Mahmood v. Research in Motion Ltd.
Filing
35
MEMORANDUM OPINION & ORDER re: 11 MOTION to Dismiss the Complaint Pursuant to Rules 8(a) and 12(b)(6) of the FRCP filed by Research in Motion Ltd., 24 MOTION for Discovery Pursuant to Fed. R. Civ. P. 56(d) filed by Tahir Mahmood. P laintiff's motion for discovery pursuant to Rule 56(d) is DENIED. For the reasons set forth above, summary judgment is DENIED as to Count I, and GRANTED as to Counts II-IV. Counts II-IV are DISMISSED with prejudice. This action shall proceed solely with respect to Count I. The parties are directed to confer on a schedule for discovery and to submit a proposed schedule to the Court no later than February 6, 2012. (Signed by Judge Katherine B. Forrest on 1/23/2012) (mro)
llSDCSDNV
DOCUMENT
I
ELECTRONICALLV FILED
UNITED STATES DISTRICT COURT
SOUTHERN bISTRICT OF NEW YORK
DOC':~·~TT~r7~~~1I
DATEF.
---------~------------------------------x
11 Civ. 5345 (KBF)
TAHIR MAHL.OOD 1
1-
Plaintiff 1
MEMORANDUM OPINION
& ORDER
-v-
RESEARCH fN MOTION LTD.
1
Defendant.
---------~------------------------------x
KATHERINEIB. FORREST
1
District Judge:
Plaiftiff Tahir Mahmood filed this case on August I, 2011.
The
compl~int
asserts a claim for correction of inventorship
relating to a patent owned by defendant Research in Motion Ltd.
("RIM") ffr RIM's iconic Blackberry email application (Count I),
and state law claims for conversion , unfair competition and
unjust entichment (Counts II-IV). On September 221 2011,
defendant I moved to dismiss all counts based on statute of
limitatio~s
and pre-emption as to the state law claims, laches
as to thelinventorshiP claim and forum non-conveniens.
11-12.)
04 December 16,
(Dkt Nos.
2011 1 this Court notified the parties
that it wquld convert the motion to one for summary judgment and
provided The parties with an opportunity to submit additional
materials 1 (Dkt No. 20.) Both parties subsequently made factual
submissio~s.
(Dkt Nos. 22-33.) Plaintiff also moved for
discovery pursuant to Federal Rule of Civil Procedure 56(d).
(Dkt. No. 24.)
For the reasons set forth below, summary judgment is
GRANTED on the basis of statute of limitations as to the state
law claims (Counts II-IV), DENIED as to the inventorship claim
(Count I) and DENIED as to forum non conveniens. Plaintiff's
motion for discovery pursuant to Rule 56(d) is DENIED.
BACKGROUND
Most lawyers and indeed most judges know what a
"Blackberry" is. To some it is a timesaving lifesaver-to others,
it has eliminated the ability to "get away" and led to email
addiction. Plaintiff claims that he is an inventor, perhaps even
the sole inventor (Compl.
~
128), of a significant patent
(referred to as the '694 patent) owned by RIM and that plaintiff
alleges reads on every Blackberry device with email
capabilities.
(Id.
~
81.) Count I of the complaint is to correct
the inventorship on the '694 patent.
Id.
~~
127-32.)
Plaintiff's state law claims seek damages relating to defendant
RIM's alleged taking, use and exploitation of plaintiff's
technology.
Id.
~~
133-51.)
The parties do not dispute that, in 1995, plaintiff and an
employee of RIM communicated regarding a software solution that
2
plaintiff had developed for email called .. PageMail."
(See~,
Id. ~~ 38-53i Def.'s Resp. to PI.'s Mot. for Leave to File a
Resp. to Def.'s Dec. 16, 2011 Letter Submission at 2.) It is
also undisputed that plaintiff provided RIM with technical
materials relating to his PageMail technology at that time.
(Compl.
~
43i Def.'s Resp. to PI./s Mot. for Leave to File a
Resp. to Def.'s Dec. 16, 2011 Letter Submission at 2.) There is
also no dispute that by 1996 1 plaintiff and the RIM employee
were no longer communicating regarding PageMail and plaintiff
pursued other business opportunities. RIM introduced its first
email device (the RIM 950) in 1998.
(Compl.
~
79.) The RIM 950
was rebranded and launched as the Blackberry in 1999.
