LUCY H. KOH, District Judge.
On May 3, 2012, Defendants Lee Chen, Rajkumar Jalan, Ron Szeto, and Steve Hwang (collectively, the "Individual A10 Defendants") and A10 Networks, Inc. ("A10"; collectively "A10 Defendants") filed a motion for summary judgment ("A10's Mot."). Defendant David Cheung joined that motion. On May 17, 2012, Plaintiffs Brocade Communications Systems, Inc. and Foundry Networks, LLC (collectively, "Brocade") filed an opposition to A10's motion. On May 24, 2012, the A10 Defendants filed a reply. ECF No. 550. The Court held a hearing on A10's motion on June 8, 2012. The pretrial conference in this matter is set for June 27, 2012; the trial will begin on July 16, 2012. Because the parties require a ruling on this motion on an expedited basis, the Court will keep its analysis brief.
The parties are familiar with the factual and procedural background of this case, and the Court will not repeat it here. The Court refers the unfamiliar reader to its Orders of January 6, 2012, 2012 WL 33251. See ECF Nos. 434, 438. In short, Brocade alleges that in 2004, Mr. Chen, a co-founder of Foundry (a wholly owned subsidiary of Brocade), secretly began to develop a
Brocade's third amended complaint alleges the following claims: (a) patent infringement (10 asserted claims from six patents); (b) trade-secret misappropriation (20 trade secrets); (c) copyright infringement (5 copyrights); (d) breach of contract; (e) breach of fiduciary duty; (f) breach of loyalty; (g) interference with contract and prospective economic advantage; and (h) California's Unfair Competition Law ("UCL"), Cal. Bus. & Prof.Code §§ 17200, et seq.
A10 moves for summary judgment on all of Brocade's claims. A10 argues that Brocade has adduced no evidence of patent infringement, copyright infringement, trade secret misappropriation, or any of its other state law claims. Brocade has withdrawn its breach of fiduciary duty, breach of loyalty, and UCL claims. See Opp'n 22. Accordingly, A10's motion is GRANTED as to Brocade's breach of fiduciary duty, breach of loyalty, and UCL claims. The Court sets forth the general standard for summary judgment and then discusses each of Brocade's remaining claims in turn.
Under Federal Rule of Civil Procedure 56(a), "the court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Material facts are those that may affect the outcome of the case. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A dispute as to a material fact is "genuine" if the evidence is such that "a reasonable jury could return a verdict for the nonmoving party." See id. "[I]n ruling on a motion for summary judgment, the judge must view the evidence presented through the prism of the substantive evidentiary burden." Id. at 254, 106 S.Ct. 2505. The question is "whether a jury could reasonably find either that the [moving party] proved his case by the quality and quantity of evidence required by the governing law or that he did not." Id. "[A]ll justifiable inferences must be drawn in [the nonmovant's] favor." See United Steelworkers of Am. v. Phelps Dodge Corp., 865 F.2d 1539, 1542 (9th Cir.1989) (en banc) (citing Liberty Lobby, 477 U.S. at 255, 106 S.Ct. 2505).
The moving party bears the initial responsibility for informing the district court of the basis for its motion and identifying those portions of the pleadings, depositions, interrogatory answers, admissions and affidavits, if any, that it contends demonstrate the absence of a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). A party opposing a properly supported motion for summary judgment "may not rest upon the mere allegations or denials of [that] party's pleading, but ... must set forth specific facts showing that there is a genuine issue for trial." See Fed.R.Civ.P. 56(e); see also Liberty Lobby, 477 U.S. at 250, 106 S.Ct. 2505. The opposing party need not show the issue will be resolved conclusively in its favor. See Liberty Lobby, 477 U.S. at
As the Federal Circuit has noted, summary judgment of noninfringement is a two-step analysis. "First, the claims of the patent must be construed to determine their scope. Second, a determination must be made as to whether the properly construed claims read on the accused device." Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed.Cir.1999) (internal citation omitted). "[S]ummary judgment of non-infringement can only be granted if, after viewing the alleged facts in the light most favorable to the non-movant, there is no genuine issue whether the accused device is encompassed by the claims." Id. at 1304.
Brocade alleges that Defendants A10, Chen, and Jalan infringe eight apparatus claims and two method claims from six patents through either: (1) direct infringement; (2) the doctrine of equivalents; or (3) indirectly through inducement or contributory infringement. The parties disagree as to the legal standard that should apply to these claims.
As an initial matter, Brocade has submitted only argument without citing any evidence that Messrs. Chen and Jalan engaged in any kind of patent infringement. See Opp'n 7-11. Federal Rule of Civil Procedure 56 requires a party asserting that a fact is genuinely disputed to support the assertion by: "citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for purposes of the motion only), admissions, interrogatory answers, or other materials." Brocade has not done so with regard to its patent infringement claims against Messrs. Chen and Jalan. Although Brocade states the proposition of law that corporate officers who actively aid and abet their corporation's infringement may be personally liable for inducing infringement, Brocade does not cite any facts, let alone sufficient facts to raise a genuine factual dispute as to whether this proposition of law applies to Messrs. Chen and Jalan. Opp'n 11 (citing Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1579 (Fed. Cir.1986)). Accordingly A10's motion for summary judgment is GRANTED as to all patent infringement claims against Messrs. Chen and Jalan.
A10 argues that for the apparatus claims at issue here, Brocade is required to show more than the capacity to perform a particular claim element; rather "Plaintiffs must show evidence of direct infringement by showing that customers actually use the infringing features." Mot. 5 (citing Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1329 (Fed.Cir.2010); Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1204 (Fed.Cir.2010)). Brocade, on the other hand, argues that "[t]here is no requirement that [an] apparatus be used in a particular manner" to establish direct infringement. Opp'n 7 (citing Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed.Cir.1990)).
The correct standard to apply to apparatus claims depends on the language of a particular claim. As the Federal Circuit has cautioned, "`in every infringement analysis, the language of the claims, as well as the nature of the accused product,
In contrast, "[t]o infringe a method claim, a person must have practiced all steps of the claimed method." Finjan, 626 F.3d at 1206. "[A] method or process claim is directly infringed only when the process is performed." Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 773 (Fed.Cir.1993) (citing Atlantic Thermoplastics Co. v. Faytex Corp., 970 F.2d 834, 836 (Fed.Cir.1992)).
To prove infringement under the doctrine of equivalents, a plaintiff must show that the allegedly infringing device and claimed limitation perform "substantially the same function in substantially the same way to obtain substantially the same result." Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 38, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997); Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1317 (Fed.Cir.2003). Courts apply the function-way-result analysis to each limitation of a claim, and there can be no infringement "if even one limitation of a claim or its equivalent is not present in the accused device." Lockheed Martin, 324 F.3d at 1321; see also Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935-36 (Fed.Cir.1987).
