Novocure GmbH v. Fieldcure Co. Ltd.

I'll research this case across multiple sources.

Now let me dig into the complaint details, the defendant's background, and any related proceedings.

Let me pull the full complaint text and check for related/parallel proceedings and IPRs.

Case Overview

Parties. This is an operating-company-versus-startup case, not an NPE/PAE assertion. Plaintiff Novocure GmbH (Baar, Switzerland) is the Swiss IP-holding subsidiary of NovoCure Limited (Jersey; NASDAQ: NVCR), which markets Optune®, the only commercially available Tumor Treating Fields (TTFields) system — alternating electric fields at tumor-specific frequencies that disrupt mitosis in dividing cancer cells. Optune received FDA approval for recurrent glioblastoma in 2011 and newly diagnosed GBM in 2015 (later expanded to NSCLC after the LUNAR trial). Novocure's corporate disclosure statement in this case identifies Novocure Luxembourg S.à.r.l. and NovoCure Limited as parent entities (Doc. 8, Nov. 14, 2022). Defendant FieldCure Co., Ltd. (주식회사 필드큐어) is a small Seoul-based medical-device venture founded in October 2017 by Dr. Myonggeun Yoon (윤명근), a Korea University biomedical engineering professor and former medical physicist at the National Cancer Center's proton therapy center (Penn State physics PhD; ex-Samsung Electronics). Fieldcure sits in the Korea University technology-holding portfolio and co-files patents with the Korea University Research and Business Foundation; it develops an electric-field cancer therapy device (iMET) plus treatment-planning software. It is tiny relative to Novocure — Korean startup databases list roughly 14 employees, revenue under KRW 100 million, and a Series B round — and its products appear Korea-centric (MFDS "innovative medical device" designation for iMET), with no publicly documented U.S. FDA clearance. Notably, Fieldcure's CEO has publicly described collaborating academically with Novocure researchers before founding the company, and Novocure's complaint alleged Fieldcure was formed "to take advantage of Novocure's foundational TTFields research," pointing to Fieldcure's website touting Dr. Yoram Palti's work under "Core Technology" (Compl. ¶¶ 37–38).

Accused technology. The complaint targeted the "Fieldcure Device" — Fieldcure's TTFields therapy hardware — but the accused acts were unusually narrow: importing the device into the United States and using/displaying it at the Society for Neuro-Oncology (SNO) 27th Annual Meeting in Tampa, Florida, November 16–20, 2022, under 35 U.S.C. § 271(a). Novocure pleaded both present and impending infringement, alleging an actual case or controversy because Fieldcure had publicly stated it would exhibit at SNO and had already paid for booth space and made travel arrangements (Compl. ¶¶ 39, 57–59), and because Fieldcure had told Novocure its device had "virtually identical specifications" to Optune, making the design "substantially fixed, determinate" (¶ 58). Willfulness was premised on Fieldcure's Korean patent filings citing Novocure's patents (¶¶ 53, 64), i.e., knowledge inferred from prosecution citations.

Patents asserted (three counts). All three are Palti-invented, originally assigned to Standen, Ltd. (Novocure Limited's former name) and now held by Novocure GmbH:

• Count I — U.S. 7,136,699, "Apparatus for Destroying Dividing Cells" (issued Nov. 14, 2006; app. filed Oct. 2, 2002) — the foundational TTFields apparatus: applying alternating electric fields at selected frequencies/field strengths to a region of a patient's body to disrupt dividing cells.
• Count II — U.S. 8,715,203, "Composite Electrode" (issued May 6, 2014; filed Sept. 17, 2007) — the conductive/dielectric composite electrode structure that delivers the field through the skin.
• Count III — U.S. 7,715,921, "Electrodes for Applying an Electric Field In-Vivo Over an Extended Period of Time" (issued May 11, 2010; filed Dec. 5, 2005) — claim 1 (quoted verbatim at Compl. ¶ 61) covers a conductive substrate with open spaces to let moisture escape plus a thin dielectric coating with a dielectric constant of at least 1000 — i.e., the durable, sweat-managing electrode array designed for continuous multi-week wear.

Two of the three patents are therefore consumable/electrode patents rather than system patents, consistent with Novocure's practice of covering the repeatedly replaced electrode arrays. All three carry substantial patent term adjustment: per patent-face PTA data reported in commentary on the case, the '699 term was extended 564 days (to ~March 28, 2026), the '921 by 1,114 days (to ~Dec. 23, 2028), and the '203 by 1,219 days (to ~Jan. 18, 2031) — meaning the '699 patent has now expired, while the electrode patents run well into the next decade. That PTA tail is a real FTO trap for generics that compute term from the 20-year filing date.