(Id. ~
80.) Since then, RIM has introduced additional versions of the
Blackberry.
See Keller Decl. Ex. B, Dec. 16, 2011.) In 2001,
Blackberry devices carried the RIM logo.
(Id.)
Plaintiff claims that until 2004 he had no idea that RIM
might have inappropriately used his PageMail technology in
connection with the Blackberry email application.
(Compl.
~
104.) He alleges in his complaint and in the declaration he
submitted in opposition to this motion that until 2004 he was
unaware that RIM owned Blackberry.
See id.i Mahmood Decl.
~
50.) Neither the complaint nor plaintiff Mahmood's declaration
describe what occurred in 2004 that alerted plaintiff to the
3
relationship between RIM and Blackberry. In fact,
the assertion
of a 2004 epiphany is flatly contradicted by the evidentiary
record which contains (1) a 2001 snapshot of a website of a
company plaintiff owned in which plaintiff touts RIM's use of
his technology with its Blackberry device as a credential.
(Butler Aff. Ex, A)
,I
and (2) the combined facts that plaintiff
concedes he was aware of the existence of the Blackberry device
prior to 2004 (see PI.'s Resp. to Def.'s Dec. 16, 2011 Letter
Submission at 1) and that photographs of Blackberry devices
available to the public in 2001 bore the RIM logo (Keller Decl.
Ex. B, Dec. 16, 2011).
In the face of this evidence, plaintiff instead alleges,
without explanation, that only upon learning for the first time
in 2004 that RIM in fact owned Blackberry, a light bulb went off
and he put two and two together realizing that RIM might have
used his technology in its connection with its Blackberry email
application. It is undisputed that plaintiff contacted RIM in
April 2004 to discuss his concerns.
(Compl. "
105-10.)
According to plaintiff, as he was preparing for his first
teleconference with RIM in 2004 on this topic, he discovered
1 Notably,
in connection with this motion plaintiff does not
dispute that this website snapshot is accurate. (PI.'s Resp. to
Def.'s Dec. 16, 2011 Letter Submission.)
4
that RIM had obtained patent '694 on the Blackberry email
invention.
(Mahmood Decl.
~
52.) He concedes that he read
"parts" of the patent at that time.
(Id.) Emails that he wrote
to RIM employees in 2004 also refer to his review of "patents."
(Feldberg Decl. Ex. B.) However, when RIM responded to his
concerns by disputing his claim and requesting that he provide
some factual basis for it
id. , he claims he began to doubt the
validity and strength of his claim,
(Mahmood Decl.
~~
53-58;
Compl. ~~ 109-10). According to plaintiff, RIM's failure to
immediately embrace his assertion combined with his inability to
find supporting documentation, caused him to do nothing
regarding this issue for four years; the complaint casually
refers to this 2004 event that is the lynchpin of stopping the
clock for plaintiff as,
"[u]nable to locate his records
regarding his work with RAM and RIM, Mr. Mahmood focused on his
consulting business and his company Synentia (formerly
Synectics) ."
(Compl. ~ 118.)
Then, in 2008, plaintiff asserts that he inadvertently
discovered materials supportive of his claim in a box in his
brother's garage.
(Id. ~ 119.) Still, plaintiff did nothing
until he returned from Dubai in late 2009 when he got in touch
with counsel.
contact RIM.
(Id. ~ 121.) Counsel waited until July 2010 to
(Id.
~
123.) Plaintiff clearly felt no urgency.
5
There may be interesting complexities to the question of
whether plaintiff in fact played any role, a significant role or
the sole role, in the invention set forth in the '694 patent.
But the parties and this Court should only pursue exploration of
that question if plaintiff's claims have been timely brought.
The issue of timeliness is a threshold issue for this Court.
Valdez ex rel. Donely v. United States, 518 F.3d 173, 181 (2d
Cir. 2008).
As discussed below, plaintiff's state law claims are
governed by three and six-year statutes of limitations, but more
than six years has elapsed between when plaintiff's claims
accrued and this action. While plaintiff has strenuously argued
that equitable tolling should apply, that is,
nstopping the
clock" between 2004 and 2008, the record does not support a
genuine issue of material fact on this issue.
