DCT

2:21-cv-07450

Koros USA Inc v. Gabriel Koros

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:21-cv-07450, C.D. Cal., 06/30/2022
  • Venue Allegations: Plaintiffs allege venue is proper because a substantial part of the events giving rise to the claims, including the performance of relevant agreements and the effects of the alleged conduct, occurred within the Central District of California.
  • Core Dispute: Plaintiffs allege that Defendant Gabriel Koros wrongfully removed Plaintiff Tibor Koros as a co-inventor from two design patents for medical rongeurs and seek correction of inventorship, alongside claims for trade secret misappropriation, breach of contract, and other business torts.
  • Technical Context: The dispute centers on the ornamental designs of surgical rongeurs, which are instruments used to remove bone or tissue in neuro, spine, and orthopedic surgeries.
  • Key Procedural History: The complaint alleges that the applications for both patents-in-suit were initially filed listing both Tibor Koros and Gabriel Koros as joint inventors. Following a breakdown in the parties' business relationship and the termination of Gabriel Koros's employment, Gabriel Koros allegedly removed Tibor Koros as an inventor from both applications before they issued as patents.

Case Timeline

Date Event
2019-09-13 U.S. Patent Application No. 29/705,576 ('980 Patent) filed
2019-09-20 U.S. Patent Application No. 29/706,553 ('210 Patent) filed
2020-02-15 Tibor Koros allegedly removed as inventor from '576 Application
2020-06-19 Gabriel Koros placed on paid leave from Koros U.S.A.
2020-09-24 Gabriel Koros's employment with Koros U.S.A. terminated
2020-10-05 USPTO issues Notice of Allowance for '576 Application
2020-11-18 USPTO issues Notice of Allowance for '553 Application
2021-02-15 Tibor Koros allegedly removed as inventor from '553 Application
2021-03-23 U.S. Patent No. D914,210 issues
2021-08-03 U.S. Patent No. D926,980 issues
2022-06-30 Plaintiffs file First Amended Complaint

II. Technology and Patent(s)-in-Suit Analysis

U.S. Design Patent No. D914,210 - Medical Rongeur

Issued March 23, 2021

The Invention Explained

  • Problem Addressed: Design patents address the need for a new, original, and ornamental design for an article of manufacture (D'210 Patent, Claim). The complaint does not describe a specific technical problem but rather alleges the creation of a novel design for a surgical instrument (Compl. ¶34).
  • The Patented Solution: The patent claims the specific visual appearance of a medical rongeur, characterized by its particular handle configuration, actuator shape, and overall aesthetic as depicted in the patent's figures (D'210 Patent, Figs. 1-7). The complaint alleges this ornamental design was the result of a collaborative effort between Tibor Koros and Gabriel Koros, involving iterative redesign and prototype testing (Compl. ¶¶32, 34-35).
  • Technical Importance: The underlying instruments, medical rongeurs, are used in sensitive surgical fields such as neuro, spine, and orthopedic surgery (Compl. ¶33).

Key Claims at a Glance

  • The patent contains a single claim for "The ornamental design for a medical rongeur, as shown and described" (D'210 Patent, Claim).

U.S. Design Patent No. D926,980 - Axis Rongeur

Issued August 3, 2021

The Invention Explained

  • Problem Addressed: The patent concerns the creation of a new, original, and ornamental design for a specific type of surgical instrument known as an "axis rongeur" (D'980 Patent, Claim).
  • The Patented Solution: The patent protects the unique ornamental design of an axis rongeur, distinguished by its scissor-style finger loops and overall visual configuration as illustrated in the patent's figures (D'980 Patent, Figs. 1-7). As with the '210 Patent, Plaintiffs allege that Tibor Koros significantly contributed to the conception and design of these ornamental features (Compl. ¶¶32, 34, 100).
  • Technical Importance: These instruments are identified as being used for neuro, spine, and orthopedic surgeries (Compl. ¶33).

Key Claims at a Glance

  • The patent contains a single claim for "the ornamental design for an axis rongeur, as shown and described" (D'980 Patent, Claim).

III. The Disputed Patents and Inventorship Allegations

Product Identification

The legal dispute centers on the inventorship and ownership of U.S. Design Patent Nos. D914,210 and D926,980.