Procedural Posture and Venue

Filed November 7, 2022 in the U.S. District Court for the Middle District of Florida, Tampa Division, assigned to Judge Virginia M. Hernandez Covington with Magistrate Judge Julie S. Sneed (Case No. 8:22-cv-2535-VMC-JSS); jury demand by plaintiff. Local lead counsel was Clay M. Carlton (Doc. 7), with pro hac vice appearances sought for Michael J. Abernathy, Michael T. Sikora, and Julie S. Goldemberg (Docs. 9–11), all granted on Nov. 17, 2022 (Docs. 12–14); the docket text does not itself state their firm, though Abernathy and Goldemberg are publicly associated with Morgan, Lewis & Bockius. The case did not survive three weeks. Novocure filed a notice of voluntary dismissal without prejudice on December 2, 2022 (Doc. 15), and Judge Covington entered an endorsed order dismissing the case without prejudice

I'll research this case and its surrounding context.

Now let me look for the full docket (CourtListener/RPX), any TRO/PI activity, and parallel PTAB proceedings.

Bottom line

This was a two-and-a-half-week "conference-stopping" case, not a merits litigation. Novocure filed a three-patent, six-count complaint two days before the SNO (Society for Neuro-Oncology) 2022 Annual Meeting in Tampa expressly to stop a Korean competitor from importing and displaying a competing TTFields device at the show. Fifteen days after the conference ended, Novocure voluntarily dismissed without prejudice. There is no answer, counterclaim, Rule 12 motion, Markman ruling, discovery, summary judgment practice, trial, or appeal — and I could find no parallel PTAB proceeding on any of the three asserted patents.

Note on sourcing up front: the docket below is drawn from the Justia docket mirror and RPX litigation records; I could not pull the PACER images themselves, so document content (as opposed to document titles) for anything other than the complaint is unverified. I flag inferences explicitly.

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Chronology of legal developments

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What did not happen (and why that matters)

Every category you asked about is empty, and the emptiness is the analytically interesting part:

• Answer / counterclaims / Rule 12(b) motion: Fieldcure never appeared. There is no answer, no motion to dismiss for lack of personal jurisdiction or improper venue (which would have been Fieldcure's obvious play as a Korean company whose only U.S. contact was a trade-show booth), and no counterclaims for declaratory judgment of invalidity or non-infringement. Novocure dismissed roughly 25 days after filing, well before any responsive-pleading deadline would have run.
• Transfer / stay pending IPR: none sought, none decided.
• Markman / claim construction: the case never reached a scheduling order or a § 4 patent-track order, let alone a Markman hearing. No claim terms were construed, so the '921 "dielectric constant of at least 1000" limitation and the "open spaces" / moisture-escape limitations remain unconstrued by any court.
• Discovery: no Rule 26(f) conference, no initial disclosures, no infringement or invalidity contentions, no ESI order. The only "evidence" was Novocure's own pre-suit collection of Fieldcure's website content, photographs from the 2022 WFNOS meeting in Korea, and Fieldcure's Korean patent filings.
• Summary judgment, trial, verdict, JMOL, new trial, § 285 fees: none. No merits ruling of any kind.
• Appeal: none. The dismissal was without prejudice and unappealable as a practical matter (a plaintiff cannot appeal a dismissal it requested).
• Damages / injunction: nothing awarded, nothing enjoined by court order.

Parallel PTAB proceedings

I found no IPR, PGR, or CBM proceeding on US 7,136,699, 7,715,921, or 8,715,203. Nothing in the docket references a PTAB matter, and no AIA review of these patents surfaced in my searches. Two caveats on that finding: (1) a PTAB proceeding would be captioned against the record owner, Novocure Limited (not Novocure GmbH), which complicates name-based searching; and (2) these are 2002–2007 priority patents, so the § 315(b) one-year bar and the AIA transition rules mean any IPR window against a party who was served in 2022 would have opened only after service — i.e., 2022-11-07 onward — so Fieldcure (or a straw petitioner) could have filed an IPR as late as November 2023. I could not confirm whether any such petition was ever filed. Treat the "no IPR" conclusion as a negative search result, not a verified absence.

There was also no reexamination triggered by the Doc. 6 Patent Report on the public record, and no ITC § 337 investigation — which is the forum Novocure would more naturally have used against an importer, and its absence reinforces that this filing was about the trade show rather than about excluding Fieldcure from the U.S. market.

Assessment

Three points of strategic significance:

1. The pleading was a pressure instrument, not a litigation plan. The complaint's own jurisdictional theory was built on a calendar: "will import... to display at the SNO Conference to be held in this District from November 16–20." Filing on November 7 with a jury demand, willfulness allegations, and a DJ count, then dismissing on December 2 — twelve days after the conference closed — is the signature of a filing designed to create enough exposure (willfulness, enhanced damages, an injunction threat hanging over an exhibitor) to deter a competitor's U.S. debut, without any intent to litigate to judgment.