The inventorship claim is not governed by a statute of
limitations but is instead subject to the equitable doctrine of
laches. This Court finds that while a presumption of laches
applies here, defendant has proffered facts to rebut that
presumption, and in so doing has raised a genuine issue of
material fact as to whether defendant RIM has been prejudiced by
the delay. See
Black Diamond Sportswear
6
I
Inc. v. Black
Diamond Equipment, Ltd., No. 06 Civ. 3508, 2007 WL 2914452, at
*3 (2d Cir. Oct. 5, 2007).
STANDARD OF REVIEW
In the submissions with respect to defendant's original
motion to dismiss, defendant RIM filed material outside the four
corners of the complaint.
See~,
Feldberg Decl. Ex. B.) To
insure that all parties had an opportunity to place before the
Court any facts they believed relevant to the decision on the
questions of laches and equitable tolling, this Court converted
the motion brought under Federal Rules of Civil Procedure 8 and
12(b) (6) to one for summary judgment.
(Dkt No. 20.)
Summary judgment may not be granted unless all of the
submissions taken together "show[] that there is no genuine
dispute as to any material fact and the movant is entitled to
judgment as a matter of law." Fed. R. Civ. P. 56(a)
i
see EI
Sayed v. Hilton Hotels Corp., 627 F.3d 931, 933 (2d Cir. 2010).
The moving party bears the burden of demonstrating the absence
of a material factual question, and in making this
determination, this Court must view all facts in the light most
favorable to the non-moving party. Celotex Corp. v. Catrett, 477
U.S. 317, 323 (1986) i EI Sayed, 627 F.3d at 933. When the moving
party has asserted facts showing that the non-movant's claims
7
cannot be sustained, the opposing party must "set forth specific
facts showing that there is a genuine issue for trial," and
cannot "merely rest on the allegations or denials" contained in
the pleadings. Wright v. Goord, 554 F.3d 255, 266 (2d Cir.
2009). That is, the non-moving party "must do more than simply
show that there is some metaphysical doubt as to the material
facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475
U.S. 574, 586 (1986).
A self-serving declaration by plaintiff executed in
connection with this motion but flatly contradicted by the
contemporary evidentiary record/ does not create a genuine
dispute with regard to a material fact. See
Harris
l
~/
Scott v.
550 U.S. 372, 380 (2007) ("When opposing parties tell two
different stories, one of which is blatantly contradicted by the
record/ so that no reasonable person could believe it, a court
should not adopt that version of the facts for purposes of
ruling on a motion for summary judgment.") .
THE STATE LAW CLAIMS
Plaintiff does not dispute that there are applicable
statutes of limitations with regard to each of his three state
law claims.
(Compare, Mem. of Law of Def. in Supp. of its Mot.
to Dismiss the Compl.
(\\Def.'s Mem.") at 8-11 with PI.'s Mem. of
8
Law in Opp. to Def.'s Mot. to Dismiss the Compl.
Opp.") at 20-21.)
("Pl.'s Mem. in
In its original motion to dismiss, defendant
asserts that claims for conversion and unfair competition must
be brought within three years and that a claim for unjust
enrichment must be brought within six years of the date upon
which the claim accrued.
(Def.'s Mem. at 8-11.) Plaintiff does
not propose different statutes of limitations and the case law
is supportive of defendant's timeframes. See
~,
Daisley v.
FedEx Ground Package Sys., Inc., 376 Fed. Appx. 80, 81 (2d Cir.
2010)
("The New York statute of limtiations is . . . three years
for conversion.")
(citing N.Y. C.P.L.R.
§
213(2))
i
Norbrook
Laboratories Ltd. v. G.C. Hanford Mfg. Co., 126 Fed. Appx. 507,
508 (2d Cir. 2005)
("The statute of limitations for an unfair
competition claim based on misappropriation of another's labors
or expenditures is three years.") Cohen v. Cohen, 773 F. Supp.2d
373, 397 (S.D.N.Y. 2011) ("Under New York law, the statute of
limitations in New York for claims for unjust enrichment .
is generally six years."; "unjust enrichment claim is not
subject to the discovery rule") .
All three of plaintiff's state law claims are based on the
assertion that defendant RIM misused plaintiff's PageMail
technology. Count II for conversion alleges that the technology
was wrongfully taken, and Counts III and IV allege that
9
defendant's use and exploitation resulted in unfair competition
and unjust enrichment. The baseline for measuring the
commencement of the statute of limitations is when plaintiff/s
claims accrued. Whether measured from 2001 or 2004, it is plain
that the three-year statute of limitations for conversion ran in
either 2004 or 2007i and the statute of limitations for unfair
competition and unjust enrichment ran in either 2007 or 2010.
