Digitech Image Technologies LLC v. Newegg Inc et al

Filing 38

ORDER by Judge Otis D. Wright, II: granting 30 Counter defendant Acacia Motion to Dismiss Counter Defendant Acacia Research Corporation for lack of subject matter jurisdiction. (lc). Modified on 5/3/2013 (lc). Modified on 5/3/2013 (lc).

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O 1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 11 DIGITECH IMAGE TECHS., LLC, 12 13 14 v. Case No. 2:12-cv-01688-ODW (MRWx) ORDER GRANTING ACACIA RESEARCH CORP.’S MOTION TO DISMISS [30] Plaintiffs, NEWEGG INC. and NEWEGG.COM INC., 15 Defendants, 16 17 NEWEGG INC., Counter-Plaintiff, 18 19 20 21 22 v. DIGITECH IMAGE TECHNS., LLC, and ACACIA RESEARCH CORP., Counter-Defendants. 23 24 I. INTRODUCTION 25 Acacia Research Corporation moves to dismiss itself as a defendant in this case 26 for a lack of subject-matter jurisdiction or, in the alternative, for Digitech’s failure to 27 state a claim. Because Acacia has no legal interest in U.S. Patent No. 6,128,415 28 Patent and, consequently, would not have standing to sue for infringement, the Court 1 finds that that there is no controversy sufficient to confer jurisdiction under the 2 Declaratory Judgment Act. 3 dismiss for lack of subject-matter jurisdiction.1 II. 4 The Court therefore GRANTS Acacia’s motion to FACTUAL BACKGROUND 5 On October 2, 2012, Digitech, the present owner of the ’415 Patent, sued 6 Newegg for patent infringement. (Compl. ¶ 7.) Acacia, Digitech’s ultimate parent 7 company,2 was not a party to the initial Complaint. (See Compl. 1.) Rather, Acacia 8 was brought into this case on October 25, 2012, when Newegg counterclaimed against 9 Digitech and Acacia. (ECF No. 16.) Newegg’s counterclaim seeks a declaratory 10 judgment of noninfringement and invalidity of the ’415 Patent. (Id.) 11 Newegg alleges that the Court has subject-matter jurisdiction over Acacia under 12 the Declaratory Judgment Act. (Answer ¶ 6.) In support of this contention, Newegg 13 asserts that the parent-subsidiary relationship between Acacia and Digitech creates a 14 controversy sufficient to confer standing under the Act. (Id.) Specifically, Newegg 15 argues that Acacia has an interest—which it styles an “equity interest”—in the 16 ’415 Patent because Acacia “has an ownership interest in Digitech directly or 17 indirectly.” (Id. ¶ 7.) Newegg claims that this equity interest creates a justiciable 18 controversy between the parties, thus making Acacia a proper counter-defendant. 19 (Opp’n 5.) 20 Newegg alleges three facts to support Acacia’s alleged equity interest: 21 (1) Digitech is a subsidiary of Acacia; (2) Digitech and Acacia share the same 22 physical address and place of business; and (3) Acacia stated in a press release filed 23 1 24 25 26 27 28 Having carefully considered the papers filed in support of and in opposition to Acacia’s Motion to Dismiss, the Court deems this case appropriate for decision without oral argument. Fed. R. Civ. P. 78; L.R. 7-15. 2 According to the counterclaim, Digitech is “a wholly-owned subsidiary of Acacia Research Corporation or otherwise affiliated.” (ECF No. 16 at ¶ 5.) Acacia notes in its motion that in actuality, Digitech is a wholly owned subsidiary of Acacia Research Group, which is, in turn, a wholly owned subsidiary of Acacia Research Corporation. (Mot. 3.) This information goes outside of the pleadings, but the Court notes that the result in this action is the same whether Digitech is a subsidiary of Acacia, or Acacia’s subsidiary’s subsidiary. 2 1 with the Securities and Exchange Commission that “in May 2012 [Acacia and its 2 affiliates] acquired patents, originally issued to Polaroid, covering digital imaging and 3 related technologies.” 4 counterclaim that address Acacia’s relationship to the ’415 Patent. Notably, Newegg 5 does not allege that Acacia is the owner, assignee, or exclusive licensee of the 6 ’465 Patent. (See id.) (ECF No. 16.) III. 7 These are the only allegations in the LEGAL STANDARD 8 The purpose of the Declaratory Judgment Act in patent cases is to provide the 9 allegedly infringing party relief from uncertainty and delay regarding its legal rights. 