In order to prove vicarious liability for indirect infringement, a plaintiff must prove that: (1) "the defendant's actions led to direct infringement"; and (2) "the defendant possessed the requisite knowledge or intent to be held vicariously liable." Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1274-75 (Fed.Cir.2004) (citing Hewlett — Packard Co., 909 F.2d at 1469; Met-Coil Sys. v. Korners Unlimited, Inc., 803 F.2d 684, 687 (Fed.Cir.1986)). A patentee may prove indirect infringement through direct or circumstantial evidence. Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1365 (Fed.Cir.2004).
A party who "actively induces infringement of a patent shall be liable as an infringer." 35 U.S.C. § 271(b). Under this provision, "[t]he plaintiff has the burden of showing that the alleged infringer's actions induced infringing acts and that he knew or should have known his actions would induce actual infringements. Inducement requires evidence of culpable conduct, directed to encouraging another's infringement, not merely that the inducer had knowledge of the direct infringer's activities." Lucent v. Gateway, 580 F.3d 1301, 1321-22 (Fed.Cir.2009). A plaintiff may prove the intent element through circumstantial evidence. Id. at 1322 (internal citations omitted).
Under 35 U.S.C. § 271(c), a party is liable for infringement if he "offers to sell or sells within the United States or imports into the United States ... a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use." "In order to succeed on a
The '195 Patent teaches "systems and methods for providing route redundancy across Layer 2 devices, as well as selected ports on L2 devices." '195 Patent 1:38-40. Brocade asserts that A10's AX Series devices infringe Claim 1 of the '195 Patent, an apparatus claim. Claim 1 recites:
'195 Patent 21:22-33.
In its January 6, 2012 Order construing disputed claim terms, the Court construed "transmitting ... redundancy control packets for flooding throughout the Layer 2 network" to mean "transmitting ... redundancy control packets that are in some way configured to be flooded throughout the Layer 2 network."
A10 asserts it is entitled to summary judgment of no direct infringement of Claim 1 of the '195 Patent because Brocade has not provided evidence that any AX Series device actually configured a redundancy control packet to be flooded throughout the Layer 2 network. Brocade argues that even if proof of use of the infringing feature was required, A10's 30(b)(6) witness admitted that the "standard implementation" of the AX Series device was to "broadcast heartbeat messages at layer 2," so "most customers would use it that way." Opp'n 9 (citing McBride Decl. Ex. 9 at 125:23-126:6; Ex. 1 (Ex. 7 at 22-23)). As A10 concedes, Brocade's expert, Dr. Rubin, opined that the heartbeat messages in AX Series devices are redundancy control packets because they have multicast addresses. McBride Decl. Ex. 1 (Ex. 9 at ¶¶ 106-110). Dr. Rubin opined, based on his analysis of the accused products' source code and the AX Series Configuration Guide, that when the AX Series device's heartbeat message is received by a Layer 2 device, the heartbeat message is flooded across the Layer 2 network (or in the designated Virtual Local Area Network (VLAN), if one is defined). Id. at ¶ 107. Thus, contrary to A10's position, Brocade has cited evidence that the standard implementation of the accused products configures redundancy control packets — heartbeat messages — to be flooded throughout the Layer 2 network. Therefore, Brocade has raised a genuine issue of material fact as to whether the AX Series devices directly infringe Claim 1 of the '195 Patent. Accordingly, A10's summary judgment motion is DENIED as to Brocade's claim that A10 directly infringes Claim 1 of the '195 Patent.
A10 argues that it is entitled to summary judgment of non-infringement of Claim 1 of the '195 Patent under the doctrine of equivalents because Brocade relies
A10 argues that it is entitled to summary judgment on Brocade's claim of indirect infringement of Claim 1 of the '195 Patent on the sole ground that Brocade cannot prove or quantify acts of direct infringement by customers. Mot. 8 (citing Dynacore, 363 F.3d at 1274). However, as discussed above, Brocade has raised a genuine issue of material fact as to whether the accused products directly infringe. Thus, it is reasonable to infer that customers using these devices at all in their standard mode would directly infringe Claim 1 of the '195 Patent. As the Federal Circuit has held, "the sale of a device may induce infringement of a method claim, even if the accused device is capable of non-infringing modes of operation in unusual circumstances." Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1343 (Fed.Cir.2001). Given that A10 raises no other arguments in support of its motion for summary judgment, A10's summary judgment motion is DENIED as to Brocade's claim that A10 indirectly infringes Claim 1 of the '195 Patent.
The '427 Patent teaches "providing redundancy support for network address translation (NAT) devices (such as routers or switches) in the event of a failover." '427 Patent 1:10-12. Brocade claims that A10's AX Series devices infringe Claims 4 and 5 of the '427 Patent.
Claim 1, from which Claims 4 and 5 depend, recites:
'427 Patent 9:12-26 (emphasis added).
Claim 4 recites:
'427 Patent 9:39-47 (emphasis added).
Claim 5 recites:
'427 Patent 9:48-56 (emphasis added).
A10 argues it is entitled to summary judgment of no direct infringement of Claims 4 and 5 of the '427 Patent because Brocade fails to submit evidence that any A10 product has been configured to have a "back-up device on a separate virtual local area network (VLAN) connection different from a VLAN connection used to carry traffic," as required by Claims 4 and 5 of the '427 Patent. A10 also argues that Claims 4 and 5 require that a master device be configured to provide heartbeat messages and synchronization information, citing the prosecution history. However, the Court need not consider A10's prosecution history argument because it is in direct conflict with the express claim language. Unlike Claim 1 of the '195 Patent, the express language of Claims 4 and 5 of the '427 do not include any "configuration" language that could arguably require "actual operation." Finjan, 626 F.3d at 1204. Rather, both claims recite "instructions" that are "executable," the plain meaning of which recites "capability" to execute. Id.; see also Intel v. ITC, 946 F.2d 821, 832 (Fed.Cir.1991) ("Because the language of claim 1 refers to `programmable selection means' ... the accused device, to be infringing, need only be capable of operating in the infringing mode.") (emphasis added). Although A10 states that Dr. Rubin admitted in his deposition that he failed to identify any instructions that receive heartbeat messages or synchronization information, A10 omits a section of Dr. Rubin's testimony stating that the source code shows "[the instruction] is being received because it has the destination address of the counterpart." Mosko Decl. Ex. 7 at 203:12-204:19. Thus, even if Brocade were required to show actual operation — which it is not under the claim language here — Brocade has raised a genuine issue of material fact as to whether the AX Series devices directly infringe Claims 4 and 5 of the '427 Patent. Accordingly, A10's motion as to direct infringement of Claims 4 and 5 of the '427 Patent is DENIED.