None of the state law claims had a live statute of limitations
when this action was filed in August 2011.
There is uncontradicted evidence in the record that in
December 2001, plaintiff's company touted as a credential for
"Projects/Systems" that it had "Designed and developed a two-way
wireless messaging product that worked over a Mobitex network
(analogous to GPRS) using a handheld device called an Infotac.
This product was further developed by RIM (Research in Motion)
with a handheld device called 'Blackberry.'"
(Butler Decl. Ex.
A.)2 It is undisputed that the '694 patent issued in April 2001
2 Plaintiff asserts that this website snapshot is "not
authenticated". (Pl.'s Resp. to Def.'s Dec. 16, 2011 Letter
Submission.) This ignores the affidavit of Christopher Butler,
the Office Manager of the Internet Archive that created the
service that captured the website snapshot. (Butler Aff. ~ 1.)
Butler states that the snapshot of the website containing the
quoted language is a true and correct copy of that website
archived on that date.
Id. ~ 6.) Plaintiff does not dispute the
accuracy of the snapshot. In particular, plaintiff does not
10
several months prior to the date of this website page. Thus, by
2001, plaintiff knew, should have known, or was at the very
least on inquiry notice of a claim relating to his technology
and the RIM/Blackberry technology. Even if we put this aside,
however, in 2004, it is clear that plaintiff knew about RIM's
ownership of Blackberry, the potential for overlap between that
technology and his own, and that he was communicating with RIM
about RIM's patents regarding that technology.
~~ 104-24i
See
~
Compl.
Mahmood Decl. ~~ 50-58i Feldberg Decl. Ex. B.) No
reasonable juror could conclude that by 2004 plaintiff did not
know or should not have known, or at least should not have been
on inquiry notice of, his claim regarding RIM's potential use of
his technology. As a result, the statute of limitations for each
of plaintiff's state law claims had run before this action was
filed.
EQUITABLE TOLLING DOES NOT APPLY
To survive dismissal of his state law claims on the grounds
of statute of limitations, plaintiff must be able to raise a
genuine and material issue of fact with regard to equitable
tOlling. The case law is clear that equitable tolling of a
respond to or dispute that in December 2001, several months
after the issuance of the '694 patent, his company touted RIM's
use of his technology for the Blackberry.
11
statute of limitations is a "rare remedy to be applied in
unusual circumstances." Wallace v. Kato t
549 U.S. 384 t 396
see also Smalldone v. Senkowski t 273 F.3d 133 (2d Cir.
(2007) i
2001). "To merit application of equitable tolling
t
the
petitioner must demonstrate that he acted with 'reasonable
diligence t during the period he wishes to have tolled t but that
despite his efforts
t
extraordinary circumstances 'beyond his
control' prevented successful filing during that time."
Smaldone t
273 F.3d at 138. There is no genuine issue of material
fact regarding any such exceptional circumstances here.
Equitable tolling provides that a court may exercise its
discretion to allow an otherwise untimely action to proceed when
conduct by one party induces another party to postpone bringing
a suit on a known cause of action. Abercrombie v. Andrews
College
t
438 F.Supp.2d 243 t 265 (S.D.N.Y. 2006). Put another
waYt a key aspect of equitable tolling is affirmative conduct by
the adverse party that is the primary reason why the claimant
failed to pursue his claims in a timely fashion. Id.
Thus, to make out a basis for equitable tolling to avoid
summary judgment, plaintiff here must raise a genuine issue of
material fact that (1) defendant RIM engaged in conduct which
amounted to a false representation or concealment of material
facts;
(2) that defendant RIM did so with the intention that
12
such conduct would be acted upon by the plaintiff; and (3) that
defendant RIM had knowledge of the real facts. Id. In addition
l
plaintiff must also raise a genuine issue of material fact
regarding his: lack of knowledge of the true facts
upon RIM/s conduct
1
l
reliance
and a prejudicial change in his position.
Id.
Here
l
plaintiff has not raised a genuine issue of material
fact as to any of these elements. The core of plaintiff/s
equitable tolling claim is his assertion that in 2004
1
when he
communicated with RIM regarding his concerns and he was told
that he would need factual support for his claims and that there
might be "innocent scenarios
validity of his claims
l
ll
l
he both doubted the strength and
and also knew that he did not then have
access to documentary evidence supportive of his position.
