Yufa v. TSI Incorporated

Filing 273

ORDER by Judge Kandis A. Westmore denying without prejudice TSI's 267 Renewed Motion to Compel Assignment of Patents to Receiver. TSI may filed a second renewed motion once the appeal is resolved. (kawlc1, COURT STAFF) (Filed on 12/11/2017)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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ALEKSANDR L. YUFA,
Plaintiff,

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United States District Court
Northern District of California

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v.
TSI INCORPORATED,
Defendant.

Case No. 4:09-cv-01315-KAW
ORDER DENYING WITHOUT
PREJUDICE TSI'S RENEWED
MOTION TO COMPEL ASSIGNMENT
OF PATENTS TO RECEIVER
Re: Dkt. No. 267

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On June 22, 2017, the Court denied Aleksandr L. Yufa’s ex parte application requesting an

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order directing Defendant TSI Incorporated to file its forthcoming motion to compel the

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assignment of patents to the appointed receiver by a certain deadline (Dkt. No. 253). (6/22/17

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Order, Dkt. No. 262.) In the same order, the Court granted TSI’s motion to approve the

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instructions for the administration of the court-appointed receiver Greyhound IP LLC (Dkt. No.

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256). Id. at 1-2. Therein, the Court ordered that:

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1. Greyhound, or its acquirer, Houlihan Lokey, with offices at
One Sansome Street, Suite 1700, San Francisco, CA 94104 shall
swear to perform the duties of receiver faithfully pursuant to
California Code of Civil Procedure § 567.
2. Greyhound shall have all of the powers and authority usually
held by receivers and reasonably necessary to value the
Receivership Property unless otherwise stated, without further order
of the Court.
3. Greyhound shall have the right to apply to this Court for
further instructions or directions.
4. Greyhound shall be entitled to be paid without prior Court
approval, at the rate of $400.00 per hour, not to exceed $40,000.00.
Greyhound’s compensation for valuing the Receivership Property
shall be paid directly by the Defendant. Upon approval of the Court,
any sums paid by Defendant to Greyhound shall be added to the
judgment after Greyhound has provided its final declaration or

report to the Court regarding the value of the Receivership Property.

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5. Plaintiff, as well as his agents or representatives, shall
cooperate with all requests of Greyhound and are enjoined from
interfering with Greyhound’s performance of its duties hereunder.

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6. Greyhound shall faithfully perform and discharge its duties
and obey the Court’s orders.

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(6/22/17 Order at 2-3.) On July 7, 2017, Dr. Yufa filed a notice of appeal to the Federal Circuit

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appealing the denial of his ex parte application and Order Nos. 4 and 5, above. (Dkt. No. 263.)
On September 5, 2017, while the appeal was pending, TSI filed a renewed motion to

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compel assignment of patents to the receiver. (Def.’s Mot., Dkt. No. 267.)
On October 2, 2017, the Federal Circuit directed the parties to address whether the court

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had jurisdiction or whether the case should be dismissed for lack of jurisdiction. (Dkt. No. 272 at

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United States District Court
Northern District of California

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1.) The Federal Circuit lifted the stay of the proceedings, and ordered Dr. Yufa to file his opening

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brief within 30 days. Id. at 2. Dr. Yufa filed his opening brief on October 23, 2017. Yufa v. TSI,

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Incorporated, Case No. 2017-2282 (Fed. Cir. Oct. 23, 2017), ECF No. 19. According to the

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docket, TSI’s response brief is due on December 13, 2017, and Dr. Yufa’s reply is due on

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December 18, 2017. Yufa v. TSI, Incorporated, Case No. 2017-2282 (Fed. Cir. Nov. 29, 2017),

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ECF No. 25.
TSI’s obtained a judgment in the amount of $166,364.88 against Dr. Yufa on September 3,

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2014. (Dkt. No. 205.) Pursuant to the June 22, 2017 order, Greyhound’s fees may not exceed

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$40,000, which “shall be added to the judgment after Greyhound has provided its final declaration

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or report to the Court regarding the value of the Receivership Property.” (6/22/17 Order at 2.)

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Therefore, the total maximum judgment is $206,464.88.
In its renewed motion, TSI represents that Greyhound appraised the aggregate value of all

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of the patents to be between $129,000 and $198,000. (Def.’s Mot. at 3; Decl. of Mitchell

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Rosenfeld, Dkt. No. 268 ¶¶ 3-7, Ex. A.) Thus, in the event that that the inclusion of sums paid to

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Greyhound were found improper on appeal, the potential valuation of the patents would exceed

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the amount of the judgment. Accordingly, in an abundance of caution, the Court DENIES

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WITHOUT PREJUDICE Defendant’s renewed motion to compel the assignment of patents to the

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receiver. TSI may file a second renewed motion once the appeal is resolved.
IT IS SO ORDERED.
Dated: December 11, 2017
__________________________________
KANDIS A. WESTMORE
United States Magistrate Judge

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United States District Court
Northern District of California

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