Brocade merely points the Court to one example of Dr. Rubin's doctrine of equivalents analysis, which only discusses the '833 Patent and does not apply to the '427 Patent. Opp'n 10 ("See, e.g., [McBride Decl.] Ex. 1 at Ex. 13 at 37-38"). Accordingly, A10's motion for summary judgment as to Claims 4 and 5 of the '427 Patent is GRANTED for the reasons set forth in Section II.B.2.
A10 argues that it is entitled to summary judgment on Brocade's claim of indirect infringement of Claims 4 and 5 of the '427 Patent on the sole ground that Brocade cannot prove or quantify acts of direct infringement by customers. Mot. 8 (citing Dynacore, 363 F.3d at 1274). However, as discussed above, Brocade has raised a genuine issue of material fact as to whether the accused products directly infringe Claims 4 and 5 of the '427 Patent by being capable of executing the instructions required by the claims. Thus, using these devices at all, even if in modes not executing the required instructions, would still directly infringe Claims 4 and 5 of the '427 Patent. Given that Brocade has rebutted the sole ground upon which A10 sought summary judgment as to indirect infringement, the motion is DENIED as to Brocade's claim that A10 indirectly infringes Claims 4 and 5 of the '427 Patent.
The '370 Patent and the '427 Patent are related and share a common specification. Like the '427 Patent, the '370 Patent teaches "providing redundancy support for network address translation (NAT) devices (such as routers or switches) in the event of a failover." Brocade asserts that A10's AX series devices infringe Claims 18 and 32 of the '370 Patent.
Claim 18 recites:
'370 Patent 11:48-60 (emphasis added).
Claim 32 recites: "The apparatus of claim 27 wherein said device is further adapted to perform routing for said first pool of first addresses." '370 Patent 14:8-10. Claim 27, from which Claim 32 depends, recites:
'370 Patent 12:50-64 (emphasis added).
A10 argues that the language of Claim 32, as interpreted by Dr. Rubin,
According to A10, the '370 Patent only covers "Active-Active" configurations, which have a pair of devices, each of which simultaneously acts as a "master" for one pool of addresses and a "backup" for another pool of addresses. Mot. 6 (citing Mosko Decl. Ex. 9 ¶ 72; Ex. 10 at 110 n. 23). A10 contends that Dr. Rubin conceded that the AX Series device need not be used in pairs and can be in other configurations where one device is not master for any pool of addresses. Id. (citing Mosko Decl. Ex. 9 ¶ 72). Brocade submitted evidence that a pair of AX Series devices can be configured in "Active-Active" mode, "[w]hen the devices are deployed in an HA ("high availability") pair." McBride Decl. Ex. 1 (at Ex. 11 p. 1). A10's expert, Dr. Tygar, concedes that "AX devices running certain software versions support HA." Mosko Decl. Ex. 10, at 110. Indeed, Dr. Tygar concedes that the Configuration Guide explains how to configure the devices to operate in HA mode. Id. Thus, a genuine dispute of material facts exists as to whether the AX Series devices directly infringe Claims 18 and 32, because they are capable of being configured in Active-Active mode.
Moreover, even if Brocade were required to show actual operation in Active-Active mode, Brocade has submitted sufficient evidence to survive summary judgment. Active-Active mode, which the parties agree is one way of operating in the HA mode, Tr. 101:14-15, is a feature of the AX series device explained in the configuration guide. Given that A10 admitted to testing the features of the AX Series device in the United States, it is reasonable to infer that A10 tested whether the AX Series device could be configured in HA mode, and therefore actually configured it to operate in HA mode. See McBride Decl. Ex. 4, at 34:1-7; 38:2-24; see also McBride Decl. Exs. 5-8.
In summary, Brocade has raised a genuine dispute of material fact as to whether A10 directly infringes Claims 18 and 32 of the '370 Patent. Accordingly, A10's motion for summary judgment as to direct infringement of Claims 18 and 32 of the '370 Patent is DENIED.
Brocade merely points the Court to one example of Dr. Rubin's doctrine of equivalents analysis, which only discusses the '833 Patent, and does not apply to the '370 Patent. Opp'n 10 ("See, e.g., [McBride Decl.] Ex. 1 at Ex. 13 at 37-38"). Accordingly, A10's motion for summary judgment as to Claims 18 and 32 of the '370 Patent is GRANTED for the reasons set forth in Section II.B.2.
A10 argues that it is entitled to summary judgment on Brocade's claim of indirect infringement of Claims 18 and 32 of the '370 Patent on the sole ground that Brocade cannot prove or quantify acts of direct infringement by customers. Mot. 8 (citing Dynacore, 363 F.3d at 1274). However, as discussed above, Claims 18 and 32 require only capability to detect device failure or operate in Active-Active mode. Brocade has raised a genuine issue of material fact as to whether the AX Series devices directly infringe Claims 18 and 32 of the '370 Patent by being capable of detecting device failure and operating in Active-Active mode. Thus, using these devices at all, even without detecting device failure or operating in Active-Active mode, would still directly infringe Claims 18 and 32 of the '370 Patent. Given that Brocade has rebutted the sole ground upon which A10 sought summary judgment as to indirect infringement, the motion is DENIED as to Brocade's claim that A10 indirectly infringes Claims 18 and 32 of the '370 Patent.
The '500 Patent relates to Global Server Load-Balancing ("GSLB"). Brocade asserts Claim 1, a method claim, and Claim 25, an apparatus claim.
Claim 1 recites:
'500 Patent 6:57-7:14 (emphasis added).
Claim 25 recites:
'500 Patent 10:1-24 (emphasis added).
A10 argues that it is entitled to summary judgment on direct infringement of Claim 1 and Claim 25 of the '500 Patent because Brocade offers no evidence that any AX Series device ever used the RTT metric, which A10 contends is a necessary element of the asserted claims of the '500 Patent. Brocade's expert conceded that the AX Series devices infringe only when configured to store passive, rather than active RTT. Mosko Ex. 12, at 41:20-25. A10 also argues that AX Series devices do not use a passive RTT, and current AX devices do not provide this feature. Mot. 7. However, A10's own cited evidence shows that passive RTT was one of the metrics available for the AX Series. Mosko Decl. Ex. 10, at 136 (citing A10 Configuration Guide, v.2.4.3, dated 3/18/2011). Given that A10 admitted to testing the features of the AX Series devices in the United States, it is reasonable to infer that A10 tested whether the AX Series devices could store passive RTT, and therefore actually configured the AX Series devices to store passive RTT. See McBride Decl. Ex. 4, at 34:1-7; 38:2-24; see also Exs. 5-8. Moreover, Dr. Bestavros cited A10's configuration guide and source code, which provides further evidence that the AX Series devices store passive RTT. McBride Decl. Ex. 2 (Ex. 5). Thus, Brocade has raised a genuine issue of material fact as to direct infringement of Claims 1 and 25 of the '500 Patent. Accordingly, A10's motion as to direct infringement of these claims is DENIED.