10 Micron Tech., Inc. v. Mosaid Techs., Inc., 518 F.3d 897, 902 (Fed. Cir. 2008). But the 11 Act “is not an independent basis for subject-matter jurisdiction.” Prasco, LLC v. 12 Medicis Pharm. Corp., 537 F.3d 1329, 1335 (Fed. Cir. 2008). Rather, the Act affords 13 a remedy only “if the court has jurisdiction from some other source.” 14 Additionally, the party instituting the declaratory action must have standing to bring 15 suit, and the issue presented to the Court must be ripe. Teva Pharm. USA, Inc. v. 16 Novartis Pharm. Corp., 482 F.3d 1330, 1337 (Fed. Cir. 2007). 17 A. Id. Subject-matter jurisdiction under the Declaratory Judgment Act 18 The Declaratory Judgment Act provides that in the case of “an actual 19 controversy within its jurisdiction . . . any court of the United States . . . may declare 20 the rights and other legal relations of any interested party seeking such declaration, 21 whether or not further relief is or could be sought.” 28 U.S.C. § 2201(a). The 22 situations in which a potential infringer may challenge the validity of a patent via 23 declaratory judgment are thus limited: 24 jurisdiction under the Act only when the claim presents an actual controversy. U.S. 25 Const. art. III, § 2. A court may exercise subject-matter 26 In the patent context, an actual controversy exists where “the facts alleged show 27 a substantial controversy, between parties having adverse legal interests, of sufficient 28 immediacy and reality to warrant the issuance of a declaratory judgment.” 3 1 MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007). The 2 declaratory-judgment plaintiff bears the burden of proving that there is an actual 3 controversy. Fina Research, S.A. v. Baroid Ltd., 141 F.3d 1479, 1481 (Fed. Cir. 4 1998). Moreover, even if an actual controversy exists, the exercise of jurisdiction 5 rests within the sound discretion of the district court. Id. 6 B. Standing under the Declaratory Judgment Act 7 Standing to sue is a threshold requirement in every federal action and must be 8 present at the time suit is brought. Lujan v. Defenders of Wildlife, 504 U.S. 555, 560 9 (1992); Sicom Sys. Ltd. v. Agilent Techs., Inc., 427 F.3d 971, 975–76 (Fed. Cir. 2005). 10 Section 281 of the Patent Act provides that “a patentee shall have remedy by civil 11 action for infringement of his patent.” 35 U.S.C. § 281. The term “patentee” includes 12 the patentee to whom the patent was issued, as well as the patentee’s successors in 13 title. 35 U.S.C. § 100(d). Section 281 of the Patent Act, in conjunction with the 14 definition of “patentee,” requires that a patent-infringement suit be brought by a party 15 holding legal title to the patent. Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574, 16 1578–79 (Fed. Cir. 1991). Thus, only patentees, assignees, and exclusive licensees 17 have standing to bring infringement suits. 35 U.S.C. § 281; Sicom, 427 F.3d at 976. 18 The Declaratory Judgment Act does not depart from this requirement. For a 19 declaratory-plaintiff (the alleged infringer) to have standing in a declaratory action 20 involving infringement allegations, the defendant must have been able to bring suit 21 against the plaintiff in the first place. See Fina Research, 141 F.3d at 1480–81. A 22 declaratory-defendant therefore must have a legal right in the patent-in-suit. See id. 23 (finding no standing under the Act where the declaratory-defendants could not have 24 brought suit for infringement, because they had no legal interest in the patent-in-suit); 25 see also Top Victory Elecs. v. Hitachi Ltd., No. C 10-01579 CRB, 2010 WL 4722482, 26 at *2 (N.D. Cal. Nov. 15, 2000) (“In order for a plaintiff to have standing in a 27 declaratory action involving allegations of patent infringement, the defendant must 28 have a legal right in the patent at issue that would allow the defendant to bring suit for 4 1 infringement.”); GMP Techs., LLC v. Zicam, LLC, No. 08-7077, 2009 WL 5064762, 2 at *2 (N.D. Ill. Dec. 9, 2009). 3 The law summarized above controls standing in the context of 4 patent-infringement actions at law, namely, claims for monetary damages. There is 5 also authority that recognizes standing for equitable-title holders to a patent. 