2. The dismissal leaves zero legal precedent and no estoppel. Dismissal without prejudice under Rule 41(a)(1)(A)(i) means no res judicata, no issue preclusion, and no § 315(e) estoppel. Novocure can refile on these patents against Fieldcure — or anyone else — tomorrow. Fieldcure obtained no adjudication of invalidity or non-infringement and no fee award, so it also gained no protection beyond the immediate commercial objective.

3. Patent-term posture is the real leverage question. According to a secondary Chinese-language analysis of the complaint (not a court record — verify against USPTO Patent Center before relying on it), all three patents carry substantial Patent Term Adjustment: the '921 runs to 2028-12-23 (1,114 days PTA) and the '203 to 2031-01-18 (1,219 days PTA), while the '699's 564 days of PTA had already run out, making it the weakest of the three. That would explain why the '921 and '203 electrode claims — not the older field-therapy claims — carried the real weight in the infringement charts. If Novocure refiles, expect the '921 and '203 to be the asserted vehicles and the '699 to be dropped or used only for willfulness narrative.

Practical takeaway for monitoring: because the dismissal was without prejudice and no PTAB petition appears to have been filed, this docket is best treated as dormant-but-live. The things worth watching are (a) a refiled M.D. Fla. complaint by Novocure GmbH against Fieldcure or other TTFields entrants, (b) any IPR petition filed against the '921 or '203 by 2023-11-07 (the § 315(b) anniversary of service), and (c) any ITC § 337 action, which would be the more coherent vehicle for Novocure's importation theory.

I'll research the counsel of record for Novocure GmbH in this case.

I have the docket. Now let me identify the firms and roles.

Counsel of Record for Plaintiff Novocure GmbH

Bottom line: Four attorneys appeared for Novocure GmbH before the case was voluntarily dismissed on December 2, 2022. One Florida-bar attorney was formally designated lead counsel under M.D. Fla. Local Rule 2.02(a); the other three were admitted pro hac vice and never had a merits role because the case ended 15 days after they were admitted. All appearances are documented on the docket (Dkt. 3, 4, 7, 9–14).

1. Clay M. Carlton — Lead Counsel (designated)

• Firm / office: Morgan, Lewis & Bockius LLP — Miami, FL (matching the docket's e-filer signature "Carlton, Clay"). Possibly elsewhere in Nov. 2022 — see verification note below.
• Docket basis: Dkt. 7, "NOTICE of Lead Counsel Designation… Lead Counsel: Clay M. Carlton" (Nov. 10, 2022); he signed the notice of voluntary dismissal (Dkt. 15) and each of the three pro hac vice motions (Dkt. 9–11).
• Note: Florida litigator whose practice is primarily commercial/business disputes, class actions, consumer fraud, and product liability, with Eleventh Circuit and S.D./M.D./N.D. Fla. admissions — i.e., he functioned as the local/lead-of-record lawyer for a case filed in Tampa on the eve of the SNO conference, not as the patent-law specialist. (Morgan Lewis bio; Law360 attorney page.)

2. Michael J. Abernathy — Non-resident counsel (pro hac vice)

• Firm / office: Not verified in this research — see caveat below. He is a nationally known patent litigator (life sciences/medical device), long associated with McDermott Will & Emery in Chicago; I could not confirm his firm at the time of this November 2022 filing.
• Docket basis: Dkt. 10 (motion, Nov. 15, 2022); Dkt. 13 (order granting, Nov. 17, 2022); Dkt. 4 (clerk's Local Rule 2.01(c) notice to him as non-resident counsel).
• Note: Of the three pro hac vice entrants, this is the name most consistent with a lead trial-lawyer role on a pharmaceutical/device patent case; the docket does not designate him as lead trial counsel, and no substantive papers were filed by him before dismissal.

3. Julie S. Goldemberg — Non-resident counsel (pro hac vice)

• Firm / office: Morgan, Lewis & Bockius LLP — Philadelphia, PA.
• Docket basis: Dkt. 11 (motion, Nov. 15, 2022); Dkt. 14 (order granting, Nov. 17, 2022). Justia's attorney listing credits her as counsel of record for Novocure GmbH in this case.
• Note: Trial and appellate patent lawyer (electrical engineering background); leads Morgan Lewis's Federal Circuit practice, 60+ Federal Circuit appeals, formerly clerk for Chief Judge Sharon Prost; Chambers "Up and Coming" in IP Appellate and Law360 Rising Star (2021). Her presence fits Novocure's pattern of staffing an appellate-capable team given the case's likely § 271(a)/importation and injunctive-relief posture.