Functionality and Market Context

The complaint alleges that Plaintiff Tibor Koros was a co-inventor of the designs claimed in the '210 and '980 Patents (Compl. ¶32). His alleged contribution included the "design of the ornamental features," involvement in "testing of prototypes," and participation in an "iterative redesign process" (Compl. ¶¶34-35). The complaint asserts that after his employment with Koros U.S.A. was terminated, Defendant Gabriel Koros, "without the knowledge or consent of Koros U.S.A., Tibor Koros, or anyone associated with Koros U.S.A.," removed Tibor Koros as an inventor from the pending patent applications (Compl. ¶¶38, 44). The complaint incorporates as Exhibit A a perspective view of the claimed design for the '210 patent (Compl. ¶39, Ex. A, Fig. 1). Similarly, the complaint's Exhibit B includes a perspective view of the claimed '980 patent design (Compl. ¶45, Ex. B, Fig. 1).

IV. Analysis of Inventorship Correction Allegations

The complaint does not allege patent infringement. Instead, it seeks to correct inventorship under 35 U.S.C. § 256. The central allegations are summarized below.

'210 Patent Inventorship Allegations

Element of Inventorship Claim Plaintiff's Allegation Complaint Citation
Contribution to Conception Tibor Koros "materially and significantly contributed to the conception, design, and reduction to practice of significant features of the invention," including "significant ornamental features of the design and the overall ornamentality of the design." ¶¶ 91, 34
Error in Naming Inventors Gabriel Koros removed Tibor Koros as an inventor from the '553 application on or about February 15, 2021, after his employment was terminated and without authorization. The removal is characterized as a "fraudulent and deceptive" act resulting in an incorrect inventorship. ¶¶ 38, 94
Lack of Deceptive Intent (by Omitted Party) The "error of removing and/or omitting Tibor Koros was done without any deceptive intention on the part of Tibor Koros." ¶ 93

'980 Patent Inventorship Allegations

Element of Inventorship Claim Plaintiff's Allegation Complaint Citation
Contribution to Conception Tibor Koros "materially and significantly contributed to the conception and reduction to practice of significant features of the invention," including "at least significant ornamental features of the design and the overall ornamentality of the design." ¶¶ 100, 34
Error in Naming Inventors Gabriel Koros removed Tibor Koros as an inventor from the '576 application on or about February 15, 2020, without authorization. The act is alleged to be "fraudulent and deceptive," leading to the patent issuing with an incorrect sole inventor. ¶¶ 44, 103
Lack of Deceptive Intent (by Omitted Party) The "error of removing and/or omitting Tibor Koros was done without any deceptive intention on the part of Tibor Koros." ¶ 102

Identified Points of Contention

  • Evidentiary Question: A central factual dispute will be whether Plaintiff can produce sufficient corroborating evidence to prove contribution to the "conception" of the claimed ornamental designs. The court's analysis may focus on distinguishing contributions to the visual appearance from contributions to the underlying instrument's functional aspects, such as those derived from "testing of prototypes" (Compl. ¶¶34-35).
  • Legal Question: The characterization of the "error" under 35 U.S.C. § 256 presents a key legal question. The court will need to determine if the alleged "fraudulent and deceptive acts" of Gabriel Koros in removing a co-inventor (Compl. ¶¶94, 103) constitute an "error" that is correctable under the statute, which was designed to address mistakes made without deceptive intent.

V. Key Claim Terms for Construction

The complaint does not provide sufficient detail for analysis of claim construction, as the dispute centers on inventorship rather than the scope of the design patent claims.

VI. Other Allegations

Allegations of Fraudulent Conduct in Patent Prosecution

The complaint does not allege indirect or willful infringement. Instead, the core of the patent-related counts is the allegation that Defendant Gabriel Koros engaged in "fraudulent and deceptive acts" by removing Tibor Koros as a co-inventor from the '210 and '980 patent applications after his employment was terminated and without any authority (Compl. ¶¶38, 44, 94, 103). These allegations form the basis of the request for inventorship correction under 35 U.S.C. § 256.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A primary issue will be one of evidentiary proof: Can Plaintiff Tibor Koros present clear and convincing evidence, with sufficient corroboration, to demonstrate that his contributions to "prototype testing" and "iterative redesign" rose to the level of co-inventing the specific, final ornamental designs claimed in the '210 and '980 patents?
  • The case will also turn on a question of statutory interpretation: Does the deliberate and allegedly "fraudulent" removal of a co-inventor from a patent application by another party constitute an "error" that can be corrected under 35 U.S.C. § 256, a statute traditionally aimed at correcting good-faith mistakes?
  • Finally, a key challenge for the court will be the entanglement of claims: How will the court weigh the evidence for inventorship correction when it is deeply embedded within a broader, acrimonious business dispute involving allegations of breach of fiduciary duty, conversion, and trade secret misappropriation between two brothers?