Brocade merely points the Court to one example of Dr. Rubin's doctrine of equivalents analysis, which only discusses the '833 Patent, and does not apply to the '500 Patent. Opp'n 10 ("See, e.g., [McBride Decl.] Ex. 1 at Ex. 13 at 37-38"). Accordingly, A10's motion for summary judgment as to Claims 1 and 25 of the '500 Patent is GRANTED for the reasons set forth in Section II.B.2.
A10 argues that it is entitled to summary judgment on Brocade's claim of indirect infringement of Claims 13 and 23 of the '500 Patent on the sole ground that Plaintiff cannot prove or quantify acts of direct infringement by customers. Mot. 8 (citing Dynacore, 363 F.3d at 1274). However, a patentee may prove indirect infringement through circumstantial evidence. Metabolite, 370 F.3d at 1365. Brocade has cited evidence that A10's configuration guide explicitly taught customers how to "adjust Passive RTT settings." McBride Decl. Ex. 2 (Ex. 5, at 2). The Federal Circuit has found circumstantial evidence sufficient to survive summary judgment on indirect infringement where the plaintiff submitted evidence that the accused infringer designed the accused products to practice the claimed invention and instructed its customers to use the accused products in an infringing way. Lucent, 580 F.3d at 1318. Thus, evidence of A10's instructions to its customer raises a genuine material factual dispute as to whether A10's customers have engaged in direct infringement. Accordingly, A10's motion for summary judgment is DENIED
Like the '500 Patent, the '009 Patent also relates to GSLB. Brocade asserts that A10's AX Series devices infringe Claims 13 and 24 of the '009 Patent.
Claim 13 recites:
'009 Patent 8:48-9:7 (emphasis added).
Claim 24 recites:
'009 Patent 9:62-10:34 (emphasis added).
A10 argues it is entitled to summary judgment on direct infringement of Claims 13 and 24 of the '009 Patent because Brocade has not identified an AX Series device configured or adapted to include a load balancing switch, site switches, and host servers as Claims 13 and 24 require. Mot. 7; Reply 3 (citing Mosko Decl. Ex. 33 ¶¶ 187, 189, 195-197, 203-04). However, unlike method claims, which require "the performance of each claimed step," system claims "do not require the performance of any method steps." Finjan, 626 F.3d at 1204 (citing NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1318 (Fed.Cir.2005)). Brocade cites Dr. Bestavros's infringement claim chart, which in turn cites evidence from the configuration guide and the AX Series source code, as evidence that the AX Series devices practice all of the elements of Claims 13 and 24. McBride Decl. Ex. 2 (Ex. 7). Even if Brocade were required to show actual operation, given that A10 admitted to testing the features of the AX Series devices in the United States, it is reasonable to infer that A10 tested whether the AX Series devices could perform the features discussed in the configuration guide, which include the load balancing switches, site switches, and host servers. See McBride Decl. Ex. 4, at 34:1-7; 38:2-24; see also McBride Decl. Exs. 5-8. Thus, Brocade has raised a genuine dispute of material fact as to direct infringement of Claims 13 and 24 of the '009 Patent. Accordingly, A10's motion as to direct infringement of these claims is DENIED.
Brocade merely points the Court to one example of Dr. Rubin's doctrine of equivalents analysis, which only discusses the '833 Patent, and does not apply to the '009 Patent. Opp'n 10 ("See, e.g., [McBride Decl.] Ex. 1 at Ex. 13 at 37-38"). Accordingly, A10's motion for summary judgment as to Claims 13 and 24 of the '009 Patent is GRANTED for the reasons set forth in Section II.B.2.
A10 argues that it is entitled to summary judgment on Brocade's claim of indirect infringement of Claims 13 and 24 of the '009 Patent on the sole ground that Brocade cannot prove or quantify acts of direct infringement by customers. Mot. 8 (citing Dynacore, 363 F.3d at 1274). However, a patentee may prove indirect infringement through circumstantial evidence. Metabolite, 370 F.3d at 1365. However, unlike with the '500 Patent, where Brocade has cited evidence that A10's configuration guide explicitly taught customers how to "adjust Passive RTT settings," here, Plaintiff has not cited comparable language that instructed customers how to perform all of the elements of Claims 13 and 24 of the '009 Patent. McBride Decl. Ex. 2 (Ex. 5, at 2). Thus, Brocade has failed to point to any evidence, circumstantial or otherwise, that A10's customers infringed Claims 13 and 24 of the '009 Patent. Thus, Brocade has not raised a genuine issue of material fact as to whether A10 engaged in "culpable conduct, directed to encouraging another's infringement, not merely that the inducer had knowledge of the direct infringer's activities." Lucent, 580 F.3d at 1321-22. Accordingly, A10's motion for summary judgment is GRANTED as to Brocade's claim that A10 indirectly infringed Claims 13 and 24 of the '009 Patent.
The '833 Patent is entitled "System and Method for Protecting CPU Against Remote Access Attacks." Brocade alleges that A10 infringes Claim 1, which recites:
'833 Patent 10:2-12 (emphasis added).
"To infringe a method claim, a person must have practiced all steps of the claimed method." Finjan, 626 F.3d at 1206. A10 argues it is entitled to summary judgment on infringement of Claim 1 of the '833 Patent because Brocade has failed to submit any evidence that any AX Series device identifies a port as a "non-management port," as required by Claim 1 of the '833 Patent, or performs the "filtering" element of Claim 1. Dr. Rubin opined, drawing support from the configuration guide and the AX Series source code, that the features of "identifying ... a management port" and "filtering" are enabled by default in the AX Series device's source code. See McBride Decl. Ex. 1 (Ex. 13, at 1, 13). Moreover, given that A10 admitted to testing the features of the AX Series device in the United States, it is reasonable to infer that A10 tested whether the AX Series device could perform the features discussed in the configuration guide. See McBride Decl. Ex. 4, at 34:1-7; 38:2-24; see also McBride Decl. Exs. 5-8. Thus, Brocade has raised a genuine issue of material fact as to direct infringement of Claim 1 of the '833 Patent. Accordingly, A10's motion as to direct infringement of Claim 1 of the '833 Patent is DENIED.
A10 argues that it is entitled to summary judgment on infringement under the doctrine of equivalents as to Claim 1 of the '833 Patent because Brocade provides nothing other than unsupported expert testimony and merely relies on the evidence supporting literal infringement. Unlike with the other patents-in-suit, Brocade does cite to the record to support infringement under the doctrine of equivalents for the '833 Patent. Brocade argues that its experts identified the function, way, and result to prove there is no substantial difference between the AX Series devices and the asserted claims. Opp'n 10 (citing McBride Decl. Ex. 1 (Ex. 13, at 37-38)). Although this cited passage does provide Dr. Rubin's conclusion that the AX Series devices infringe Claim 1 of the '833 Patent under the doctrine of equivalents, it does not cite to any evidence. As the Federal Circuit has stated, "[C]onclusory statements regarding equivalence ... do not raise any genuine issues of material fact." PC Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359, 1364 (Fed.Cir.2005). Accordingly, A10's motion for summary judgment as to the infringement of Claim 1 of the '833 Patent under the doctrine of equivalents is GRANTED.
A10 argues that it is entitled to summary judgment on Brocade's claim of indirect infringement of Claim 1 of the '883 Patent on the sole ground that Brocade cannot prove or quantify acts of direct infringement by customers. Mot. 8 (citing Dynacore, 363 F.3d at 1274). However,
Brocade claims that A10 misappropriated 19 technical trade secrets, and 1 commercial trade secret. Of the 19 alleged technical trade secrets: nine relate to software optimization (1, 2, 4, 5, 10, 14, 15, 16, and 17); four relate to hardware optimization (3, 11, 12, and 13); two relate to GSLB (18, 19); and four relate to high availability (6, 7, 8, and 9). Mosko Decl. Ex. 18, at 81. The alleged commercial trade secret, Trade Secret 20, is Brocade's customer contact list and business information and purchasing history related to each customer. Id. at 81-83.
The Uniform Trade Secrets Act ("UTSA") as adopted by California provides remedies for actual and threatened misappropriation of trade secrets. Cal. Civ.Code § 3426 et seq. "Under the UTSA, a prima facie claim for misappropriation of trade secrets requires the plaintiff to demonstrate: (1) the plaintiff owned a trade secret, (2) the defendant acquired, disclosed, or used the plaintiff's trade secret through improper means, and (3) the defendant's actions damaged the plaintiff." Sargent Fletcher, Inc. v. Able Corp., 110 Cal.App.4th 1658, 1665, 3 Cal.Rptr.3d 279 (2003). "Improper means" is defined as "theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means." Cal. Civ.Code. § 3426.1(a). Plaintiffs alleging trade secret misappropriation may prove such misappropriation by circumstantial as well as direct evidence. UniRAM Tech., Inc. v. Taiwan Semiconductor Mfg. Co., 617 F.Supp.2d 938, 944 (N.D.Cal.2007) (citing Droeger v. Welsh Sporting Goods Corp., 541 F.2d 790, 792 (9th Cir.1976)).
A trade secret is:
Cal. Civ.Code § 3426.1(d). Thus, the definition of "trade secret" consists of three elements: (a) information; (b) which is valuable because unknown to others; and (c) which the owner has attempted to keep secret. Abba Rubber Co. v. Seaquist, 235 Cal.App.3d 1, 18, 286 Cal.Rptr. 518 (1991). The plaintiff "should describe the subject matter of the trade secret with sufficient particularity to separate it from matters of general knowledge in the trade or of special knowledge of those persons skilled
The A10 Defendants argue they are entitled to summary judgment on Brocade's 20 trade secret claims because: (1) Brocade offers no evidence that Trade Secrets 1-19 qualify as trade secrets; (2) Brocade offers no evidence that Trade Secret 20 qualifies as a trade secret or was misappropriated; (3) Brocade offers no evidence of misappropriation; and (4) the action is barred by the statute of limitations. The Individual A10 Defendants also argue that summary judgment in their favor is appropriate because Brocade has offered no evidence of damages against the Individual Defendants. The Court addresses each of these arguments in turn:
A10 argues that Brocade fails to adduce sufficient evidence that Trade Secrets 1-19:(1) were not generally known; and (2) have independent economic value. The Court disagrees for the following reasons.
As to general knowledge of Trade Secrets 1-19, A10 argues that Brocade cannot meet their burden to survive summary judgment because they only offer conclusory expert testimony and 30(b)(6) witness testimony. Brocade has provided evidence that Trade Secrets 1-19 were not publicly available. The declarations of Messrs. Kancherla and Joshi contain evidence that Trade Secrets 1-19 were developed based on confidential feedback from customers and are implemented in Brocade's source code, which is not disclosed to the public. Kancherla Decl. ¶¶ 5, 7; Joshi Decl. 5. Brocade has also submitted evidence that Brocade takes steps to ensure that its employees maintain the confidentiality of such information, including specific agreements between Foundry and Brocade and their employees regarding the handling of confidential information; the development and distribution of Foundry and Brocade handbooks and policies; and the conduct of employee entrance and exit interviews. ECF No. 131, McGil Decl. ¶¶ 4, 6, 31-34. Evidence of these steps is sufficient to raise a genuine issue of material fact as to whether Trade Secrets 1-19 were generally known. See, e.g., MAI Sys. Corp. v. Peak Computer, 991 F.2d 511, 521 (9th Cir.1993). Thus, Brocade has made an adequate showing that the information is not generally known to the public.
As to independent economic value, A10 argues that: (1) Brocade offers only conclusory expert testimony; (2) Brocade does not measure the value of the Trade Secrets; and (3) Brocade does not use some of its alleged trade secrets. Mot. 10-11. The Court does not agree with A10's characterization of the testimony. A10 suggests it is entitled to summary judgment because Brocade has not offered evidence that it: (1) measures the performance enhancing attributes of the alleged trade secrets, and (2) actually uses the alleged trade secrets. However, A10 does not cite any legal authority to support the proposition that these are necessary elements of a trade secret.
Brocade has adduced evidence that Trade Secrets 1-19 are valuable in their own right, but more importantly for the analysis of trade secret claims, derive independent actual or potential economic value from not being generally known to the public. Cal. Civ.Code § 3426.1(d)(1). Specifically, Messrs. Kancherla's and Joshi's declarations state that Trade Secrets 1-19 were developed to solve particular problems based on confidential feedback and review from customers in order to optimize the ServerIron product for Brocade's
Thus, Brocade has raised a genuine material factual dispute as to whether Trade Secrets 1-19 are "trade secrets" under California law.
