KATHERINE B. FORREST, District Judge.
Plaintiff Tahir Mahmood filed this case on August 1, 2011. The complaint asserts a claim for correction of inventorship relating to a patent owned by defendant Research in Motion Ltd. ("RIM") for RlM's iconic Blackberry email application (Count I), and state law claims for conversion, unfair competition and unjust enrichment (Counts II-IV). On September 22, 2011, defendant moved to dismiss all counts based on statute of limitations and pre-emption as to the state law claims, laches as to the inventorship claim and forum non-conveniens. (Dkt Nos. 11-12.) On December 16, 2011, this Court notified the parties that it would convert the motion to one for summary judgment and provided the parties with an opportunity to submit additional materials. (Dkt No. 20.) Both parties subsequently made factual submissions. (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.
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. (
The parties do not dispute that, in 1995, plaintiff and an employee of RIM communicated regarding a software solution that plaintiff had developed for email called "PageMail." (
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. (
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 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. (
Then, in 2008, plaintiff asserts that he inadvertently discovered materials supportive of his claim in a box in his brother's garage. (
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.
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, "stopping 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.
In the submissions with respect to defendant's original motion to dismiss, defendant RIM filed material outside the four corners of the complaint. (
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);
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.
Plaintiff does not dispute that there are applicable statutes of limitations with regard to each of his three state law claims. (
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 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 2007; 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.)
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 statute of limitations is a "rare remedy to be applied in unusual circumstances."
Equitable tolling provides that a court may exercise its discretion to allow an otherwise untimely action to proceed when conduct by one party
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 such conduct would be acted upon by the plaintiff; and (3) that defendant RIM had knowledge of the real facts.
Here, 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, 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", he both doubted the strength and validity of his claims, 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, as a matter of law, be found to have "induced" plaintiff to forego or cease exploration of a known claim. First, the December 2001 snapshot from the website of his company directly connects RIM, 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, he had read "parts of" the '694 patent. (Mahmood Decl. ¶ 50,) He had 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."
In addition, it cannot be the case that the discovery in 2008 of the box in his brother's garage can be what reasonably "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 (
Accordingly, there is no genuine issue of material fact as to any element for equitable tolling. The statute of limitations 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.
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 (
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. 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 is unacceptable neglect or delay in bringing suit which causes prejudice to the other party.
Laches consists of two elements: "(1) 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."
Delay in bringing suit is, standing alone, not enough to support a laches defense.
A delay of more than six years "after the omitted inventor knew or should have known of the issuance of the patent will produce a rebuttable presumption of laches."
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.)
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. (Pl.'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.
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. (Pl.'s Br. at 11.) There is a 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 1694 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).
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.
Granting a motion to dismiss on the basis of forum non-conveniens is within the sound discretion of this Court.
[T]here is ordinarily a strong presumption in favor of the plaintiff's choice of forum."
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.