(Mahmood Decl. ~~ 53-58.) These facts fall far short of actions
by defendant RIM that could
have "induced
ll
l
as a matter of law
1
be found to
plaintiff to forego or cease exploration of a
known claim. First
l
the December 2001 snapshot from the website
of his company directly connects RIMI Blackberry and his
technology.
(Butler Aff. Ex. A.) There is no assertion that RIM
did anything in 2001 that prevented plaintiff from inquiring
further into his claims at that time. But then plaintiff himself
concedes that when he was communicating with RIM in 2004 1 he had
13
read "parts of" the '694 patent.
(Mahmood Decl. , 50.) He had
also raised with RIM his concerns that they had misused his
technology.
(Compl. ~~ 104-17; Mahmood Decl. ,~ 51-58). It is
not plausible that RIM's denial of plaintiff's assertion and its
routine and expected request for additional factual support can
amount to conduct that "induced" him to forego his right to
bring an action. If this were the case, every time a potential
claimant is told "we do not agree; show us proof", he could
"stop the clock" with regard to accrual of a disputed claim.
This raises disputation of a claim upon which a plaintiff might
or might not ultimately prevail, to the level of an inducing,
affirmative misrepresentation. That would be a poor principle
and is fortunately not the law.
The law with regard to equitable tolling is clear that the
doctrine is to be "invoked sparingly and only under exceptional
circumstances." Abercrombie, 438 F. Supp. 2d at 265 (quoting
Matter of Gross v. New York City Health and Hosps. Corp., 505
N.Y.S.2d 678, 679 {N.Y. App. Div. 1986}}. Invoking it here would
certainly not be mindful of either of those principles - and
indeed would open the floodgates to a frequent assertion of
equitable tolling in similar circumstances.
In addition, it cannot be the case that the discovery in
2008 of the box in his brother's garage can be what reasonably
14
"starts the clock." Far from suggesting that the documentary
materials supportive of his claim regarding the '694 patent were
not available in 2004, a seemingly simple search for documents
in connection with a separate business issue (the reorganization
of one of plaintiff's businesses) led to a speedy discovery of
the documents.
(Compl.
~~
119-20.) There is nothing in the
record to suggest that had plaintiff simply asked his brother to
look for documents in 2004, at a time when he knew RIM was
connected with Blackberry and he had connected Blackberry with
his technology (see Butler Aff. Ex. A), at a time when he was
communicating with RIM regarding his potential claim (Mahmood
Decl. ~~ 51-58), had already read parts of the '694 patent
~ 52),
and knew he needed to locate documentary evidence
id.
id. ~
58), he could not have located such easily accessible documents
then. To a reasonable person, these circumstances lead
inexorably to the conclusion that RIM did not prevent plaintiff
from exploring his claim - RIM undertook no "inducement" towards
plaintiff; plaintiff bears sole responsibility for the delay.
Plaintiff failed to undertake the due diligence the law requires
when one knows of, or has a duty of inquiry, with respect to a
potential claim.
Accordingly, there is no genuine issue of material fact as
to any element for equitable tolling. The statute of limitations
15
regarding plaintiff's conversion claim ran in 2004 if 2001 is
used as the base year (which is reasonable), or 2007 if 2004 is
used as the base year; the statute of limitations ran for the
unfair competition and unjust enrichment claims in 2007 or 2010,
depending on the base year. Generously, then, plaintiff's state
law claims were untimely as of 2007 and 2010. His delay is not
excusable. 3
Because this Court finds that plaintiff's state law claims
are untimely, it declines to reach the remaining argument as to
whether they are preempted (Def.'s Br. at 14-16) or otherwise
fail to state a claim (id. at 16).
Plaintiff's sole remaining cause of action relates to
inventorship. There is no statutory imposition of a time bar for
this claim. Case law has imposed a rebuttable presumption of
laches when six years has elapsed between the time a claimant
knew or should have known, or been on inquiry notice of, his
claim. Here, a presumption of laches applies because using
either 2001 or 2004 as the base year nevertheless results in
more than six years passing before this action was commenced.
Plaintiff and defendant entered into a tolling agreement on
June 14, 2011. (Feldberg Supplemental Decl. Ex. A.) However, all
claims had become untimely at least by 2010 (and more likely by
2007) and this tolling agreement cannot save them.
3
16
However, that presumption is rebuttable and there is a genuine
issue of material fact as to whether RIM would be prejudiced if
this action is allowed to proceed.
LACHES
Laches is unacceptable neglect or delay in bringing suit
which causes prejudice to the other party. A.C. Aukerman Co. v.
R.L. Chaides Constr. Co., 960 F.2d 1020, 1028-29 (Fed. Cir.
1992). While it is true that barring an action on the basis of
laches means "that some potentially meritorious demands will not
be entertained" there is "justice too in an end to conflict and
in the quiet of peace./I A.C. Aukerman, 960 F.2d at 1029 (quoting
Envtl Def. Fund v. Alexander, 614 F.2d 474 (5th Cir.), cert.
denied, 449 U.S. 919 (1980).
Laches consists of two elements: "(I) the plaintiff delayed
filing suit for an unreasonable and inexcusable length of time
from the time the plaintiff knew or reasonably should have known
of its claim against the defendant, and (2) the delay operated
to the prejudice or injury of the defendant." A.C. Aukerman, 960
F.2d at 1032. As an equitable doctrine, laches should not be
applied mechanically. Holmberg v. Armbrecht, 327 U.S. 392, 396
(1946). Rather, a court should take into consideration the facts
and circumstances of the case at hand and weigh the equities of
17
the parties. A.C. Aukerman, 960 F.2d at 1032. In connection with
an inventorship claim, the period of delay commences when the
purported inventor has actual or constructive notice of a patent
application that omitted him as inventor or incorrectly included
persons on an application, or that such an application is
forthcoming. Bd. Of Trustees of Leland Stanford Junior Univ. v.
Roche Molecular Sys. Inc., 583 F.3d 832, 847-48
(Fed. Cir.
2009); Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys.,
Inc., 988 F.2d 1157, 1162 (Fed. Cir. 1993)
("This knew-or
should-have-known criterion is appropriate to actions to correct
inventorship./I; "Absent actual knowledge, the facts must support
a duty of inquiry./I). In the case before this Court, the period
of delay is measured from when plaintiff Mahmood knew or should
have known - or was on inquiry notice that would have led him to
such knowledge - that RIM had sought patents relating to the
Blackberry email application.
Delay in bringing suit is, standing alone, not enough to
support a laches defense. Advanced Cardiovascular Sys., Inc.,
988 F.2d at 1161 ("The mere passage of time does not constitute
laches./I) Both factual premises of laches-i.e., delay and
prejudice-must be met. Id.
A delay of more than six years "after the omitted inventor
knew or should have known of the issuance of the patent will
18
produce a rebuttable presumption of laches." Advanced
Cardiovascular Sys. 988 F.2d at 1163. With the presumption, the
facts of unreasonable delay and prejudice must be inferred,
absent rebuttal evidence. A.C. Aukerman, 960 F.2d at 1037.
However, a presumption "is not merely rebuttable but completely
vanishes upon the introduction of evidence sufficient to support
a finding of the nonexistence of the presumed fact." Id.
Here, for the same reasons discussed above, which lead to
the conclusion that there is no genuine issue of material fact
regarding the reasonableness for delay with respect to equitable
tolling, there is similarly no genuine issue with regard to that
same element in a laches claim. The presumption of laches is
therefore not rebutted with regard to that element. However,
there is a genuine issue of fact with regard to whether
defendant RIM will be prejudiced as a result of allowing the
inventorship claim to proceed.
Defendant argues that, if the inventorship claim is not
dismissed, the "investment in and financial success deriving
from the '694 patent" is itself economic prejudice and the
inability to locate documents and possibility that witnesses may
have "little recollection" of the events alleged would result in
evidentiary prejudice.
{Def.'s Br. at 21-23.}
19
First, plaintiff rebuts the presumption of economic
prejudice that defendant would face, asserting that " [m]ere
investments and costs" related to the Blackberry-which plaintiff
argues would have happened even if his claim was brought
earlier-are not enough.
(PI.'s Br. at 10-11.) This Court agrees.
The law is clear that merely asserting that damages would be
incurred upon a finding of liability is insufficient to support
economic prejudice for purposes of laches. Serdarevic v.
Advanced Med. Optics, Inc., No. 06 Civ. 7107 (DLC), 2007 WL
2774177, at *5 (S.D.N.Y. Sept. 25, 2007)
("This concept [of
economic prejudice] addresses something more than the damages
that may be awarded for a finding of infringement.")
