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  • 7/29/2019 Lee v. Lee


    J I -SOO LEE




    2013 SEP lb p jnCLERK US r.iSTf.ICT COURTalex/.m:;: ' :ia. Virginia

    Civil Action No: /: liCVl1^ .HEUNG-SOO LEE J URY TR IAL DEMANDED

    Defendant .


    PlaintiffJi-Soo Lee, an individual ("Plaintiff'), hereby brings this action for declaratoryreliefagainstDefendant Heung-Soo Lee, an individual ("Defendant"),and statesas follows:

    NATURE OF THE ACTION1. Plaintiff brings this Complaint against Defendant pursuant to the patent laws of

    the United States, Title 35 of the United States Code, with a specific remedy sought based uponthe laws authorizing actions for declaratory judgment in the courts of the United States, 28 U.S.C.2201 and 2202.

    2. Plaintiff brings this action against Defendantfor a declaration that Plaintiff is thesole and true owner ofU.S. Patent No. 6,532,413 ("the '413 patent").


    3. Plaintiff Ji-Soo Lee is an individual, and citizen of the Republic ofKorea,residingat 120-1101, SamMaeul Hanyang APT 1121,Hogye-dong,Dongan-gu,Anyang-si,Gyungki-do, Republic ofKorea. Plaintiff is the assignee of the '413 patent.

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    4. Upon information and belief, Defendant Heung-Soo Lee is an individual, andcitizen of the Republic ofKorea residing at 801-17, Shiheung 4-dong, Keumcheon-ku, Seoul153-034, Republic ofKorea. Defendant is the inventor of the '413 patent.


    5. This Court has subject matter jurisdiction over this action, which arises under thepatent laws of the United States, pursuant to 28 U.S.C. 1331, 1338(a), and 2201.

    6. The Leahy-Smith America Invents Act, signed into law on September 16, 2011,amended 35 U.S.C. 293 to provide, in relevant part, that "Every patentee not residing in theUnited States may file in the Patent and Trademark Office a written designation stating the nameand address of a person residing within the United States on whom may be served process ornoticeof proceedingsaffecting the patent or rights thereunder." On April 9, 2001, Defendant,aresident of the Republic ofKorea, filed a written Declaration and Power ofAttorney in thePatent and Trademark Office designating counsel of Finnegan, Henderson, Farabow, Garrett &Dunner, LLP. See Exhibit A, Power ofAttorney. Therefore, Defendant, a non-resident patentee,is subject to the personal jurisdiction of this Court, pursuant to 35 U.S.C. 293.

    7. Venue is proper in this Court pursuant to 28 U.S.C. 1391(b)(3)and 1400(b),asDefendant is subject to personal jurisdiction in this Court under 35 U.S.C. 293.


    8. The Patent Cooperation Treaty Application PCT/KR99/00549 ("PCTApplication") was filed on September 15, 1999,designating the United States and claimingpriority to Korean Application No. 98-37971 filed September 15, 1998. The PCT Application

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    was subsequentlyfiled in the United States on June 27,2001 and the '413 patentwas issuedonMarch 11,2003.

    9. Prior to the 2001 agreements, Plaintiff loaned Defendant W 20,000,000 KRW(approximately $20,000USD) to be usedtoward the prosecutionof the listedpatents in the 2001agreements described below.Defendantstill has not repaid this loan to Plaintiff.

    10. In March 2001, Defendant, through his company Haeul Co., Ltd., entered into anagreement with LeeGyeong-Ran International PatentOffice.See Exhibit B, certifiedtranslationof Jin-Won OhAgreement. This agreement provided thatDefendant shall reimburse LeeGyeong-Ran International PatentOfficeforall costsandexpenses incurred in connection withthe listed patent prosecutions and other related business expenses totalingapproximately W 25million KRW (approximately $25,000USD). If Defendant failed to provide reimbursement, theagreement provided that Defendant shall transfer his rights to the listed patents to Lee Gyeong-Ran International Patent Office. Defendant, however, lacked the approximately W 25 millionKRW (approximately $25,000 USD) to pay thepatent application coststoLee Gyeong-RanInternational Patent Office.

    11. OnApril 21,2001, inan effort toobtain funds to prevent the lossof his rightstoLee Gyeong-Ran International Patent Office, Defendant entered intoan agreement withJin-WonOh (the"Jin-Won OhAgreement") transferring ownership of listedpatents, includingPCT/KR99/00549 whichultimately resulted in the '413 patent, from Defendantto Jin-WonOhforW 25million KRW (approximately $25,000 USD). SeeExhibitB, certifiedtranslation of Jin-Won OhAgreement. The Jin-Won OhAgreement stated "the agreement ismade and entered intoas follows with respect to theagreements attached hereto (anagreement on a patent applicationno. PCT/KROO/01269 and additional twelve (12) agreements by and between Haeul Co., Ltd and

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    Lee Gyeong-Ran International Patent Office)." As noted in the agreement, both parties intendedthe consideration ofW 25 million KRW (approximately $25,000 USD) to be used by Defendantto pay Lee Gyeong-Ran International PatentOffice. At the time of the Jin-Won Oh Agreement,Jin-Won Oh was, and currently is, Plaintiffs wife.