A10 argues that Brocade has failed to define Trade Secret 20 with sufficient particularity "to separate it from matters of general knowledge in the trade," and thus that Trade Secret 20 is a protectable trade secret under California law. Mot. 11-12 (citing Imax, 152 F.3d at 1164-68). The Court disagrees.
California requires that "a party seeking to protect trade secrets [] `describe the subject matter of the trade secret with sufficient particularity to separate it from matters of general knowledge in the trade or of special knowledge of those persons who are skilled in the trade, and to permit defendant to ascertain at least the boundaries within which the secret lies.'" Whyte v. Schlage Lock Co., 101 Cal.App.4th 1443, 1453, 125 Cal.Rptr.2d 277 (2002) (emphasis added) (quoting Diodes, Inc. v. Franzen, 260 Cal.App.2d 244, 253, 67 Cal.Rptr. 19 (1968)). Though a plaintiff need not "spell out the details of the trade secret," it must minimally provide "reasonable notice of the issues which must be met at the time of trial and [ ] provide reasonable guidance in ascertaining the scope of appropriate discovery." Id. at 252-53, 67 Cal.Rptr. 19.
Brocade defines Trade Secret 20 to include confidential customer-related information including customer lists and contact information, pricing guidelines, historical purchasing information, and customers' business needs/preferences. This type of information is routinely given trade secret protection. See, e.g., Abba, 235 Cal.App.3d at 18, 286 Cal.Rptr. 518 ("A customer list is one of the types of information which can qualify as a trade secret.") (citations omitted). This information has potential or actual value from not being generally known to the public: information about customers' preferences can aid in "securing and retaining their business." Mattel, Inc. v. MGA Entm't, Inc., 782 F.Supp.2d 911, 972 (C.D.Cal.2011) (citing Aetna Bldg. Maintenance Co. v. West, 39 Cal.2d 198, 205, 246 P.2d 11 (1952)); see also MAI, 991 F.2d at 511 ("The Customer Database has potential economic value because it allows a competitor like Peak to direct its sales efforts to those potential customers that are already using the MAI computer system."). Brocade has cited evidence that it took reasonable steps to maintain the secrecy of this information. See, e.g., ECF No. 131, McGil Decl. ¶ 10 (stating the employee confidentiality agreement covered "customer lists and customers (including but not limited to, customers of [Brocade] on which [employee] called or with which [employee] may become acquainted
A10 argues that Trade Secret 20 does not meet the particularity requirement because Brocade's evidence shows that Trade Secret 20 is "broad," "resides only `in the heads or knowledge of Brocade employees'"; and that the customer names are public knowledge. Mot. 11-12. None of these arguments is persuasive. Given that Brocade's customer names are public, A10 cannot fault Brocade for including additional information linking each customer to other confidential information such as the customer's buying patterns, product needs, and preferences. See Morlife, Inc. v. Lloyd Perry, 56 Cal.App.4th 1514, 1521-22, 66 Cal.Rptr.2d 731 (1997) (noting that "courts are reluctant to protect customer lists to the extent they embody information which is `readily ascertainable' through public sources," but that courts recognize as trade secrets customer lists where plaintiff "has expended time and effort identifying customers with particular needs or characteristics"). It is this combination of elements that makes the information valuable and not generally known to the public. Moreover, the mere fact that the information is not in a written list is not dispositive of sufficient particularity. Excelligence Learning Corp. v. Oriental Trading Co., Inc., C 03-4947 JF, 2004 WL 2944048, at *3 (N.D.Cal. Dec. 20, 2004) ("[T]he UTSA does preclude former employees from using trade secrets during... competition, even secrets that have not been reduced to writing and are carried solely in the employee's mind.") (citing Morlife, 56 Cal.App.4th at 1522-23, 66 Cal.Rptr.2d 731). Thus, A10 is not entitled to judgment as a matter of law that Trade Secret 20 does not meet the particularity requirement.
In sum, although Brocade does not list individual customer names, Brocade has sufficiently "described the subject matter of the trade secret with sufficient particularity to separate it from matters of general knowledge in the trade or of special knowledge of those persons who are skilled in the trade, and to permit defendant to ascertain at least the boundaries within which the secret lies.'" Whyte, 101 Cal.App.4th at 1453, 125 Cal.Rptr.2d 277 (emphasis added). Moreover, Brocade has raised a genuine issue of material fact as to whether Trade Secret 20 is protectable under California law.
A10 asserts that Brocade fails to show that any of its trade secrets were misappropriated because Brocade fails to adduce any evidence that A10 "improperly used [Brocade's] trade secret" or that A10 "did not independently derive the trade secret information." Mot. 12 (citing Sargent Fletcher, 110 Cal.App.4th at 1668-69, 3 Cal.Rptr.3d 279; Rita Med. Sys., Inc. v. Resect Med., Inc., 2007 WL 161049, at *8 (N.D.Cal. Jan. 17, 2007)). A10's test for misappropriation is incomplete. Sargent Fletcher actually states: "It is the plaintiff's burden to show improper use as part of its prima facie case. Proof that the defendant's use resulted from independent derivation or reverse engineering is evidence that there was no improper use on its part." 110 Cal.App.4th at 1669, 3 Cal.Rptr.3d 279. A10 has not pointed to evidence of independent derivation or reverse engineering. Accordingly, the Court focuses on whether Brocade has met its burden of showing misappropriation.
To show misappropriation, Brocade must show that "the defendant acquired, disclosed, or used the plaintiff's trade secret through improper means." Sargent Fletcher, 110 Cal.App.4th at 1665, 3 Cal.Rptr.3d 279. Brocade may prove such
Brocade does not point to any direct evidence that Trade Secrets 1-19 were misappropriated. However, A10 has not asserted that there is an absence of material fact as to whether Defendants "acquired" or "disclosed" Brocade's trade secrets through improper means. Thus, even if, as A10 argues, Brocade were required to adduce evidence that A10 did not independently derive the trade secret information to show "improper use," Brocade would still survive summary judgment because there are other ways of misappropriating a trade secret. Brocade did not have to adduce evidence raising a genuine factual dispute as to improper acquisition or disclosure, because A10 did not move on these grounds.