4. Michael T. Sikora — Non-resident counsel (pro hac vice)

• Firm / office: Not verified in this research; docket does not state firm (see caveat).
• Docket basis: Dkt. 9 (motion, Nov. 15, 2022); Dkt. 12 (order granting, Nov. 17, 2022); Dkt. 4 (clerk's non-resident counsel notice).
• Note: No substantive docket activity identified beyond the admission.

What the record does not show

• No in-house counsel for Novocure appeared on the docket.
• No counsel for Fieldcure Co. Ltd. ever appeared; no answer, motion, or waiver of service appears before dismissal (Dkt. 16, endorsed order dismissing without prejudice under the Dkt. 15 notice).
• No sealed filings on the docket, and no merits rulings on infringement, validity, or enforceability.
• Firm affiliations of Abernathy and Sikora are not stated on the face of the Justia/RPX docket entries I retrieved; the pro hac vice motions (Dkt. 9–10) are the operative source and would list their firm addresses. I was unable to retrieve those filings, so I am not asserting their firms. Do not treat the "McDermott" association sometimes seen for Abernathy as confirmed for this filing without pulling Dkt. 9–10 from PACER.

Suggested next verification steps

1. Pull Dkt. 1 (complaint signature block) and Dkt. 9–11 from PACER — these give firm names, addresses, and bar numbers for all four lawyers as of November 2022.
2. Check each attorney's state-bar / firm bio history for a lateral move between Nov. 2022 and today (Carlton's current Morgan Lewis Miami listing and Goldemberg's Morgan Lewis Philadelphia listing post-date the filing; confirm they were at that firm, or a predecessor, on 11/7/2022).

Bottom line

No attorney ever appeared on behalf of Fieldcure Co. Ltd. in this action. The docket for Novocure GmbH v. Fieldcure Co. Ltd., No. 8:22-cv-02535-VMC-JSS (M.D. Fla.), contains zero defendant-side entries — no notice of appearance, no pro hac vice motion, no answer, no Rule 12 motion, no counsel designation, no corporate disclosure statement. The case was filed November 7, 2022, summons issued November 9, 2022, and the plaintiff voluntarily dismissed under Rule 41(a)(1) on December 2, 2022 — 25 days after filing and well before any appearance or responsive deadline for a foreign defendant. The clerk closed the case the same day via endorsed order (Dkt. 16).

Because there was no appearance, there is no "counsel of record" to identify, and I will not infer or invent one. Nothing in the record names a firm, in-house lawyer, or local counsel for Fieldcure.

What the record actually shows (all 16 docket entries)

Source: Justia docket snapshot, https://dockets.justia.com/docket/florida/flmdce/8:2022cv02535/[407589](/patent/407589) (docket last retrieved 12/2/2022); mirrored at RPX Empower, https://litigation.rpxcorp.com/litigation/flmdce-407589-novocure-v-fieldcure.

Why no defense appearance makes sense

• Timing. Filed 11/7/2022, one week before the SNO Annual Meeting (Tampa, Nov. 16–20, 2022), which is where the complaint alleged Fieldcure would import and display its TTFields device. The complaint was a conference-timed filing seeking to precipitate an actual controversy. See Complaint ¶¶ 39, 57–59, https://insight.rpxcorp.com/litigation_documents/14996925.
• Foreign defendant. Fieldcure Co. Ltd. is a Korean company (a Korea University–affiliated TTFields venture); service under the Hague Convention would have consumed 60–90+ days, and the Rule 12 response deadline had not run before dismissal.
• No contested proceeding. The dismissal was unopposed and self-executing under Rule 41(a)(1)(A)(i); the court's December 2 order is the last entry and the case is terminated. The summary's framing (no merits ruling on infringement, validity, or enforceability) is confirmed.

Caveats / sourcing limits

• I could not query PACER directly in this session; the fullest docket available to me is the Justia/RPX snapshot whose last retrieval was December 2, 2022, plus the complaint document. Given the case closed that day, I have no basis to expect later defendant-side entries, but I cannot rule out a post-snapshot clerk's entry (e.g., a service-return notation). Treat "no defense counsel of record" as well supported by the available docket, not as certified against live PACER.
• Fieldcure may well have engaged U.S. or Korean counsel outside the record (typical for a conference-driven dispute resolved by withdrawal), but no filing, press release, Law360/Reuters report, or firm website attribution surfaced identifying any such lawyer. Any name offered for that role would be speculation, so I am not providing one.
• For completeness and to demonstrate the docket is plaintiff-only: the appearing attorneys were all Morgan, Lewis & Bockius LLP — Clay M. Carlton (Miami, lead counsel of record, Dkt. 7), Julie S. Goldemberg (Philadelphia), Michael J. Abernathy and Michael T. Sikora (Chicago) — all designated "Attorneys for Plaintiff Novocure GmbH" in the complaint signature block. None represents the defendant.