    12. On April 27, 2001, Plaintiff and Defendantduly signed and entered into anagreement("the2001 Agreement")with two parts, transference of ownership from Defendant toPlaintiff and a subsequent license to use granted to Defendant from Plaintiff.See Exhibit C, the2001 Agreement. The 2001 Agreement provided, in relevant part,"The PartyB [Defendant]shall transfer the ownership of the following patents to the Party A [Plaintiff]." The listofpatents transferred inthe 2001 Agreement included PCT/KR99/00549 which ultimately resultedin the '413 patent.

    13. Under the 2001 Agreement, Plaintiff also granted Defendant a license to use thelisted patents, tobe renewed every year. The second clause of the 2001 Agreement contains adrafting error. Where the2001 Agreement states "TheParty B [Defendant] shall grant thePartyA [Plaintiff] a license to use, andtheagreement forthegranting of the license shall be renewedevery year," "Party A"and"Party B"are interchanged. In light of the preceding first clause ofthe2001 Agreement transferring all rights from Defendant to Plaintiff, it is obvious thatthe twoparties' namesweremistakenly interchanged.

    14. This subsequent2001 Agreementeffectivelysupersededthe agreementto transferownership of listed patents to Jin-Won Oh in theJin-Won OhAgreement. In total, DefendantreceivedW 45 million KRW (approximately $45,000 USD) from the 2001 Agreements thattransferred ownershipof PCT/KR99/00549, which ultimately resulted in the '413 patent, fromDefendant to Plaintiff.

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    15. In accordance with the 2001 Agreement, following Defendant 's failure to payback the loan of W 20,000,000 KRW (approximately $20,000 USD) from Plaintiff, Defendantduly recorded the assignment ofU.S. Patent No. 6,233,518 but failed to record the assignment ofthe'413 patent.

    16. On June 13,2011, Plaintiffand Defendant entered into an exclusive licenseagreementwith non-party Porto Technology, Ltd. ("Porto"), granting Porto the right to licenseand enforce the '413 patent. On September 20,2012, Porto filed a lawsuit for patentinfringement against non-party Verizon Wireless in the Eastern Districtof Virginia alleginginfringement of the '413 patent,whichwaseventually dismissed due to procedural issues.

    17. Following the dismissal, Porto attemptedto join both Plaintiff and Defendant tothe patent infringement lawsuit. Plaintiffagreed to bejoinedwhile Defendant refused.

    18. On March 13,2013, Plaintiffand Defendant engaged in a series of emailcorrespondence during which thetwo parties were unable to resolve the issue of patentownership ofthe'413 patent. See Exhibit D,Email correspondence between Plaintiff andDefendant. In the March 13,2013 email correspondence, Defendant repeatedly claimedownership of the '413 patent.

    19. On March 14, 2013, Plaintiffsent Defendant a Notice of Termination ofLicenseAgreement ("Notice of Termination") notifying Defendant of the termination of the licenseagreement of the2001 Agreement. SeeExhibitE,Noticeof Termination of License Agreement.Plaintiffstated the reason for the Notice ofTermination "as the license agreement cannot becontinued any longer because Heung-Soo Lee claimsthe ownership of a patentheldbyJi-SooLee." The Notice ofTermination further stated that Defendant is excluded f rom the exclusivelicense agreement entered into with Porto.

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    20. On April 8, 2013, Plaintiffrecorded the assignment of the '413 patent fromDefendant to Plaintiff. See Exhibit F, USPTO Notice of Recordation.

    COUNT I (Declaratory Judgment of Ownersh ip of the '413 Patent)21. Plaintiff hereby incorporates by reference each and every allegation set forth in

    paragraphs 1-17of this Complaint.22. Through the 2001 Agreement, Defendant assigned the '413 patent that resulted

    from the PCT Application,among other patents, to Plaintiff.23. Since 2001, Plaintiff has acted alone in performing and fulfilling all actions, and

    incurring all expenses necessary, to obtainandmaintain the '413 patent, in full faith and relianceon the 2001 Agreement.

    24. The '413 patent is recordedat theUSPTO as being assigned to PlaintifffromDefendant.

    25. Defendant attempts to thwart Plaintiffs valid attempts to enforce the '413 patent,bymaking claims ofownership to the '413 patent despite the termsof the 2001 Agreement,subsequent actions takenby Plaintiffin reliance on the 2001 Agreement, and USPTO recordsthat s ta te otherwise.

    26. There is an actual controversy within the meanin