6 Arachnid, 939 F.2d at 1579–80. 7 equitable remedies but cannot maintain an action at law for infringement damages. 8 DDB Techs., L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284, 1290 (Fed. Cir. 9 2008). The equitable-title holder has standing to seek 10 Equitable title may be defined as “the beneficial interest of one person whom 11 equity regards as the real owner, although the legal title is vested in another.” 12 Id. at 1578 n.3 (quoting Black’s Law Dictionary 1486 (6th ed. 1990)). Equitable title 13 in a patent may be recognized, for example, on behalf of an employer whose inventor- 14 employee has a duty or agreement to assign to the employer any inventions made 15 during the course of employment. See FilmTec Corp. v. Allied-Signal Inc., 939 F.2d 16 1568, 1572 (Fed. Cir. 1991). 17 inventions, patent applications, and patents on the invention while legal title remains 18 with the inventor. DDB Techs., 517 F.3d at 1290. 19 IV. This vests the employer with equitable title in DISCUSSION 20 Acacia’s argument for dismissal is straightforward: just as ownership of a 21 patent-holding subsidiary is insufficient to establish legal title or interest in a patent, 22 ownership is likewise insufficient to establish equitable title in a patent. (Mot. 5.) 23 Acacia argues that it is therefore not a proper counter-defendant, because it lacks the 24 requisite interest in the ’415 Patent to have standing to bring suit against Newegg. 25 (Id.) Without this interest, Acacia argues, there is no case or controversy that would 26 support jurisdiction under the Declaratory Judgment Act. 27 Newegg counters that Acacia’s lack of a legal ownership interest in the ’415 28 Patent is irrelevant because this case is about equitable relief (a declaration of 5 1 invalidity) and not monetary damages. (Opp’n 5.) Newegg contends that because 2 Acacia is the ultimate parent company of Digitech, Acacia has an “equity interest” in 3 the ’415 Patent. (Id.) Newegg insists that this equity interest would give Acacia 4 standing to seek equitable relief, and consequently Acacia is a proper counter- 5 defendant to its declaratory counterclaim. 6 A. Acacia lacks a legal ownership interest in the ’415 Patent 7 The law is well settled that only the owner or exclusive licensee of a patent has 8 standing to bring a patent-infringement action. 35 U.S.C. § 281; Sicom, 427 F.3d at 9 976. Consequently, a parent company generally cannot sue for patent infringement on 10 behalf of its patent-holding subsidiary. Because Acacia neither owns nor holds an 11 exclusive license to use the ’415 Patent, Acacia does not have an ownership interest 12 sufficient to affirmatively bring a patent-infringement suit against Newegg. There is 13 therefore no legal controversy between the parties. 14 B. Acacia lacks equitable title to the ’415 Patent 15 Acacia’s only connection to the ’415 Patent is its relationship to Digitech 16 through corporate ownership. Digitech holds legal title to the patents and it is a 17 separate, operational corporation. Acacia cannot be deemed to have equitable title to 18 the patent merely because it owns and exercises control over its subsidiary. 19 Corporate law sets clear boundaries between parents and subsidiaries. E.g., 20 Dole Foods Co. v. Patrickson, 538 U.S. 468, 474–75 (2003) (“A basic tenet of 21 American corporate law is that the corporation and its shareholders are distinct 22 entities.”); Murray v. Mares, 147 B.R. 688, 690 n.3 (E.D. Va. 1992) (explaining that a 23 corporation is legally separate from the stockholders who own it, and a stockholder 24 has a right to a share of the net assets of the corporation only upon dissolution). The 25 veil separating corporations may be pierced in some circumstances, but Newegg does 26 not allege an alter ego theory in its counterclaim. Moreover, Newegg went so far as to 27 specifically disclaim such a theory in its opposition to this motion. 28 /// 6 (Opp’n 1.) 1 The fact that a corporate parent’s subsidiary owns a patent is not enough to 2 establish that the parent has a legal ownership interest in the subsidiary’s patent. 3 Abraxis Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359, 1366 (Fed. Cir. 2010) 4 (finding that common corporate structure does not overcome the requirement that, 5 even between a parent and a subsidiary, a written assignment is necessary for the 6 parent to have legal title to the patent). It then follows that a parent-subsidiary 7 relationship is likewise insufficient to establish equitable title to a patent. 8 This conclusion is in harmony with Federal Circuit law. The Federal Circuit 9 has never held that a corporate parent has equitable title in a subsidiary’s patents.3 In 10 addition, several district courts have held that the mere fact that a corporation’s 11 subsidiary owns a patent is insufficient to establish that the corporation has equitable 12 title to the patent. Top Victory, 2010 WL 4722482, at *4 (“[T]hat a corporate parent’s 13 subsidiary owns a patent is not enough to establish that the parent has right to the 14 subsidiary’s patents.”); Merial Ltd. v. Intervet, Inc., 430 F. Supp. 2d 1357, 1361–63 15 (N.D. Ga. 2006) (granting motion to dismiss the parent corporation’s infringement 16 suit because “standing under the Patent Act cannot be based on the mere fact that [the 17 subsidiary] is a wholly-owned subsidiary of [the parent company]”); Beam Laser Sys., 18 Inc. v. Cox Commc’ns, Inc., 117 F. Supp. 2d 515 (E.D. Va. 2000) (“[O]wnership of 19 corporate stock does not create equitable title in that corporation’s property.”); Site 20 Microsurgical Sys., Inc. v. Cooper Cos., 797 F. Supp. 333, 338, 21 (finding the mere fact of a parent-subsidiary relationship did not confer standing on 22 the parent). Newegg offers no authority persuading the Court otherwise. 23 24 (D. Del. 1992) Newegg principally relies on a case from the Southern District of Texas in which the court 25 26 27 28 3 The only Federal Circuit cases that recognize an equitable title to a patent involve contractual arrangements to assign rights in inventions between the asserted equitable-title holder and the inventor. E.g., Film Tec, 939 F.2d 1568; Arachnid, 939 F.2d 1574; DDB Techs., 517 F.3d 1284. The Federal Circuit has also alluded to equitable title where the rights to a patent are being held in a trust. E.g., Gellman v. Telular Corp., 449 F. App’x 941, 944 (Fed. Cir. 2011). 7 1 found that the parent corporation of a patent-holding subsidiary had equitable title to 2 the subsidiary’s patents. Pipe Liners, Inc. v. American Pipe & Plastics, Inc., 893 F. 3 Supp. 704, 706 (S.D. Tex. 1995). But this Court does not find Pipe Liners persuasive 4 in light of the previously outlined Supreme Court and Federal Circuit law. See, e.g., 5 Dole, 538 U.S. at 474–75; Abraxis, 625 F.3d at 1366. 6 Patent rights are not acquired unless authorized by, and acquired in, the manner 7 prescribed by statute. While Courts permit true equitable-title holders to proceed out 8 of fairness, equitable rules were not intended to circumvent policies and rules having 9 their source in the patent statutes. Crown Die & Tool Co. v. Nye Tool & Mach. 10 Works, 261 U.S. 24, 44 (1923). The Court cannot find that mere ownership of 11 corporate stock can convey equitable title in a patent without contravening the clear 12 restrictions of both corporations and patent law. 35 U.S.C. §§ 100(d), 281; Dole, 538 13 U.S. at 474–75; Arachnid, 939 F.2d at 1578–79. Such a holding would lead to absurd 14 results. 15 Acacia’s parent-subsidiary relationship with Digitech did not convey any 16 cognizable interest in the ’415 Patent—legal or equitable. Acacia therefore would 17 lack standing to sue Newegg for either legal or equitable relief. The Court thus finds 18 that there is no controversy sufficient to confer subject-matter jurisdiction over Acacia 19 under the Declaratory Judgment Act. 20 /// 21 /// 22 /// 23 /// 24 /// 25 /// 26 /// 27 /// 28 /// 8 V. 1 2 CONCLUSION For the reasons discussed above, Acacia’s Motion to Dismiss for Lack of 3 Subject Matter Jurisdiction is GRANTED. Acacia is therefore DISMISSED from 4 this action. 5 IT IS SO ORDERED. 6 7 May 3, 2013 8 9 10 ____________________________________ OTIS D. WRIGHT, II UNITED STATES DISTRICT JUDGE 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 9

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