Case: 4:20-cv-01405 Doc.

#: 1 Filed: 09/30/20 Page: 1 of 9 PageID #: 1

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION

ORTHO SOLUTIONS, LC, )

)
Plaintiff, )
)
vs. ) Case No. 20-cv-01405
)
KI BEOM KIM, )
) JURY TRIAL DEMANDED
Defendant.
)
)

COMPLAINT FOR DECLARATORY JUDGMENT

Plaintiff Ortho Solutions, LC (“Plaintiff” or “Ortho Solutions”), brings this declaratory

judgment action against Ki Beom Kim (“Defendant” or “Kim”), pursuant to Rule 57 of the

Federal Rules of Civil Procedure and 28 U.S.C. § 2201 and alleges as follows:

PARTIES

1. Plaintiff Ortho Solutions, LC is a Missouri limited liability company having a

principal place of business at 10403 International Plaza Drive, St. Ann, Missouri 63074.

2. Upon information and belief, Defendant Kim is a resident and citizen of St. Louis

County, Missouri.

JURISDICTION AND VENUE

3. This action arises under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and

2202; the Patent Laws of the United States, 35 U.S.C. §§ 101 et seq.; and Missouri state law.

This Court has jurisdiction over the subject matter of this action pursuant to 28 U.S.C. §§ 1331,

1338(a), and 1367(a).

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4. This Court has personal jurisdiction over Defendant Kim in that Kim has

performed acts within the Eastern District of Missouri subjecting himself to the laws of this

District, including attempting to transact and transacting business in this District; transmitting

electronic, written and verbal communications into this District; and meeting in person with

Plaintiff Ortho Solutions in this District, all relating to the underlying allegations.

5. Venue is proper in this District pursuant to 28 U.S.C. § 1391(b), in that a

substantial part of the events or omissions giving rise to the claim occurred in this District, in that

a substantial part of the property that is the subject of this action is situated in this District

(namely the patents in question), and in that Defendant Kim resides or can be otherwise found in

this District by virtue of the acts identified above.

NATURE OF THE CASE

6. This is a declaratory judgment action seeking a ruling that Darren Buddemeyer

(“Buddemeyer”) and Matthew Malabey (“Malabey”) are the true and proper inventors of the

subject matters of the claims of the patents at issue, that Plaintiff Ortho Solutions is the sole and

exclusive owner of said patents by right of assignment from Buddemeyer and Malabey, that

Plaintiff Ortho Solutions did not engage in any misrepresentations or fraud in connection with

the filing and issuance of said patents, that Plaintiff Ortho Solutions was not unjustly enriched by

the filing and issuance of said patents, and that Plaintiff Ortho Solutions does not owe any

monies to Defendant Kim in connection with said patents or otherwise.

7. Plaintiff Ortho Solutions is an industry leader in high quality manufactured

orthodontic products and dental sleep medicine products, with a full service orthodontic

laboratory manufacturing the highest quality orthodontic appliances in the industry.

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8. As part of its industry-leading practices, Ortho Solutions has obtained multiple

patents relating to its unique and novel orthodontic products and dental sleep medicine products,

with Buddemeyer and Malabey named as inventors on said patents.

9. In 2016, Buddemeyer (Ortho Solutions’ CEO) and Malabey (Ortho Solutions’

Director of Operations) met and discussed with Kim certain ideas relating to the design of a self-

ligating bracket for orthodontic purposes.

10. The design presented by Kim to Ortho Solutions ultimately proved inoperable for

its intended purposes.

11. Accordingly, Buddemeyer and Malabey jointly conceived of and designed a new

orthodontic post and pin assembly that was operable for its intended purposes.

12. Buddemeyer and Malabey filed patent applications for their inventions and

assigned their rights in their inventions to Ortho Solutions.

13. As a result, the United States Patent and Trademark Office duly issued two

patents to Ortho Solutions, namely U.S. Patent No. D848,001 (issued on May 7, 2019) (“the ‘001

Patent”), and U.S. Patent No. 10,456,219 (issued on October 29, 2019) (“the ‘219 Patent”)

(collectively “the Ortho Solutions Patents”). See Exhibits A and B attached hereto. Of particular

note and importance, the Ortho Solutions patents did not claim the inoperable design presented

to Ortho Solutions by Kim.

