Universal Instruments Corporation v. Micro System Engineering, Inc. et al

Filing 36

MEMORANDUM-DECISION and ORDER - That defendant's 16 Motion to Set Aside Default is GRANTED. That Universal's 13 Motion for default judgment is DENIED as moot. That defendants shall file appropriate responsive pleadings or motions wi thin fourteen (14) days of this Memorandum-Decision and Order. That the parties notify Magistrate Judge David E. Peebles in order to schedule further proceedings in accordance with this Memorandum-Decision and Order. Signed by Chief Judge Gary L. Sharpe on 7/14/2014. (jel, )

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK
________________________________
UNIVERSAL INSTRUMENTS
CORPORATION,
Plaintiff,

3:13-cv-831
(GLS/DEP)

v.
MICRO SYSTEM ENGINEERING,
INC. et al.,
Defendants.
________________________________
APPEARANCES:
OF COUNSEL:
FOR THE PLAINTIFF:
Schmeiser, Olsen Law Firm
22 Century Hill Drive
Suite 302
Latham, NY 12110
FOR THE DEFENDANTS:
Micro System Engineering, Inc.
Kolisch, Hartwell Law Firm
200 Pacific Building
520 Southwest Yamhill Street
Portland, OR 97204
Young, Sommer Law Firm
Executive Woods
5 Palisades Drive
Albany, NY 12205
Missouri Tooling & Automation
Young, Sommer Law Firm
Executive Woods
5 Palisades Drive

JONATHAN M. MADSEN, ESQ.

DAVID P. COOPER, ESQ.
DESMOND J. KIDNEY, ESQ.
OWEN W. DUKELOW, ESQ.
JEFFREY S. BAKER, ESQ.
JOSEPH F. CASTIGLIONE,
ESQ.

JEFFREY S. BAKER, ESQ.

Albany, NY 12205
Gary L. Sharpe
Chief Judge
MEMORANDUM-DECISION AND ORDER
I. Introduction
Plaintiff Universal Instruments Corporation commenced this diversity
action alleging breach of contract and promissory estoppel against
defendant Micro System Engineering, Inc. (MSEI), and claims of
misappropriation of trade secrets, unfair competition, and unjust
enrichment against MSEI and defendant Missouri Tooling & Automation
(MTA), seeking damages and permanent injunctive relief. (Compl. ¶¶ 123267, Dkt. No. 1.) Pending is defendants’ motion to set aside default, (Dkt.
No. 16), and Universal’s motion for default judgment, (Dkt. No. 13). For the
reasons that follow, defendants’ motion is granted and Universal’s motion
is denied as moot.
II. Background1
Universal, a Delaware corporation with its principal place of business

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While the facts pertinent to the court’s disposition of the pending motions are
undisputed, brief factual background has been provided from allegations in the complaint. The
recited allegations are just that, allegations.

2

in New York, “designs and manufactures advanced automation and
assembly equipment solutions for the electronic manufacturing industry.”
(Compl. ¶¶ 2-3.) In furtherance of its business, Universal owns certain
intellectual property. (See, e.g., id. ¶ 5.) MSEI, an Oregon corporation,
which is in a contractual relationship with Universal, “designs,
manufactures, and tests pacemaker boards and defibrillator boards,” and
MTA, a Missouri corporation, “provides machine automation and
replication, special machine design and manufacturing, concept and
development, system upgrades and retrofits, motion controls and robotics,
custom tooling and fixturing, and system integration.” (Id. ¶¶ 6, 9, 11, 12,
22.) Generically speaking, Universal claims that MSEI violated the contract
by disclosing to MTA certain source codes “for the purpose of [MTA]
competing against [Universal].” (Id. ¶ 80.) This conduct, and more, forms
the basis of Universal’s complaint.
Universal filed its complaint on July 15, 2013. (See generally Compl.)
Although defendants contend that proper service was not made on them
thereafter, (Dkt. No. 16, Attach. 6 at 5-6), it is undisputed that an employee
of each defendant came into possession of the complaint one way or
another. MSEI’s employee, Tuan Nguyen, was presented with a package
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containing the complaint on July 18, 2013, although he “did not understand
what was in the package when” it was given to him. (Dkt. No. 16, Attach. 1
¶¶ 1-2, 4.) Nguyen left the package with MSEI corporate counsel James
Maldonado the same day. (Id. ¶ 3.) Maldonado did not review the
contents of the package until July 31, at which time he discovered that it
contained a complaint and set out to retain outside counsel to handle the
litigation. (Dkt. No. 16, Attach. 2 ¶ 3.) The very next day, Maldonado
attempted to contact Universal’s counsel, Jonathan Madsen, to advise him
that he had received the complaint, and ask for the date on which the
complaint was served. (Id. ¶ 4.) Madsen did not respond. (Id.) On the
following day, Maldonado placed a telephone call to Madsen, who failed to
return the call. (Id. ¶ 5.) Maldonado attempted to contact Madsen again
on August 6; Madsen “did not . . . respon[d] for several days.” (Id. ¶ 6.) On
August 7, Maldonado engaged attorney David Cooper to represent MSEI
and thereafter a meeting was held, on August 12, “to discuss his
preliminary recommendations about the case.” (Id. ¶¶ 7-8.)
MTA employee Regina Stephens received a copy of the complaint on
July 19. (Dkt. No. 16, Attach. 4 ¶¶ 1-2.) MTA also retained Cooper, who,
on behalf of both MSEI and MTA, contacted Madsen on August 13 or 14, at
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which time Madsen did not indicate that he was seeking entry of default or
default judgment. (Dkt. No. 16, Attach. 5 ¶¶ 1-3.)
Universal sought entry of default pursuant to Local Rule 55.1 on
August 9, 2013 and August 12, 2013 against MSEI and MTA, respectively.
(Dkt. Nos. 9, 11.) Soon thereafter, the Clerk entered each defendant’s
default. (Dkt. Nos. 10, 12.) The pending motions were filed afterward.
(Dkt. Nos. 13, 16.)
III. Standard of Review
“The court may set aside an entry of default for good cause,” Fed. R.
Civ. P. 55(c), which requires the court’s consideration of three factors: “(1)
whether the default was willful; (2) whether setting aside the default would
prejudice the party for whom default was awarded; and (3) whether the
moving party has presented a meritorious defense.” Peterson v. Syracuse
Police Dep’t, 467 F. App’x 31, 33 (2d Cir. 2012). “This test should be
applied in the context of the general preference ‘that litigation disputes be
resolved on the merits, not on default.’” Citadel Mgmt., Inc. v. Telesis
Trust, Inc., 123 F. Supp. 2d 133, 142 (S.D.N.Y. 2000) (quoting Cody v.
Mello, 59 F.3d 13, 15 (2d Cir. 1995)). Any doubts “must be resolved in
favor of trial on the merits.” Enron Oil Corp. v. Diakuhara, 10 F.3d 90, 98
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(2d Cir. 1993).
IV. Discussion
Defendants contend that the “good cause” standard of Rule 55(c) is
met, and their default should be set aside for that reason. (Dkt. No. 16,
Attach. 6 at 6-9.)2 In particular, defendants argue that: (1) their default was
not willful as evidenced by MSEI’s attempt to contact Universal to clarify
issues related to service and the corresponding due date for the
interposition of an answer; (2) they have a meritorious defense in that they
owned the intellectual property that forms the basis of all claims alleged by
Universal; and (3) Universal will not suffer prejudice by setting aside their
default other than a “slight delay,” which is not sufficient to show prejudice.
(Id.)
In response, Universal contends that defendants’ default was willful
as demonstrated by, among other things, the parties’ history. (Dkt. No. 21
at 11-16.) Universal also contends that defendants have failed to
sufficiently demonstrate that they have a meritorious defense, and that the

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Initially, defendants assert that their default should be set aside because of defects in
service that evince Universal’s failure to meet the standard of Local Rule of Practice 55.1,
which requires, among other things, an affidavit showing that service was properly made. (Dkt.
No. 16, Attach. 6 at 5-6.) Because good cause has been shown as discussed below, the court
need not wade into these murky waters.