Moreover, Brocade has pointed to circumstantial evidence from which a reasonable jury could conclude that A10 misappropriated Plaintiffs' Trade Secrets 1-20 through either acquisition, disclosure, or use. For example, Brocade has submitted evidence that Trade Secrets 1-19 were contained in ServerIron source code. Kancherla Decl. ¶ 5; Joshi Decl. ¶ 5. Brocade's forensic expert also states that Steven Hwang and Zhenwu He used their Foundry-issued computers to work directly for A10; communicated regularly with A10 employees; copied or emailed Foundry materials shortly before leaving Foundry; and deleted related files in a manner consistent with an effort to cover their tracks. McBride Decl. Ex. 10, at 5. Brocade's forensic expert report also states that "forensic evidence demonstrates that shortly before leaving foundry Han and Szeto's computers were both used to access and copy Foundry source code files." McBride Decl. Ex. 10, at 18. The forensic report also states that over 54,000 source code files were deleted from Han's computer shortly before his departure from Foundry in February 2005. Id. at 19, 21. Similarly, the forensic report states that Mr. Szeto's computer was used to access and copy a large number of source code files shortly before Szeto left Foundry in May 2005. Id. at 23. This evidence raises a genuine material factual dispute as to whether Trade Secrets 1-19 were misappropriated.
Other evidence raises a genuine issue of material fact as to whether Trade Secret 20 was misappropriated. For example, the forensic report contains evidence of at least four A10 employees using a variety of means to exfiltrate Brocade confidential customer information. McBride Decl. Ex. 10. There is evidence that Mr. Meckley misappropriated contact information (McBride Decl. Ex. 19), confidential price lists (McBride Decl. Ex. 15), and a confidential customer presentation (McBride Decl. Ex. 21). Another exhibit states "Bussan is having good success in Japan taking [Foundry's] customers' ServerIron configurations, converting them to AX, staging our AX and delivering "ready-to-go" solutions." McBride Decl. Ex. 95. This exhibit allows the reasonable inference that A10 was using Brocade's customer list and related business information to gain a competitive advantage. "Misappropriation occurs if information from a customer database is used to solicit customers." MAI, 991 F.2d at 521.
Accordingly, Brocade has raised a genuine issue of material fact as to whether Trade Secret 20 was misappropriated.
Defendants argue that Brocade's trade secret misappropriation claims are barred by the three-year statute
The Court finds, however, that a material factual dispute exists regarding whether Brocade was on notice or otherwise had reason to be suspicious, that trade secret theft had occurred. For example, A10 points to information in the record that some employees at Foundry were surprised at how quickly A10 was able to get a product to market, and that Foundry had lost several employees to A10. See, e.g., Mosko Decl. Ex. 20 (Devarapalli Dep. at 210-211); id. Ex. 21 (Johnson Dep. at 35-37). Moreover, A10 cites evidence that sometime around May 2007, there was a general concern at Foundry that A10 had used Foundry confidential information to develop its product. Anchev Decl. ¶ 10.
On the other hand, Brocade has cited evidence that executives at Foundry were not concerned with departures of Foundry employees to A10, and that Foundry employees viewed A10's product as a non-competitive product when it was first introduced in 2007. See Hemminger Decl. ¶ 6; McBride Decl. Ex. 92 (Heffner Dep. at 13-14); Mosko Decl. Ex. 21 (Johnson Dep. at 35-37). The jury could draw a reasonable inference from the evidence presented that Brocade and Foundry were not on notice to inquire further as of August 2007, which is three years before the filing of the complaint in this case.
Because the documents cited by both sides present a factual question as to whether Brocade should have inquired further, summary judgment is inappropriate. UniRAM Tech., Inc., 617 F.Supp.2d at 947.
The Individual Defendants argue that Brocade has not established damages as against each of them to support a claim of trade secret misappropriation. It is undisputed that Mr. Malackowski, Plaintiff's damages expert, did not apportion damages against each individual defendant. However, Plaintiffs argue that no individual apportionment by the damages expert is necessary because the Individual Defendants are jointly and severally liable for the alleged trade secret misappropriation.
It would be inappropriate to grant A10's motion for summary judgment for failure to estimate damages against Individual Defendants. It does appear that trade secret misappropriation is considered an intentional tort, and thus joint tortfeasors are jointly and severally liable. See, e.g., Clark v. Bunker, 453 F.2d 1006, 1011 (9th Cir.1972). Although Defendants argue that Clark predates the enactment of CUTSA, it does not appear that this fact makes any material difference.
"The CUTSA was derived from the Uniform Act and, like the Uniform Act, was intended to codify the common law." Ajaxo Inc. v. E*Trade Fin. Corp., 187 Cal.App.4th 1295, 1310, 115 Cal.Rptr.3d 168 (2010) (citing Cypress Semiconductor Corp. v. Super. Ct., 163 Cal.App.4th 575, 586, n. 3, 77 Cal.Rptr.3d 685 (2008)). In 1984, when CUTSA was enacted, the common
According to A10, this case involves seven instances of alleged copying. Four involve the public domain Aho-Corasik ("A-C") algorithm and three involve the UDP checksum routines. Mot. 13. Brocade argues that it is entitled to a trial on three theories of copyright infringement: (1) literal copying of source code in the AX Series devices; (2) intermediate copying using Foundry's source code to develop the AX product; and (3) using automation test code authored by Zhenwu He while he was employed with foundry. Opp'n 15. The Court discusses these three theories in turn.
To establish literal copyright infringement, a plaintiff must prove: (1) ownership of a valid copyright, and (2) copying of original elements of the copyrighted work. Feist Publ'ns Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).
In the absence of direct evidence of copying, such as an admission, "copying" may be shown by proving access to the copyrighted work and substantial similarity between the works. Norse v. Henry Holt and Co., 991 F.2d 563, 566 (9th Cir.1993); Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1162 (9th Cir.1977). In determining whether "copying" has been shown in the context of computer software, "which ordinarily contains both copyrighted and unprotected or functional elements," a court determines "whether the protectable elements, standing alone, are substantially similar." Sony Computer Entm't, Inc. v. Connectix Corp., 203 F.3d 596, 599 (9th Cir.2000) (emphasis added); Funky Films, Inc. v. Time Warner Entm't Co., 462 F.3d 1072, 1077 (9th Cir.2006). "Summary judgment is appropriate if "no reasonable juror could find substantial similarity of ideas and expression," viewing the evidence in the light most favorable to the nonmoving party." Kouf v. Walt Disney Pictures & Television, 16 F.3d 1042, 1045 (9th Cir.1994).