14. In February 2020, Kim filed a lawsuit against Dyna Flex, Ltd. in the Circuit Court

of the City of St. Louis, captioned Ki Beom Kim v. Dyna Flex, Ltd., Cause No. 2022-CC00363.

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However, Dyna Flex, Ltd. is not the record owner of the patents Kim references as the basis for

his lawsuit and therefore that case is subject to dismissal for failure to state a claim. 1

15. In his litigation against Dyna Flex, Ltd., Kim made court statements that he was

improperly excluded as an inventor on the Ortho Solutions Patents and that he should be

assigned ownership and control of at least the ‘219 Patent. By these statements, Kim implied

that the inventorship of the Ortho Solutions Patents requires correction, but notably omitted any

reference to the exclusive vehicle for such correction, namely 35 U.S.C. § 256.

16. In that litigation, Kim made court statements that the actions taken with respect to

the Ortho Solutions Patents included misrepresentations amounting to fraud and that the

ownership and control of at least the ‘219 Patent by anyone other than Kim constitutes an unjust

enrichment.

COUNT I – DECLARATORY JUDGMENT OF PATENT INVENTORSHIP

17. Ortho Solutions incorporates by reference Paragraphs 1 through 16 as if fully set

forth herein.

18. The inventions claimed in the Ortho Solutions Patents relate to a novel design for

an orthodontic post and pin assembly. The inventions claimed in the Ortho Solutions Patents

were developed and conceived jointly and solely by Buddemeyer and Malabey.

19. Buddemeyer and Malabey are the true and proper inventors of the subject matter

of the claims of the Ortho Solutions Patents as issued, as indicated on the Patents.

20. Ortho Solutions holds a recognized ownership interest in the Ortho Solutions

Patents that could be adversely affected by an action brought by Kim under 35 U.S.C. § 256 to

correct inventorship of the Ortho Solutions Patents, including exclusion of either or both of

1Plaintiff Ortho Solutions has a fictitious name registration for “DynaFlex” (with no
space between “Dyna” and “Flex”) but it is a separate legal entity from Dyna Flex, Ltd.

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Buddemeyer and Malabey as inventors and thereby seeking to extinguish or diminish Ortho

Solutions’ ownership interest in the Ortho Solutions Patents.

21. In his litigation against Dyna Flex, Ltd., Kim made court statements that he was

improperly excluded as an inventor on the Ortho Solutions Patents and that he should be

assigned ownership and control of the Ortho Solutions Patents, thereby creating in Ortho

Solutions a reasonable apprehension that Kim will bring an action under 35 U.S.C. § 256 to

correct inventorship of the Ortho Solutions Patents, including exclusion of either or both of

Buddemeyer and Malabey as inventors and thereby seeking to extinguish or diminish Ortho

Solutions’ ownership interest in the Ortho Solutions Patents.

22. An actual controversy exists between Ortho Solutions and Kim with respect to the

inventorship of the Ortho Solutions Patents, which controversy is substantial and of sufficient

immediacy and reality.

23. Accordingly, Plaintiff Ortho Solutions seeks a declaratory judgment that

inventorship of the Ortho Solutions Patents is correctly identified and that Kim should not be

named as an inventor on either of the Ortho Solutions Patents.

COUNT II – DECLARATORY JUDGMENT OF NO FRAUD

24. Ortho Solutions incorporates by reference Paragraphs 1 through 23 as if fully set

forth herein.

25. In his litigation against Dyna Flex, Ltd., Kim made court statements that the

actions taken with respect to the Ortho Solutions Patents included misrepresentations amounting

to fraud.

26. In particular, Kim made court statements that the intention to exclude him from

patent filings was withheld from him; that the status of Kim’s design was misrepresented to him;

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that the amount of compensation to Kim was misrepresented to him; that the status of patent

filings was misrepresented to him; and that Kim received assurances that he would be named as

an inventor on patent applications and filings but was not.

27. Kim also made court statements that these alleged actions amount to fraud under

Missouri law and that he is entitled to relief to include actual damages, costs and expenses, and

punitive damages.

28. Ortho Solutions denies that it has made any statements that constitute fraud under

Missouri law and further denies that Kim is entitled to any of his requested relief, because,

among other things, Buddemeyer and Malabey are the true and proper inventors of the subject

matter of the claims of the Ortho Solutions Patents as issued and as indicated on the Ortho

Solutions Patents, such that Kim had no right to be named as an inventor on the Ortho Solutions

Patents or to be compensated in association therewith.