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delay leading to defendants’ default is prejudicial because it has given
defendants a leg-up in further misappropriation of trade secrets. ( Id. at 1617.)3 Because defendants have shown good cause, the entry of default is
set aside.
Beginning with willfulness, the factor that “carries the most weight,”
De Curtis v. Ferrandina, 529 F. App’x 85, 86 (2d Cir. 2013), the court is
satisfied that defendants did not willfully default. Indeed, the undisputed
facts demonstrate that MSEI and MTA took steps to defend themselves in
the action. For example, defendants retained Cooper, Maldonado
attempted to contact Madsen on three separate occasions, and Cooper
also contacted Madsen regarding the matter. (Dkt. No. 16, Attach. 2 ¶¶ 38; Dkt. No. 16, Attach. 5 ¶¶ 1-2.) The history of discontent between the
parties and the pattern of delay by defendants alleged by Universal, (Dkt.
No. 21 at 12-14), is not particularly relevant to the question of whether the
default in defending the action was willful. The first factor weighs in favor
of defendants.
Moving on to the prejudice prong, the court finds, despite Universal’s

3

It is noted that the pending motions have been waiting for adjudication for longer than
is ideal. The delay from the time the pending motions were fully briefed, in October 2013, to
present is regrettably attributable to court congestion.

7

claims to the contrary, (Dkt. No. 21 at 17), that it will not suffer great
prejudice as a result of setting aside the default. Indeed, Universal’s
argument regarding prejudice from delay is undercut by the court’s
observation that it did not seek temporary or preliminary relief to prevent
defendants from engaging in further allegedly unlawful behavior regarding
its intellectual property . The factor also weighs in favor of defendants.
The court must next consider whether defendants have presented a
meritorious defense. See Peterson, 467 F. App’x at 33. “In order to make
a sufficient showing of a meritorious defense . . . , the defendant need not
establish [its] defense conclusively, but [it] must present credible evidence
of facts that would constitute a complete defense.” State Farm Mut. Auto.
Ins. Co. v. Cohan, 409 F. App’x 453, 456 (2d Cir. 2011). Conclusory
details in support of a “meritorious defense” showing are insufficient. See
Pecarsky v. Galaxiworld.com Ltd., 249 F.3d 167, 173 (2d Cir. 2001). “The
test of such a defense is measured not by whether there is a likelihood that
it will carry the day, but whether the evidence submitted, if proven at trial,
would constitute a complete defense.” Id. (internal quotation marks and
citation omitted).
Defendants’ contention that they owned the intellectual property at
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issue, (Dkt. No. 16, Attach. 6 at 8), would appear to serve as a complete
defense to the claims of misappropriation of trade secrets, unfair
competition, and unjust enrichment if proven at trial because each of those
claims relies, in part, on the wrongful use of Universal’s intellectual
property. (Compl. ¶¶ 188-89, 191-92, 208, 211, 214, 222.) 4 It is less clear
whether the ownership of the intellectual property would negate the breach
of contract or promissory estoppel claims. Indeed, wrongful disclosure of
the source codes, even if not wrongfully used afterward, may support a
breach of contract claim, whereas the promissory estoppel claim does not
appear to depend on the ownership of the intellectual property either. This
potential discrepancy is of no moment, however, because, on balance, the
factors for setting aside entry of default weigh in favor of defendants.
Moreover, consistent with the general preference for deciding cases on the
merits, defendants’ motion to set aside entry of default is granted. In light
thereof, defendants shall file appropriate responsive pleadings or motions
within fourteen (14) days of the date of this Memorandum-Decision and
Order, and shall notify Magistrate Judge David E. Peebles in order to

4

The court notes that the parties have failed to make any arguments regarding what
law applies to this diversity action.

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schedule further proceedings in accordance with this MemorandumDecision and Order.
Lastly, because defendants’ default has been set aside, Universal’s
motion for entry of default judgment, (Dkt. No. 13), is denied as moot. See
United States v. Premises & Real Prop. with Bldgs., Appurtenances, &
Improvements Located at 26 E. Park St., Albion, NY, No. 07-CV-759S,
2008 WL 4596210, at *2 (W.D.N.Y. Oct. 14, 2008).
V. Conclusion
WHEREFORE, for the foregoing reasons, it is hereby
ORDERED that defendants’ motion to set aside default (Dkt. No. 16)
is GRANTED; and it is further
ORDERED that Universal’s motion for default judgment (Dkt. No. 13)
is DENIED as moot; and it is further
ORDERED that defendants shall file appropriate responsive
pleadings or motions within fourteen (14) days of this MemorandumDecision and Order; and it is further
ORDERED that the parties notify Magistrate Judge David E. Peebles
in order to schedule further proceedings in accordance with this
Memorandum-Decision and Order; and it is further
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ORDERED that the Clerk provide a copy of this MemorandumDecision and Order to the parties.
IT IS SO ORDERED.
July 14, 2014
Albany, New York

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