GeoVantage, Inc. v. SimWright, Inc.

Filing 27

Judge Rya W. Zobel: Memorandum of Decision entered granting 8 Motion to Remand, but its motion for costs and fees is DENIED; denying 10 Motion to Stay as moot. (Urso, Lisa)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
CIVIL ACTION NO. 13-12178-RWZ

GEOVANTAGE, INC.
v.
SIMWRIGHT, INC.

MEMORANDUM OF DECISION
January 16, 2014

ZOBEL, D.J.
Plaintiff GeoVantage, Inc. (“GeoVantage”), a developer of digital aerial imaging
technology, filed this action in the Massachusetts Superior Court against defendant
SimWright, Inc. (“SimWright”), an image processing and software development firm, on
July 27, 2012. The initial complaint, served in October 2012, alleged that GeoVantage
hired SimWright as a subcontractor to develop and improve various GeoVantage
hardware and software products, and that SimWright thereafter developed and claimed
ownership over derivative products in violation of a memorandum of understanding
between the parties. GeoVantage sought damages for breach of contract and
declaratory judgment decreeing its rightful ownership of the intellectual property
developed by SimWright pursuant to the parties’ agreements. The complaint was
amended on August 5, 2013, to include additional allegations and two counts of
misappropriation of confidential information and trade secrets on the basis that
SimWright also disclosed GeoVantage’s intellectual property to Waldo Air, Inc., a direct

competitor.
On September 3, 2013, SimWright filed a notice of removal pursuant to 28
U.S.C. §§ 1332, 1441, and 1446 on diversity grounds. GeoVantage claims that
removal is untimely and moves to remand the case.
Section 1446(b) requires that a state court defendant seeking to remove a case
to federal court do so by filing a notice of removal “within thirty days after receipt by the
defendant, through service or otherwise, of a copy of the initial pleading setting forth
the claim for relief upon which such action or proceeding is based.” 28 U.S.C. §
1446(b). SimWright concedes that the case was removable at the time it first received
the initial complaint and that the statutory 30-day time limit for removal has expired.
SimWright nonetheless contends that removal is still permissible under a judiciallycreated “revival exception.” This narrow exception, which has not yet been adopted by
the First Circuit but has been recognized by lower courts in this circuit, holds that
removal rights may be “revived” when an amended complaint “so changes the nature of
[the] action as to constitute substantially a new suit begun that day.” Valley Mgmt., Inc.
v. Boston Road Mobile Home Park Tenants Ass’n, Inc., 736 F. Supp. 2d 344, 349 (D.
Mass. 2010) (quoting Wilson v. Intercollegiate (Big Ten) Conference Athletic Ass’n, 668
F.2d 962, 965 (7th Cir. 1982)). See also Burke v. Atlantic Fuels Marketing Corp., 775
F. Supp. 474, 475 (D. Mass. 1991) (recognizing doctrine); Davidson v. Life Ins. Co.,
716 F. Supp. 674 (D. Mass. 1989) (same); McKenna v. Brassard, 704 F. Supp. 309,
310-11 (D. Mass. 1989) (same). SimWright asserts that the new allegations and claims
in GeoVantage’s amended complaint so completely transformed the nature of the case
2

as to reset the 30-day clock on removal.
“[R]emoval statutes are strictly construed . . . and defendant[] has the burden of
showing the federal court’s jurisdiction.” Danca v. Private Health Care Sys., Inc., 185
F.3d 1, 4 (1st Cir. 1999) (citations omitted). Even assuming that the revival doctrine
has force in this circuit, I find that GeoVantage’s amendments did not create a
“substantially new suit” to warrant its application here. Many of the changes in
GeoVantage’s amended complaint serve only to elaborate existing allegations and
provide details about the role of one James Kain, a co-founder and former co-owner of
GeoVantage, in the parties’ relationship. While there are new allegations in support of
the two additional counts of misappropriation of confidential information and trade
secrets, these amendments build upon the facts set forth in the initial complaint and
charge a continuation of the conduct already alleged. At bottom, GeoVantage
consistently accuses SimWright of violating the parties’ agreement and asserting
wrongful dominion over GeoVantage’s intellectual property. The initial complaint
describes SimWright’s claim to own such property and demand that GeoVantage pay to
license it; the amended complaint further illustrates SimWright’s alleged encroachment
with assertions that SimWright later provided that same intellectual property to Waldo
Air. The essential identity of the case remains unaltered. See Wilson, 668 F.2d at 965
(“The basic legal theory of [plaintiff’s] action . . . was unchanged. There was thus no
‘abandonment of the original for a new cause of action.’”) (citation omitted). Because
the changes in the amended complaint are insufficient to revive SimWright’s expired

3

right to remove, remand is proper.1
Finally, GeoVantage seeks to recover costs and attorney fees under 28 U.S.C. §
1447(c), which provides that “[a]n order remanding the case may require payment of
just costs and any actual expenses, including attorney fees, incurred as a result of the
removal.” A reward of fees is appropriate “only where the removing party lacked an
objectively reasonable basis for seeking removal.” Martin v. Franklin Capital Corp.,
546 U.S. 132, 141 (2005). SimWright’s attempt to remove, although ultimately
unsuccessful, was nevertheless objectively reasonable in light of case law supporting
the existence and application of the revival exception to section 1446(b). I decline to
assess costs and fees here.
GeoVantage’s motion for remand (Docket # 8) is ALLOWED, but its motion for
costs and fees is DENIED. GeoVantage’s assented-to motion to stay proceedings
pending ruling on motion to remand (Docket # 10) is DENIED AS MOOT.

January 16, 2013
DATE

/s/Rya W. Zobel
RYA W. ZOBEL
UNITED STATES DISTRICT JUDGE

1

GeoVantage also argues that removal is untimely under 28 U.S.C. § 1446(c), which prohibits
the removal of cases on the basis of diversity jurisdiction “more than 1 year after the commencement of
the action, unless a district court finds that the plaintiff has acted in bad faith in order to prevent a
defendant from removing the action.” This rule operates even where a plaintiff amends his complaint.
See Burke, 775 F. Supp. 474, 477 (petition for removal on diversity grounds more than one year after
initial complaint was filed was untimely despite amendment of complaint to assert new claim).
SimWright neither addresses this argument nor suggests that GeoVantage acted in bad faith.

4