29. An actual controversy exists between Ortho Solutions and Kim with respect to

any alleged fraud or misrepresentations relating to the Ortho Solutions Patents, which

controversy is substantial and of sufficient immediacy and reality.

30. Accordingly, Plaintiff Ortho Solutions seeks a declaratory judgment that Ortho

Solutions did not engage in any fraud with respect to Kim and the Ortho Solutions Patents,

including a declaration that Kim is not entitled to any relief, actual damages, costs and expenses,

or punitive damages.

COUNT III – DECLARATORY JUDGMENT OF NO UNJUST ENRICHMENT

31. Ortho Solutions incorporates by reference Paragraphs 1 through 30 as if fully set

forth herein.

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32. In his litigation against Dyna Flex, Ltd., Kim made court statements that the

ownership and control of at least the ‘219 Patent by anyone other than Kim constitutes an unjust

enrichment.

33. In particular, Kim made court statements that at least the ‘219 Patent was based

on his design and that products were manufactured and sold based on Kim’s design, that at least

the ‘219 Patent could not have been independently developed, and that it would be unjust

enrichment for anyone other than Kim to own and control at least the ‘219 Patent.

34. Kim also made court statements that these alleged actions amount to unjust

enrichment under Missouri law and that he is entitled to relief to include actual damages, costs

and expenses, punitive damages, ownership and control of at least the ‘219 Patent as well as any

continuations or other patents or intellectual or personal property based on Kim’s design, and

injunctive relief.

35. Ortho Solutions denies that it has been unjustly enriched under Missouri law by

Kim and further denies that Kim is entitled to any of his requested relief, because, among other

things, Buddemeyer and Malabey are the true and proper inventors of the subject matter of the

claims of the Ortho Solutions Patents as issued, as indicated on the Patents, such that Kim had no

right to be named as an inventor on the Ortho Solutions Patents or to be compensated in

association therewith.

36. An actual controversy exists between Ortho Solutions and Kim with respect to

any alleged unjust enrichment relating to the Ortho Solutions Patents, which controversy is

substantial and of sufficient immediacy and reality.

37. Accordingly, Plaintiff Ortho Solutions seeks a declaratory judgment that Ortho

Solutions was not unjustly enriched by Kim with respect to the Ortho Solutions Patents,

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including a declaration that Kim is not entitled to any relief, actual damages, costs and expenses,

punitive damages, ownership and control of at least the ‘219 Patent as well as any continuations

or other patents or intellectual or personal property purportedly based on Kim’s design, or

injunctive relief.

JURY TRIAL REQUEST

Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Plaintiff Ortho Solutions

demands a jury trial on all issues so triable.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff Ortho Solutions asks for judgment as follows:

1. That the Court declare that the inventorship of the Ortho Solutions Patents is

correctly identified and that Kim should not be named as an inventor on either of the Ortho

Solutions Patents;

2. That the Court declare that Ortho Solutions did not engage in any fraud with

respect to Kim and the Ortho Solutions Patents, including that Defendant Kim is not entitled to

any relief, actual damages, costs and expenses, or punitive damages.

3. That the Court declare that Ortho Solutions was not unjustly enriched by Kim

with respect to the Ortho Solutions Patents, including a declaration that Kim is not entitled to any

relief, actual damages, costs and expenses, punitive damages, ownership and control of at least

the ‘219 Patent as well as any continuations or other patents or intellectual or personal property

purportedly based on Kim’s design, or injunctive relief;

4. That Plaintiff be awarded costs and attorneys’ fees pursuant to applicable law; and

5. That Plaintiff Ortho Solutions be awarded such other and further relief as the

Court deems just and appropriate.

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Dated: September 30, 2020 LEWIS RICE LLC

By: /s/ Michael J. Hickey

Michael J. Hickey, #47136 (MO)
Bridget G. Hoy, #50733 (MO)

600 Washington Avenue, Suite 2500

St. Louis, Missouri 63101
Telephone: (314) 444-7600
Facsimile: (314) 241-6056
Email: mhickey@lewisrice.com
bhoy@lewisrice.com

