts have given rise to these two separate claims, supplemental jurisdiction is proper. See Williams v. Camden USA, Inc., No. 319CV00691AJBAHG, 2020 WL 953285, at *9 (S.D. Cal. Feb. 26, 2020) (finding that the court has supplemental jurisdiction because the state and federal claims are “based on the same facts.”). And that is the case here.
2. 28 U.S.C. § 1367(c): State Law Claims Predominate Over the Federal Claim
But even if the two actions arise out of a common nucleus of operative facts, the Court may still decline jurisdiction if the state claims substantially predominate over the federal claim. “State law claims substantially predominate over the federal claim when it appears that a state claim constitutes the real body of a case, to which the federal claim is only an appendage.” Lagunas v. SPS Techs., LLC, No. SACV182005JVSDFMX, 2019 WL 949523, at *2 (C.D. Cal. Feb. 27, 2019) (citing United Mine Workers of Am. v. Gibbs, 383 U.S. 715, 727, 86 S.Ct. 1130, 1140 (1966)) (internal quotation marks omitted). Predomination can be determined “in terms of proof, of the scope of the issues raised, or of the comprehensiveness of the remedy sought.” Gibbs, 383 U.S. at 726.
Here, the state law claims substantially predominate over the lone federal claim. First, the two cases vary significantly in scope. The declaratory judgment action involves the entire contractual period that spans sixteen years while the federal action only covers Dr. Campbell's interactions with the named inventors, which started in 2013. (ECF No. 5 at 13; ECF No. 27 at 13.) This alone suggests that the relevant evidence and facts differ markedly. For example, the declaratory judgment action will at least require the Court to look into each of the seven breaches (if not more)-four of which do not appear to concern Dr. Campbell's contributions and will presumably call for examining a different set of facts and evidence. For example, resolving whether ImmunityBio (1) failed to provide notice to the Institute of an “executed sublicense agreement, ” (2) failed to use “best efforts to develop for commercial use and market Licensed Products, ” (3) failed to provide Fox Chase “written yearly progress reports, ” or (4) failed to provide Fox Chase “notice of infringement” (see ECF No. 1-2 ¶ 46) will not have much to do with Dr. Campbell's contributions to the ‘420 patent or his conversations with the named inventors-both of which lie at the center of the federal case. The evidence for those breaches may span any time within the sixteen years that the License Agreement remained valid. And not only that. Upon a finding of a breach, the Court will then have to determine whether that breach is material enough to warrant termination. All of this is a much different inquiry than co-inventorship.
Fox Chase does not answer these points convincingly. First, it does not deny that the entire sixteen-year duration of the License Agreement may be subject to discovery. Instead, it minimizes this concern by arguing that “the most fact-intensive part of the contract claims will almost certainly involve Dr. Campbell's confidential inventive communications” with ImmunityBio and the latter's “use of that information to obtain the ‘420 patent.” (ECF No. 27 at 13-14.) But even if that were true, the required proof and use of Dr. Campbell's communications would be different for the federal and state law claims. The state claims would require looking into whether ImmunityBio used any confidential information that Dr. Campbell provided, while resolving the federal action would take two steps: (1) determining what contributions Dr. Campbell made to the ‘420 patent, and then (2) analyzing whether those contributions were significant enough to warrant co-inventorship. So even if the same communications by Dr. Campbell may be at play, the relevance of those communications would be different for the state and federal claims. See Brosnan v. Deutsche Bank Nat. Tr. Co., No. C 08-4049 SI, 2009 WL 248268, at *3 (N.D. Cal. Feb. 2, 2009) (declining to exercise supplemental jurisdiction in part because each state law claim was “distinct from the federal claim” and involved “elements of proof not necessary to establish” the federal claim).
In addition, Fox Chase argues that the Court should hear the state and federal claims together because the state claims depend on the correction of inventorship claim. (ECF No. 27 at 10.) But that is not true. Nothing in the state law claims require a finding of co-inventorship. As noted above, a correction of inventorship claim requires the Court to determine whether the Dr. Campbell's contributions were significant and substantial enough in light of the entire patented invention. In other words, it calls for an analysis of the quality and substance of the contributions. The state claims require nothing of the sort. At best, the state law claims require examining what Dr. Campbell communicated to ImmunityBio. And even if upon remand, the state court may have to analyze whether Dr. Campbell provided material information in his communications, that is a different inquiry than co-inventorship.
