$CRDF Details about the Legal Issue.
The content below is from the legal filing by Cardiff. They appear to have a very solid case. In fact, NMS is now facing significant financial risk. Given how the stock price dropped, they could face significant damages. (Again, I am not a lawyer.)
(We will see how NMS responds. It is hard to see how they overcome what is asserted in this document.)
Content:
"Cardiff did not add Dr. Valsasina as a named inventor to the Cardiff Patents because she had no involvement in Drs. Ridinger and Erlander’s conception or reduction to practice of the claimed inventions of the Cardiff Patents. Rather, upon information and belief, Dr. Valsasina and NMS were not aware of Drs. Ridinger and Erlander’s inventions until after their innovative methods had been reduced to practice and Cardiff had filed its patent applications. A patent must accurately name the inventors of the claimed subject matter under an oath or declaration; failure to do so renders the patent invalid. NMS’s demand would have therefore required Cardiff to submit false oaths or declarations to the Patent Office that would invalidate the Cardiff Patents."
"The License Agreement does not impose an obligation on Cardiff to add an NMS employee as a named inventor to patents conceived of and reduced to practice solely by Cardiff’s employees. To the contrary, the License Agreement specifically contemplates Cardiff filing, prosecuting, and owning its own patents for its own innovations."
"NMS’s purported termination and related demands present a real and substantial risk to the cancer patients in the United States currently undergoing treatment pursuant to Cardiff’s ongoing clinical trials. NMS’s actions not only risk continuity of care for those patients undergoing clinical trials, but they jeopardize the health and safety of those patients too. The potential harm to Cardiff and these patients is immediate and urgent."
Facts Asserted:
"Drs. Erlander and Ridinger conceived of novel therapeutic methods of use for onvansertib in connection with their work for Cardiff. On September 11, 2022 and July 26, 2023, Cardiff filed provisional patent application Nos. 63/405,466 and 63/515,831, and subsequent U.S. Patent Application Nos. 18/750,971 and 18/751,014. After prosecution, the United States Patent and Trademark Office duly issued the ’813 and ’173 Patents to Cardiff on November 19, 2024 and April 1, 2025, respectively. No NMS employee contributed to the novel aspects of the inventions claimed in the Cardiff Patents."
"Dr. Valsasina did not, however, communicate with or otherwise participate in the work of Cardiff employees Drs. Erlander and Ridinger during or in temporal proximity to their inventive efforts that led to the claimed inventions of the Cardiff Patents. Tellingly, the Cardiff Patents do not claim priority to Dr. Valsasina’s work or patents; the Cardiff Patents are instead directed to and were found to be patentable by the Patent Office for separate, novel inventions that were conceived in connection with Cardiff’s work. A patent must accurately name the inventors of the claimed subject matter under an oath or declaration; failure to do so renders the patent invalid."
"On information and belief, NMS began a campaign to extract additional money or other value from Cardiff and the License Agreement in or around September 2024, including through demands that Cardiff agree to extend the royalty term of the License Agreement. NMS’s campaign later evolved to demand that an NMS employee (later identified to be Dr. Valsasina) be named as an inventor to the Cardiff Patents even though she did not jointly invent the claimed invention, to achieve a similar royalty-extending result. On information and belief, NMS’s attempts to renegotiate the License Agreement stem from NMS’s desire to negotiate more advantageous financial terms for the onvansertib drug product."
"Unless a person contributes to the conception of the invention, he is not an inventor.” MPEP § 2109 (citations omitted) (emphasis added). Even if NMS’s claims that Dr. Valsasina had suggested areas to investigate prior to the License Agreement were true “one who suggests an idea of a result to be accomplished, rather than the means of accomplishing it, is not a[] coinventor.” Id. (quoting Ex parte Smernoff, 215 USPQ 545, 547 (Bd. App. 1982).)"
Action Requested:
"Cardiff therefore requests preliminary and permanent injunctive relief from the Court ensuring that NMS continues to perform under the License Agreement and declaratory judgments that Cardiff did not breach the License Agreement, that NMS’s purported termination is ineffective, and that Drs. Ridinger and Erlander are the correct inventors on the Cardiff Patents. Cardiff further requests all other available remedies in law and equity, including damages, resulting from NMS’s conduct and breaches of the License Agreement and the implied covenant of good faith and fair dealing."