Opinion
Civ. Act. No. 04-1436-JJF-LPS, Civ. Act. No. 06-403-JJF-LPS, Civil Action No. 06-404-JJF-LPS.
December 4, 2009
MEMORANDUM ORDER
Pending before the Court are Objections To Report And Recommendation Regarding Motion To Dismiss For Lack Of Subject Matter Jurisdiction And For Jurisdictional Discovery (D.I. 203 in Civ. Act. No. 06-404) filed by Defendant Kyocera Wireless Corp. ("Kyocera"). Objections have also been filed by Hewlett-Packard Company (D.I. 296 in Civ. Act. No. 04-1436) and Audiovox Communications Corporation, BenQ Corporation, BenQ America Corporation, Siemens AG, Siemens Corporation, and UTStarcom Inc. (D.I. 215 in Civ. Act. No. 06-403). All Defendants rely upon and incorporate into their Objections the arguments made by Kyocera in its Objection. For the reasons discussed, the Court will overrule Defendants' Objections in all of the above-captioned cases and adopt the Report and Recommendation Regarding Motions To Dismiss For Lack Of Subject Matter Jurisdiction And For Jurisdictional Discovery (D.I. 183 in Civ. Act. No. 06-404; D.I. 183 in Civ. Act. No. 06-403; D.I. 276 in Civ. Act. No. 04-1436).
I. THE PARTIES' CONTENTIONS
Defendants contend that Magistrate Judge Stark erred in his interpretation of the inventors' employment agreements. Specifically, Defendants contend that St. Clair lacks standing to sue, because St. Clair did not own the Roberts Patents at the time it initiated these actions. According to Defendants, the Roberts Patents were automatically assigned to Mirage Systems, Inc. pursuant to the inventors' employment agreements and then subsequently transferred to Kodak by Mirage. Defendants contend that Magistrate Judge Stark (1) incorrectly concluded that the present assignment language in Paragraph 4 does not apply to employee made inventions; (2) incorrectly concluded that Kyocera's construction of Paragraph 4 makes the other paragraphs of the contract superfluous; (3) inappropriately gave the same words different meaning in different paragraphs of the employment agreement; (4) interpreted the employment agreement in a way that creates unreasonable results and (5) failed to apply Federal Circuit precedent regarding language of present assignment. At the very least, Defendants contend that the employment agreements are ambiguous, and therefore, jurisdictional discovery is required.
In response, Plaintiff contends that Magistrate Judge Stark correctly concluded that only Paragraphs 5 and 6 of the employment agreements apply to the assignment of employee "Inventions" and that these provisions lack the requisite language of present assignment. As to Paragraphs 3 and 4, Plaintiff contends that these paragraphs apply only to "Proprietary Information." Plaintiff further contends that Magistrate Judge Stark's interpretation of the employment agreements is the only interpretation that does not render Paragraphs 5 and 6 superfluous and does not result in the unenforceability of paragraphs 3 and 4 under California Law, which requires an employee to be noticed regarding any assignment of employee inventive rights.
II. STANDARD OF REVIEW
III. DISCUSSION
de novo 28 U.S.C. § 63672Id. Id. de novo2870
In sum, the Court concludes that the Magistrate Judge did not err in his interpretation of the inventors' employment agreements, and the Court fully adopts the rationale set forth by Magistrate Judge Stark in his Report and Recommendation recommending the denial of the pending Motions To Dismiss.
NOW THEREFORE, IT IS HEREBY ORDERED that:
1. The Objections To Report And Recommendation Regarding Motion To Dismiss For Lack Of Subject Matter Jurisdiction And For Jurisdictional Discovery (D.I. 203 in Civ. Act. No. 06-404) filed by Defendant Kyocera Wireless Corp. ("Kyocera") are OVERRULED .
2. Defendant Hewlett-Packard Company's Objections To Report And Recommendation Regarding Motion To Dismiss For Lack Of Subject Matter Jurisdiction (D.I. 296 in Civ. Act. No. 04-1436) are OVERRULED .
3. The Objections To Report And Recommendation Regarding Motion To Dismiss For Lack Of Subject Matter Jurisdiction And For Jurisdictional Discovery filed by Audiovox Communications Corporation, BenQ Corporation, BenQ America Corporation, Siemens AG, Siemens Corporation, and UTStarcom Inc. (D.I. 204 in Civ. Act. No. 06-403) are OVERRULED .
4. The Report And Recommendation Regarding Motions To Dismiss For Lack Of Subject Matter Jurisdiction And For Jurisdictional Discovery (D.I. 276 in 04-1436; D.I. 183 in 06-403 and D.I. 183 in 06-404) is ADOPTED .