Finally, Fox Chase argues for supplemental jurisdiction because a finding of co-inventorship may lead to findings of other breaches by ImmunityBio, which in turn shows that these claims should be heard together. (See ECF No. 27 at 14.) That argument may prove to be true. But even if a finding of co-inventorship may lead to other claims of breach, those breaches would be a matter of state law. And while that may mean that the federal and state claims arise out of a common nucleus of operative facts, that is not the sole inquiry. Here, if a finding of co-inventorship leads to claims of additional breach, it would only show that the state law claims predominate over the lone federal claim. Indeed, under Fox Chase's reasoning, a finding of co-inventorship may lead to a ballooning of state law claims in federal court. And those state law claims would be “distinct from the federal claim” and involve “elements of proof not necessary to establish” the federal claim. Brosnan, 2009 WL 248268, at *3. Ultimately, a finding of co-inventorship may lead to additional claims of breach. Or it may not. Fox Chase relies on this uncertainty to keep the state and federal claims together. (ECF No. 27 at 14.) But to exercise supplemental jurisdiction based on hypothetical scenarios of additional state law claims that have little to do with proving co-inventorship only shows that those claims do not belong here. And because proving breach of the License Agreement does not necessarily depend on a finding of co-inventorship, the risk of inconsistent rulings appears minimal.
At bottom, these two claims are so different in scope. The state law claims may require an examination of the entire License Agreement, while the federal claim focuses narrowly on the question of co-inventorship. The state law claims substantially predominate over the lone federal claim in terms of the breadth of the issues, relevant evidence, and the remedies sought. Although the two claims arise out of a contractual relationship borne out of the License Agreement, that is the extent of the similarities. Hearing both the state and federal claims together would not promote judicial economy. / / /
B. Correction of Ownership
In its cross-complaint, the Institute claims that Dr. Campbell has been wrongfully left out as a co-inventor of the ‘420 patent. In response, ImmunityBio argues that the Institute has not adequately described Dr. Campbell's contributions, and as a result, its co-inventorship claim should be dismissed. The Court disagrees.
“Conception is the touchstone of inventorship.” Gen-Probe Inc. v. Becton Dickinson & Co., 899 F.Supp.2d 971, 978 (S.D. Cal. 2012) (quoting Burroughs Wellcome Co. v. Barr Lab'ys, Inc., 40 F.3d 1223, 1227 (Fed. Cir. 1994)). The named inventors on an issued patent are presumed to be the “true and only inventors.” Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998). But that presumption is rebuttable. A person who believes that he should have been listed as a co-inventor but was not can bring “a cause of action to correct inventorship in a district court under 35 U.S.C. § 256.” Eastman v. Apple Inc., No. 18-CV-05929-JST, 2018 WL 5982440, at *5 (N.D. Cal. Nov. 14, 2018). To overcome the presumption of correctness, the alleged co-inventor must “prove their contribution to the conception of the claims by clear and convincing evidence.” Ethicon, 135 F.3d at 1461. “[T]o be a joint inventor, an individual must make a contribution to the conception of the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.” Caterpillar Inc. v. Sturman Indus., Inc., 387 F.3d 1358, 1377 (Fed. Cir. 2004) (quoting Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997)). Further, the alleged co-inventor must state the “link between his alleged contributions and the ‘claimed invention.'” Eastman v. Apple, Inc., No. 18-CV-05929-JST, 2019 WL 1559015, at *4 (N.D. Cal. Apr. 10, 2019) (citing Caterpillar Inc., 387 F.3d at 1378) (emphasis in original). “The determination of whether a person is a joint inventor is fact specific, and no bright-line standard will suffice in every case.” Fina Oil, 123 F.3d at 1473.
Here, the Institute has sufficiently described Dr. Campbell's contributions to survive a motion to dismiss. The Cross-Complaint lists the following as Campbell's contributions: (1) giving advice about “creating a vector suitable for expression of CD16 and IL-2” (ECF No. 2 ¶ 23), (2) providing suggestions that formed “key steps in experimental design and methods, including the design of the plasmid vector” (id. ¶ 24), (3) providing “specific insight into design of the plasmid and associated genetic considerations”-including the order of CD-16 and IL-2 in vector-and “ideas to target to the ER and use of IRES as part of the vector” (id. ¶ 25), and (4) providing genetic sequences, identifying both problems and solutions to those problems, and suggesting specific experimental approaches. (Id.) ImmunityBio argues that these claims are conclusory, but that is not true. For example, the claim that Dr. Campbell contributed to the “design of the plasmid and associated genetic considerations, ” specifically providing the “order of CD-16 and IL-2 in the vector, ideas to target to the ER, and the use of an IRES as part of the vector” (id.) are specific factual allegations and not mere conclusions. The cross-complaint also states that Dr. Campbell contributed to the creation of a vector “suitable for expression of CD16 and IL-12.” (Id. ¶ 24.) What is more, ImmunityBio cannot argue that Dr. Campbell merely contributed “well-known principles” because the Examiner, in approving the ‘420 patent, specifically commented on the “transgene encoding the CD16 polypeptide, ” the “IL-2 targeted to the ER, ” and the “plasmid construct” in the Notice of Allowance-both of which reflect Dr. Campbell's contributions. (ECF No. 2 ¶¶ 28-29.) Taken together, these are specific facts and theories that, when taken as true, state a plausible claim for joint inventorship. See Eastman, 2019 WL 1559015, at *3 (stating that in cases where courts have denied motions to dismiss for correction of inventorship claims, “the plaintiffs [have] identified specific theories that courts could reasonably assess for plausibility.”).
Lastly, to the extent ImmunityBio argues that these allegations are vague, remembering the procedural posture here makes all the difference. This is currently on a motion to dismiss, and plaintiffs do not have to “plead their inventorship theories in sufficient detail to carry their ultimate evidentiary burden.” Eastman., 2019 WL 1559015, at *3 (emphasis added). Here, the Institute has alleged Dr. Campbell's contributions in sufficient detail. This is unlike other cases where courts have granted motions to dismiss for insufficient facts. See, e.g., Ecojet, Inc. v. Pure Spa Components, Inc., No. SACV1601463CJCKESX, 2017 WL 3485780, at *5 (C.D. Cal. Feb. 10, 2017) (granting the motion to dismiss because the plaintiff merely stated that he was “part of a team” that developed the disputed invention without identifying what he or his team contributed to the ultimate patent).
C. The Institute's Ownership Rights in the ‘848 Patent Application
As Dr. Campbell's employer, the Institute argues that, by virtue of Dr. Campbell's contributions, it also has an ownership right in the ‘420 patent and any other “related patent applications” filed by ImmunityBio. (ECF No. 2 ¶ 43.) ImmunityBio moves to dismiss this claim on three grounds: (1) the Institute has not adequately alleged Dr. Campbell's contributions to the ‘420 patent; (2) federal district courts do not have the power to declare inventorship of a patent; and (3) the Institute has not alleged enough facts to “determine ownership of the related patent applications.” (ECF No. 6 at 12-13.) None of these arguments are convincing.
The first two grounds are unpersuasive. First, as discussed above, the Institute has adequately described Dr. Campbell's contributions to the ‘420 patent. Second, the Cross-Complaint is not asking the Court to declare inventorship of a patent, but rather an ownership interest. Those are different things. See ViChip Corp. v. Lee, 438 F.Supp.2d 1087, 1093 (N.D. Cal. 2006) (drawing a line between inventorship and ownership and finding that inventorship is an issue that belongs to the Patent and Trademark Office and the court can determine ownership interests based on an assignment of rights).
Lastly, the third ground for dismissal is also unconvincing. ImmunityBio argues that seeking ownership of “related applications” to the ‘848 application is vague and does not identify the specific applications in which the Institute seek an ownership interest. (ECF No. 6 at 13.) But the Court disagrees. The Cross-Complaint identifies two patent applications in which it seeks an ownership interest: Patent Application Nos. 16/541, 847 and 16/903, 882. (ECF No. 2 ¶ 34.) Both are allegedly “child” patent applications that claim the “benefit of the ‘848 Application's filing date.” (Id.) Further, the Institute argues that the word “related” has a specific, well-understood meaning in patent law. (ECF No. 28 at 14.) The extent to which “related” patent applications refer to those that “claim priority” in an earlier filed application, that is specific enough to survive a motion to dismiss. In patent law, to claim priority in an earlier patent means that “at least one claim in the subsequent patents depends on the [original patent application].” Target Tech. Co., LLC v. Williams Advanced Materials, Inc., No. SACV041083DOCMLGX, 2008 WL 5002935, at *3 (C.D. Cal. Nov. 21, 2008). “Under 35 U.S.C. § 120, a subsequently filed application is entitled to the filing date of an earlier application if: (1) the same invention is disclosed in the earlier application in the manner provided in the first paragraph of 35 U.S.C. § 112; (2) the inventor is the same; (3) the application is filed before the patenting, abandonment or termination of the first application; and, (4) the application contains a specific reference to the earlier filed application.” Clinicomp Int'l, Inc. v. Cerner Corp., No. 17CV2479-GPC(BLM), 2018 WL 2229364, at *7 (S.D. Cal. May 16, 2018) (internal quotation marks and citation omitted). So here, by referring to “related” patent applications, the Institute has sufficiently alleged the patent applications in which they seek an ownership interest. Applications that “claim priority” to the ‘848 application can be readily identified, especially since the later-filed patent applications will have a specific reference to the ‘848 application. And since ImmunityBio is the one that filed these patent applications, it should be able to identify those that refer back to the ‘848 application without much difficulty.
To be sure, these “related” applications may claim priority to the ‘848 application based on a claim that does not concern Dr. Campbell's contributions. But that does not warrant dismissal of this case. Because Dr. Campbell only contributed to one claim in the ‘848 application, namely, the plasma vector design, the Court can readily determine whether the Institute should have any ownership interests in the later-filed applications. For now, the relevant questions are (1) whether the Institute has alleged enough facts to identify the related patent applications in which it seeks an ownership interest, and (2) whether it has sufficiently alleged the grounds on which they pursue that interest. Here, that burden has been met. The Institute has alleged that “related” patent applications refer to those that are “child” patents, or those that “claim priority to the ‘848 application, and it has adequately described Dr. Campbell's contributions to the ‘848 application. The Court DENIES the Motion to Dismiss.
IT IS SO ORDERED.