Where there is direct evidence of copying, however, the only question on summary judgment is whether the copied material is protected. See Norse, 991 F.2d at 566
A10 argues that it is entitled to summary judgment on Brocade's copyright claims because Brocade's expert failed to filter out all of the non-protected elements such as the A-C algorithm, names, or descriptive
Moreover, in this case, Brocade has submitted direct evidence of copying. McBride Decl. Ex. 55 at ¶¶ 47, 62-84. Thus, the substantial similarity test is not applicable. See Norse, 991 F.2d at 566. Where there is direct evidence of copying, the only question on summary judgment is whether the copied material is protected. See Norse, 991 F.2d at 566. The fact that Brocade has certificates of copyright registration for the copied source code constitutes prima facie evidence of copyrightability and shifts the burden to A10 to demonstrate why the copyright is not valid. Bibbero Sys., Inc. v. Colwell Sys., Inc., 893 F.2d 1104, 1106 (9th Cir.1990); 17 U.S.C. § 410(c). A10 has not argued nor submitted evidence that Brocade's copyrights are invalid. Accordingly, A10's motion for summary judgment as to literal copyright infringement is DENIED.
As the Ninth Circuit has held, "intermediate copying of computer object code may infringe the exclusive rights granted to the copyright owner in section 106 of the Copyright Act regardless of whether the end product of the copying also infringes those rights." Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1519 (9th Cir.1992). A10 argues that Brocade's expert merely offers a conclusory opinion that A10 used intermediate copies in the development of the AX Series code, which does not pass summary judgment muster. Mot. 17. Brocade's expert's declaration is based on his own observations and analysis of source code. McBride Decl. Ex. 55 ¶¶ 46, 105. Moreover, Brocade's expert's conclusion is also supported by strong circumstantial evidence including: (1) a multitude of Foundry source code files on Mr. Szeto's laptop and thumb drive, which Mr.
In its opposition, Brocade for the first time introduces a new claim for copyright infringement based on the automation test code written by Zhenwu He. Opp'n 21. Brocade alleges that A10 paid a Brocade employee, Zhenwu He, to write testing code used in developing the AX product. Id. He was employed by Brocade to write similar testing code and his employment agreement prohibited outside employment. Id. Brocade thus alleges that it has a copyright in A10's software written by He as a "work made for hire." Id. Software is considered a literary work for purposes of copyright and is not among the nine categories of subject matter that may be designated a "work made for hire" by contract. 17 U.S.C. § 101. Therefore, Brocade has a copyright interest in the He software only if it was "prepared in the course of [He's] employment." See id. "A work is prepared within the scope of one's employment if it meets a three-prong test: (1) it is the kind of work the author is employed to perform; (2) the creation of the work occurred substantially within authorized work hours and space; and (3) the creation of the work was actuated, at least in part, by a purpose to serve the employer." Gilpin v. Siebert, 419 F.Supp.2d 1288, 1295 (D.Or.2006). Brocade cites no evidence that He's work for A10 was in any way actuated by a purpose to serve Brocade. Therefore, the allegation that He wrote A10 testing code while employed for a similar purpose with Brocade is legally insufficient to vest copyright to the A10 code with Brocade. Accordingly, A10's motion for summary judgment of non-infringement is GRANTED as to Brocade's claim based upon alleged infringement of the automation test code written by Zhenwu He.
Brocade discovered that He had written test code for A10 at some time prior to March 12, 2012. See ECF No. 489 at 10 (Special Master's Order). The Special Master for Discovery ordered production of the He testing source code on March 21, 2012, as responsive to RFP no. 3. Id. at 11 ("[Source Code] that any person ever wrote, generated, downloaded, modified, or used as a reference at any time as part of the development process for any AX Series device (whether or not the Source Code was actually included as part of a Release)"). However, the Special Master noted that A10 could not be considered in violation of Court Order in light of the parties' subsequent agreement regarding source code production. See id. at 11-12 (noting that Parties had agreed as to which source code extensions should be produced, and He's ".tcl" code was not encompassed by this agreement). The deadline to amend the pleadings has passed, and the Court has ordered Brocade to streamline its case in preparation for trial. Adding a new claim at this juncture would be improper. Thus, A10's motion is GRANTED as to any copyright infringement based on testing code for this alternative reason as well.
Brocade has indicated that it intends to proceed on its breach of contract claim against Chen. Chen asserts two arguments for why he should be granted summary
Chen first argues that there is no evidence that he solicited any employee to leave Foundry within one year of his departure in violation of his contract. Mr. Chen's contract states:
TAC ¶ 50.
There is ample evidence in the record from which a reasonable jury could infer that Mr. Chen solicited Foundry employees to work for A10 within one year after leaving Foundry in August 2004 and in violation of his contract. For example, an e-mail between Lee Chen and Reza Ektefaie, in April 29, 2005 states, "Lee: I was in [sic] impression from you that you want people to resign at least two weeks then join you." April 29, 2005 e-mail from Reza Ektefaie to Lee Chen, McBride Decl. Ex. 87. From this, a reasonable jury could conclude that Mr. Chen solicited Mr. Ektefaie to work at A10 in violation of his contract. Although it is not clear whether Mr. Chen initiated contact, it is clear Mr. Chen extended the offer. From the text of the e-mail, a jury could certainly infer that Mr. Chen solicited Mr. Ektefaie based on Mr. Ektefaie's statement that "I was in [sic] impression from you that you want people to resign at least two weeks then join you."
Chen also argues that Brocade's breach of contract claim is time barred. However, for the same reasons identified above with respect to the trade secret misappropriation claim, summary judgment is inappropriate because there is a disputed issue of fact regarding whether Brocade was on notice of the facts giving rise to the breach of contract claim, and whether they should have inquired further. Accordingly, A10's motion for summary judgment on Brocade's breach of contract claim is DENIED.
Brocade indicated that it intends to proceed on their intentional interference with contract claim against Chen and A10. This claim arises out of Mr. He's work on automation testing code. A10 argues that Brocade fails to cite evidence that Mr. Chen or A10 (1) knew the terms of Mr. He's contract with Foundry, or that (2) Chen or A10 intended to interfere with that agreement.
The elements which a plaintiff must prove to establish a claim for intentional interference with contractual relations are: "(1) a valid contract between plaintiff and a third party; (2) defendant's knowledge of this contract; (3) defendant's intentional acts designed to induce a breach or disruption of the contractual relationship; (4) actual breach or disruption of the contractual relationship; and (5) resulting damage." Pac. Gas & Electric Co. v. Bear Stearns & Co., 50 Cal.3d 1118, 1126, 270 Cal.Rptr. 1, 791 P.2d 587 (1990).
Brocade need only show that Defendants had "knowledge of the contract," not that they knew the precise terms of the
For the foregoing reasons, A10's motion for summary judgment is GRANTED IN PART and DENIED IN PART as follows:
