Judge’s Remand Order Reversed in Patent Case

     (CN) – A federal judge in Los Angeles should have dismissed, not remanded, two claims over a pending patent application for a cancer-fighting method, the Federal Circuit ruled.




     Professors Jong-Wan Park and Yang-Sook Chun claimed to have discovered that the chemical YC-1, found on a protein complex known as HIF-1, could be used to kill a tumor by starving it of oxygen and nutrients. They filed a patent application for the method in 2003 and assigned the rights to BizBiotech Co.
     Unbeknownst to the scientists, Che-Ming Teng, who had agreed to provide them with the YC-1 necessary for their experiments, had already filed a similar patent application a few months prior. The scientists said Teng disclosed their research to Taiwanese drug company Yung Shin Pharmaceuticals and its president, Fang-Yu Lee.
     In 2006, BizBiotech sued Teng, Yung Shin, Lee and Carlsbad Technology Inc. (CTI), a California company hired to market YC-1 in the United States. The lawsuit, filed in Los Angeles Superior Court, alleged 12 causes of action.
     CTI had the lawsuit removed to federal court, where U.S. District Judge Dean Pregerson dismissed the plaintiff’s racketeering claim and remanded the others, even though he had the discretion to exercise supplemental jurisdiction.
     The Federal Circuit initially dismissed the defendants’ appeal for lack of jurisdiction, but the Supreme Court has since given it the green light to review Pregerson’s remand order.
     In its second ruling on the case, the Washington, D.C.-based appeals court ruled that Pregerson abused his discretion in remanding two causes of action that involved federal patent law.
     “However, on remand the district court should dismiss both causes of action … because the plaintiffs have failed to state a claim upon which relief can be granted,” Judge Arthur Garjarsa wrote for the three-judge panel.
     None of the remaining state-law claims arises under federal law, the court ruled, so the district court should send those back to the state court.

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