Defendant RIM has not raised what could be a persuasive
argument in support of economic prejudice: that had RIM known of
plaintiff's intent to pursue his claims earlier, it could have
designed around the '694 patent. Designing around the solution
might have altered various commercial and economic relationships
and prevented investment in a technology potentially clouded by
plaintiff's assertions.
Second, plaintiff also rebuts the presumption of
evidentiary prejudice, arguing that defendant does not point to
any specific witnesses that can not testify or documentary
evidence that has been destroyed. (PI.'s Br. at 11.) There is a
20
genuine issue of material fact as to whether the evidentiary
record has worsened to the point that the truth of plaintiff's
inventorship claim cannot be determined due to the passage of
time. The record contains emails demonstrating that there was
certain information relating to plaintiff's PageMail technology
shared with defendant, some of the paper trail regarding those
disclosures exists and can be evaluated. Moreover, plaintiff
claims that he now has the source code for his PageMail solution
and this can be compared to the source code for various products
that include the \694 invention.
(Mahmood Decl.
~
67.)
Similarly, the floppy disks plaintiff possesses may answer some
of the evidentiary questions. In short, there is a sufficient
evidentiary record available that does not depend solely on
unassisted human recollection that there is a genuine issue of
fact as to whether the passage of time has in fact prejudiced
defendant in this regard. No doubt defendant would prefer not to
have to litigate this claim after the passage of so much time
but the law clearly provides that the passage of time is not
alone enough to forfeit a claim. There must also be prejuduice.
Accordingly, summary judgment on timeliness is DENIED as to
the inventorship claim (Count I).
21
THE MOTION FOR DISCOVERY
Following the adage that the best defense is a good
offense, plaintiff responds to the possibility of summary
judgment with a motion for discovery pursuant to Federal Rule of
Civil Procedure 56(d). Such a motion is unavailing. As already
described, this Court only grants summary judgment as to
timeliness of the state law claims. It does not grant it as to
inventorship. Thus, there is no need for discovery with regard
to the inventorship claim for purposes of opposing this motion.
With respect to the state law claims, the only issue that
could be the subject of discovery would be the element of
reasonableness of delay regarding equitable tolling. Here, as
the Court has described, the facts as set forth, agreed to or
not disputed by plaintiff, make it clear that he bears the
responsibility of his own delay. His assertion that RIM's denial
of his claim and request for support is not an argument that
needs further development to be made. He has made the argument
and it is insufficient as a matter of law. This Court is not
required to delay summary judgment when pursuit of the discovery
sought would not assist the court or the parties with regard to
the motion at hand.
See~,
Kashfi v. Phibro-Salomon, Inc.,
628 F. Supp. 727, 735 n.10 (S.D.N.Y. 1986)
(where court can not
ascertain any meritorious benefit to further discovery,
22
precluding summary judgment would be senseless).
There is
undoubtedly a variety of merits discovery that both parties will
need to undertake with regard to the inventorship claim. But the
ultimate determination of that claim, even in plaintiff's favor,
will not revive his state law claims.
FORUM NON CONVENIENS
Granting a motion to dismiss on the basis of forum non
conveniens is within the sound discretion of this Court.
Iragorri v. United Techs. Corp., 274 F.3d 65, 72 (2d Cir. 2001).
Among the factors that a court weighs in making its
determination are: what degree of deference to accord the
plaintiff's choice, whether the alternative forum is adequate to
adjudicate the dispute and, finally, what public and private
interests are implicated in the choice of forum. Id. at 72-74.
" [T]here is ordinarily a strong presumption in favor of the
plaintiff's choice of forum." Piper Aircraft Co. v. Reyno, 454
U.S. 235, 255 (1981). Here, the sole remaining claim relates to
the inventorship of a U.S. patent. Such a claim must be brought
in a U.S. court. Voda v. Cordis Corp., 476 F.3d 887, 903 (Fed.
Cir. 2007). That is dispositive of this argument.
23
CONCLUSION
For the reasons set forth above, summary judgment is DENIED
as to Count I, and GRANTED as to Counts II IV. Counts II-IV are
DISMISSED with prejudice. This action shall proceed solely with
respect to Count I. The parties are directed to confer on a
schedule for discovery and to submit a proposed schedule to the
Court no later than February 6, 2012.
SO ORDERED.
Dated:
New York, New York
January 23, 2012
KATHERINE B. FORREST
United States District Judge
24
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