Attorneys for Plaintiff Ortho Solutions, LC

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EXHIBIT A
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EXHIBIT B
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Case: 4:20-cv-01405 Doc. #: 1-2 Filed: 09/30/20 Page: 5 of 11 PageID #: 16
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Case: 4:20-cv-01405 Doc. #: 1-2 Filed: 09/30/20 Page: 8 of 11 PageID #: 19
Case: 4:20-cv-01405 Doc. #: 1-2 Filed: 09/30/20 Page: 9 of 11 PageID #: 20
Case: 4:20-cv-01405 Doc. #: 1-2 Filed: 09/30/20 Page: 10 of 11 PageID #: 21
Case: 4:20-cv-01405 Doc. #: 1-2 Filed: 09/30/20 Page: 11 of 11 PageID #: 22
 Case: 4:20-cv-01405 Doc. #: 1-3 Filed: 09/30/20 Page: 1 of 1 PageID #: 23

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION
ORTHO SOLUTIONS, LC, )
)
)
Plaintiff, )
)
v. ) Case No. 20-cv-01405
KI BEOM KIM, )
)
)
Defendant. )
)

ORIGINAL FILING FORM

THIS FORM MUST BE COMPLETED AND VERIFIED BY THE FILING PARTY

WHEN INITIATING A NEW CASE.

THIS SAME CAUSE, OR A SUBSTANTIALLY EQUIVALENT COMPLAINT, WAS

PREVIOUSLY FILED IN THIS COURT AS CASE NUMBER

AND ASSIGNED TO THE HONORABLE JUDGE

THIS CAUSE IS RELATED, BUT IS NOT SUBSTANTIALLY EQUIVALENT TO ANY

PREVIOUSLY FILED COMPLAINT. THE RELATED CASE NUMBER IS AND

THAT CASE WAS ASSIGNED TO THE HONORABLE . THIS CASE MAY,

THEREFORE, BE OPENED AS AN ORIGINAL PROCEEDING.

NEITHER THIS SAME CAUSE, NOR A SUBSTANTIALLY EQUIVALENT

COMPLAINT, HAS BEEN PREVIOUSLY FILED IN THIS COURT, AND THEREFORE

MAY BE OPENED AS AN ORIGINAL PROCEEDING.

The undersigned affirms that the information provided above is true and correct.

Date: 09/30/2020 /s/ Michael J. Hickey

Signature of Filing Party
Lewis Rice LLC
600 Washington Ave., Suite 2500
St. Louis, MO 63101
Tel: (314) 444-7600

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 Case: 4:20-cv-01405 Doc. #: 1-4 Filed: 09/30/20 Page: 1 of 2 PageID #: 24
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 Case: 4:20-cv-01405 Doc. #: 1-5 Filed: 09/30/20 Page: 1 of 2 PageID #: 26

AO 440 (Rev. 12/09) Summons in a Civil Action

UNITED STATES DISTRICT COURT

for the
Eastern District
__________ Districtof
ofMissouri
__________

ORTHO SOLUTIONS, LC
)
)
Plaintiff
)
v. ) Civil Action No. 20-cv-01405
KI BEOM KIM )
)
Defendant
)

SUMMONS IN A CIVIL ACTION

To: (Defendant’s name and address) Ki Beom Kim

5 Dartford Avenue
St. Louis, MO 63105

A lawsuit has been filed against you.

Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you
are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff’s attorney,
whose name and address are: Michael J. Hickey
Bridget G. Hoy
Lewis Rice LLC
600 Washington Ave., Suite 2500
St. Louis, MO 63101

If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
You also must file your answer or motion with the court.

CLERK OF COURT

Date:
Signature of Clerk or Deputy Clerk
 Case: 4:20-cv-01405 Doc. #: 1-5 Filed: 09/30/20 Page: 2 of 2 PageID #: 27

AO 440 (Rev. 12/09) Summons in a Civil Action (Page 2)

Civil Action No. 20-cv-01405

PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))

This summons for (name of individual and title, if any)

was received by me on (date) .

u I personally served the summons on the individual at (place)

on (date) ; or

u I left the summons at the individual’s residence or usual place of abode with (name)
, a person of suitable age and discretion who resides there,
on (date) , and mailed a copy to the individual’s last known address; or

u I served the summons on (name of individual) , who is

designated by law to accept service of process on behalf of (name of organization)
on (date) ; or

u I returned the summons unexecuted because ; or

u Other (specify):
.

My fees are $ for travel and $ for services, for a total of $ 0.00 .

I declare under penalty of perjury that this information is true.

Date:
Server’s signature

Printed name and title

Server’s address

Additional information regarding attempted service, etc: