Eastman v. Apple Inc., No. 3:2018cv05929 - Document 27 (N.D. Cal. 2018)
Court Description: ORDER GRANTING IN PART MOTION TO DISMISS AND REMANDING STATE-LAW CLAIMS by Judge Jon S. Tigar granting in part 11 Motion to Dismiss; granting 19 Administrative Motion to File Under Seal; terminating as moot 25 Motion to Compel. Amended Pleadings due by 12/14/2018. (wsn, COURT STAFF) (Filed on 11/14/2018)
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Eastman v. Apple Inc. Doc. 27 1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 DARREN EASTMAN, 7 Plaintiff, 8 ORDER GRANTING IN PART MOTION TO DISMISS AND REMANDING STATE-LAW CLAIMS v. 9 APPLE INC., 10 Defendant. 11 United States District Court Northern District of California Case No. 18-cv-05929-JST Re: ECF Nos. 11, 19 12 Before the Court is the motion to dismiss filed by Defendant Apple, Inc. ECF No. 11. 13 14 Apple has also filed a motion to file under seal an exhibit docketed by Plaintiff Darren Eastman. 15 ECF No. 19. The Court will grant the motion to seal. The Court will grant in part the motion to 16 dismiss and remand the remaining state-law claims. The Court will also terminate Eastman’s 17 recently-filed motion to compel, ECF No. 25, as moot. 18 I. BACKGROUND As alleged in his First Amended Complaint, Darren Eastman began working for Apple in 19 20 2006. ECF No. 1-2 at 14 (“FAC”). According to Eastman, he disclosed “a process for selling 21 mobile tickets using an Apple operating system” to Apple in 2006, through Eastman’s Intellectual 22 Property Agreement (“IPA”) with the company. Id. at 13. Eastman contends that Apple later filed 23 a successful patent application “that closely resembles” Eastman’s process and for which Apple 24 did not name Eastman as a joint inventor. Id. Eastman does not dispute that this application 25 issued as U.S. Patent Number 9,125,014 (the “’014 patent”). ECF No. 12 ¶ 7; ECF No. 17 at 12- 26 13. 27 28 Prior to 2009, Eastman also came up with an idea for “a novel method and apparatus for locating a lost smartphone or computing device,” which he conveyed to his superiors at Apple. Id. Dockets.Justia.com 1 at 12. In June 2010, Apple released the “Find my iPhone” feature for its products, which Eastman 2 claims was derived from his invention. Id. at 12-13. Shortly after the release, Eastman contacted 3 Apple’s patent counsel to inquire whether Apple would seek patent protection. Id. Apple 4 subsequently filed four successful utility patent applications based on the technology, but Eastman 5 was not joined as an inventor on the applications. Id. at 13. Eastman does not dispute that these 6 applications issued as U.S. Patent Numbers 9,104,896 (the “’896 patent”); 8,881,310 (the “’310 7 patent”); 9,706,032 (the “’032 patent”); and 9,763,098 (the “’098 patent”) (collectively, the 8 “phone-finding patents”). ECF No. 12 ¶¶ 3-6; ECF No. 17 at 12-13. United States District Court Northern District of California 9 In 2009, Eastman had a conversation with then-Apple CEO Steve Jobs, in which Eastman 10 claims Jobs “made [Eastman] promise that he’d always work for Apple and indicated that a job 11 would always be available for him.” Id. at 15. 12 Apple fired Eastman on September 23, 2014. Id. at 19. Eastman contends that this 13 termination was substantially based on his seven disabilities, id., as well as an unrelated small- 14 claims dispute involving Eastman’s personal Apple product, id. at 25. In addition, Eastman’s 15 termination occurred fifteen days before some of his restricted stock units (“RSUs”) were due to 16 vest, depriving him of those options. Id. at 34-35. Roughly a month later, Apple mailed 17 Eastman’s personal belongings to his home during a period when, according to Eastman, Apple 18 knew Eastman was away on an extended vacation. Id. at 40-41. Due to Eastman’s absence, he 19 never received his belongings. Id. 20 Over two years later, on November 2, 2016, Eastman’s counsel submitted a demand letter 21 to Apple’s legal department. Id. at 10. Communications with Apple quickly broke down; 22 Eastman and his counsel also separately suffered severe medical events that further hindered 23 communication. Id. 24 On August 13, 2018, Eastman filed this lawsuit pro se against Apple in state court. ECF 25 No. 1 ¶ 1. Eastman then filed his FAC on August 22, 2018, which he served on Apple on August 26 29, 2018. Id. ¶¶ 2, 6. The FAC contains numerous claims, delineated as (1) utility patent non- 27 28 2 1 joinder for the ’014 patent and the phone-finding patents; (2) wrongful termination;1 (3) 2 conversion of RSUs; (4) breach of the covenant of good faith and fair dealing; (5) conversion of 3 personal property; and (6) intentional infliction of emotional distress. FAC at 4. Eastman also 4 appears to allege claims for breach of contract, id. at 27-28, and intentional interference with 5 contractual relations, id. at 31-33. 6 On September 27, 2018, Apple timely removed the case to federal court. See ECF No. 1. 7 Apple then filed this motion to dismiss, arguing that most of Eastman’s claims were time-barred 8 and that he had failed to state a claim as to his remaining causes of action. ECF No. 11. 9 II. In connection with this motion, Apple has filed an administrative motion to seal an exhibit 10 United States District Court Northern District of California MOTION TO SEAL 11 to Eastman’s opposition. See ECF No. 19. Apple contends that the exhibit contains privileged 12 communications between its in-house legal counsel and Eastman during Eastman’s tenure as an 13 employee. ECF No. 19 at 2. Apple has filed a declaration in support of sealing. ECF No. 19-1. 14 A party seeking to seal a document filed with the court must (1) comply with Civil Local 15 Rule 79-5; and (2) rebut the “a strong presumption in favor of access” that applies to all 16 documents other than grand jury transcripts or pre-indictment warrant materials. Kamakana v. 17 City & County. of Honolulu, 447 F.3d 1172, 1178 (9th Cir. 2006) (citation and internal quotations 18 omitted). With respect to the first prong, Local Rule 79-5 requires, as a threshold, a request that 19 20 (1) “establishes that the document, or portions thereof, are privileged, protectable as a trade secret 21 or otherwise entitled to protection under the law”; and (2) is “narrowly tailored to seek sealing 22 only of sealable material.” Civil L.R. 79-5(b). An administrative motion to seal must also fulfill 23 24 25 26 27 28 Eastman’s complaint appears to raise multiple theories of wrongful termination, all under state law. First, Eastman alleges that his discharge was in retaliation for successfully pursuing a smallclaims court action against Apple for a defect in his personal iPad, in violation of California Labor Code sections 98.6 and 1102.5. FAC at 25. Second, Eastman contends that his discharge violated the Fair Employment and Housing Act because it was substantially motivated by his request for reasonable accommodations for his protected disabilities, contrary to California Government Code section 12940(h). FAC at 28-29. Finally, Eastman invokes the common-law protection against wrongful termination in violation of public policy, seemingly on the same grounds as his statutory claims. Id. at 26-27. 1 3 United States District Court Northern District of California 1 the requirements of Civil Local Rule 79-5(d). “Reference to a stipulation or protective order that 2 allows a party to designate certain documents as confidential is not sufficient to establish that a 3 document, or portions thereof, are sealable.” Civil L.R. 79-5(d)(1)(A). 4 With respect to the second prong, the showing required to overcome the strong 5 presumption of access depends on the type of motion to which the document is attached. “[A] 6 ‘compelling reasons’ standard applies to most judicial records. This standard derives from the 7 common law right ‘to inspect and copy public records and documents, including judicial records 8 and documents.’” Pintos v. Pac. Creditors Ass’n, 605 F.3d 665, 678 (9th Cir. 2010) (quoting 9 Nixon v. Warner Commc’ns, Inc., 435 U.S. 589, 597 n.7 (1978)). To overcome this strong 10 presumption, the party seeking to seal a judicial record must “articulate compelling reasons 11 supported by specific factual findings that outweigh the general history of access and the public 12 policies favoring disclosure.” Kamakana, 447 F.3d at 1178-79 (internal citations omitted). On the other hand, records attached to motions that are only “tangentially related to the 13 14 merits of a case” are not subject to the strong presumption of access. Ctr. for Auto Safety v. 15 Chrysler Grp., LLC, 809 F.3d 1092, 1101 (9th Cir. 2016). Instead, a party need only make a 16 showing under the good cause standard of Rule 26(c) to justify the sealing of the materials. Id. at 17 1097. A court may, for good cause, keep documents confidential “to protect a party or person 18 from annoyance, embarrassment, oppression, or undue burden or expense.” Fed. R. Civ. P. 26(c). 19 A district court must “articulate [the] . . . reasoning or findings underlying its decision to 20 seal.” Apple Inc. v. Psystar Corp., 658 F.3d 1150, 1162 (9th Cir. 2011), cert. denied, 132 S. Ct. 21 2374 (2012). Here, the “compelling reasons” standard applies to Apple’s motion to dismiss. See 22 23 Ponomarenko v. Shapiro, No. 16-CV-02763-BLF, 2017 WL 3605226, at *2 (N.D. Cal. Aug. 21, 24 2017). Because the redacted material contains attorney-client privileged communications, the 25 Court finds that compelling reasons exist to seal the exhibit.2 See Fed. Trade Comm’n v. 26 27 28 2 Although Eastman and Apple are now adverse, the documents in question consist of communications between him and Apple’s in-house patent counsel during the time Eastman was an Apple employee. Thus, those communications continue to be privileged. 4 1 Qualcomm Inc., No. 17-CV-00220-LHK, 2018 WL 2317835, at *6 (N.D. Cal. May 22, 2018) 2 (“Courts have accepted attorney-client privilege as a sufficient justification for sealing, even under 3 the higher ‘compelling reason’ standard.”). The Court therefore grants Apple’s motion to file under seal. 4 5 III. Eastman’s patent claims seek correction of ownership under 35 U.S.C. § 256(a). 6 United States District Court Northern District of California JURISDICTION 7 Accordingly, the Court has jurisdiction over Eastman’s patent claims pursuant to 28 U.S.C. 8 §§ 1338(a) and 1441(a). 9 The Court lacks jurisdiction, however, over Eastman’s state-law claims. “The burden of 10 establishing federal subject matter jurisdiction falls on the party invoking removal.” Marin Gen. 11 Hosp. v. Modesto & Empire Traction Co., 581 F.3d 941, 944 (9th Cir. 2009). Apple’s notice of 12 removal sets forth the Court’s exclusive jurisdiction over Eastman’s patent claims, pursuant to 28 13 U.S.C. § 1338(a), as the sole basis for removal. ECF No. 1 ¶¶ 1-5. But Eastman’s state-law 14 claims are based on his termination and other associated events, which Eastman contends occurred 15 for reasons wholly unrelated to the patent applications, namely his pursuit of a small-claims court 16 action involving his personal iPad and Eastman’s disabilities. On their face, these claims do not 17 fall within the scope of 28 U.S.C. § 1338(a), which applies to “any civil action arising under any 18 Act of Congress relating to patents, plant variety protection, copyrights and trademarks.”3 19 Nor are these claims “so related to” Eastman’s patent claims “that they form part of the 20 same case or controversy.” 28 U.S.C. § 1367(a). “A state law claim is part of the same case or 21 controversy when it shares a ‘common nucleus of operative fact’ with the federal claims and the 22 state and federal claims would normally be tried together.” Bahrampour v. Lampert, 356 F.3d 23 969, 978 (9th Cir. 2004) (quoting Trs. of Constr. Indus. & Laborers Health & Welfare Tr. v. 24 Desert Valley Landscape & Maint., Inc., 333 F.3d 923, 925 (9th Cir. 2003)). In making this 25 determination, courts have looked to the degree of overlap between the legal and factual issues 26 necessary to resolve the different claims. See AngioScore, Inc. v. TriReme Med., Inc., 87 F. Supp. 27 28 3 Apple does not allege that diversity jurisdiction exists under 28 U.S.C. § 1332. 5 1 3d 986, 999 (N.D. Cal. 2015); Slack v. Int’l Union of Operating Eng’rs, No. C-13-5001 EMC, 2 2014 WL 4090383, at *9 (N.D. Cal. Aug. 19, 2014). Even where “patent claims and . . . state law 3 claims all bear some connection to [the] allegedly improper use of [an entity’s] intellectual 4 property,” they do not form part of the same case or controversy where the state law claims “relate 5 to various products, features, and intellectual property not at issue in the patent case and require 6 unrelated damage and liability theories.” Ariba, Inc. v. Coupa Software Inc., No. 12-CV-01484- 7 WHO, 2014 WL 1466860, at *3 (N.D. Cal. Apr. 15, 2014). Here, whether Eastman was wrongfully terminated because of his disabilities or as United States District Court Northern District of California 8 9 retaliation for an unrelated small-claims case raises factual issues that are distinct from the facts 10 underlying Eastman’s alleged inventorship role – the basis for his patent claims. It is not enough 11 to “generally allege wrongdoing by the same or similar defendants.” Slack, 2014 WL 4090383, at 12 *10. Moreover, Eastman’s complaint alleges that his interactions relevant to the patents were with 13 different people at Apple than those who were responsible for his termination. FAC at 12-13, 19- 14 22. 15 Most of Eastman’s remaining state-law claims flow from this termination, including his 16 claims for breach of contract, breach of the covenant of good faith and fair dealing, intentional 17 interference with existing contractual or prospective economic relations, and conversion of RSUs. 18 See id. at 27-28, 31-35, 37, 41-45. Eastman’s claim for conversion based on Apple’s failure to 19 return his personal belongings is likewise unrelated to the facts underlying Eastman’s patent 20 claims. See id. at 40. Though Eastman’s intentional infliction of emotional distress claim cites 21 reputational injury from not being listed as an inventor, it appears to be primarily based on his loss 22 of employment as well. See id. at 41. 23 For similar reasons, Eastman’s state-law claims will turn on entirely independent legal 24 issues. As discussed below, the crux of Eastman’s patent claims is whether the ideas he suggested 25 to Apple “contribute[d] to the conception of the invention” in the patents. Ethicon, Inc. v. U.S. 26 Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998). On the other hand, Apple’s motion to 27 dismiss and Eastman’s opposition make clear that Eastman’s state-law claims will turn, in the first 28 instance, on whether the statute of limitations bars those claims and if so, whether Eastman 6 1 qualifies for equitable tolling. Even if Eastman clears that hurdle, resolving the merits of his state- 2 law claims will not aid in resolving the merits of his patent claims, or vice versa. Cf. AngioScore, 3 87 F. Supp. 3d at 999 (explaining that resolving an issue would be “relevant in terms of 4 calculating both patent and state law damages”). Accordingly, the Court concludes that it lacks original or supplemental jurisdiction over 5 6 Eastman’s state-law claims. The Court must, therefore, sever and remand those claims to state 7 court. See 28 U.S.C. § 1441(c)(2).4 The Court now turns to Eastman’s patent claims. 8 United States District Court Northern District of California 9 IV. LEGAL STANDARD 10 A. Federal Rule of Civil Procedure 12(b)(6) 11 Federal Rule of Civil Procedure 8(a)(2) requires that a complaint contain “a short and plain 12 statement of the claim showing that the pleader is entitled to relief.” While a complaint need not 13 contain detailed factual allegations, facts pleaded by a plaintiff must be “enough to raise a right to 14 relief above the speculative level.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007). To 15 survive a Rule 12(b)(6) motion to dismiss, a complaint must contain sufficient factual matter that, 16 when accepted as true, states a claim that is plausible on its face. Ashcroft v. Iqbal, 556 U.S. 662, 17 678 (2009). “A claim has facial plausibility when the plaintiff pleads factual content that allows 18 the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” 19 Id. While this standard is not a probability requirement, “[w]here a complaint pleads facts that are 20 merely consistent with a defendant’s liability, it stops short of the line between possibility and 21 plausibility of entitlement to relief.” Id. (internal quotation marks and citation omitted). In 22 determining whether a plaintiff has met this plausibility standard, the Court must “accept all 23 factual allegations in the complaint as true and construe the pleadings in the light most favorable” 24 to the plaintiff. Knievel v. ESPN, 393 F.3d 1068, 1072 (9th Cir. 2005). Moreover, “[a] document filed pro se is to be liberally construed and a pro se complaint, 25 26 however inartfully pleaded, must be held to less stringent standards than formal pleadings drafted 27 28 4 Because Eastman’s recent motion to compel responses to interrogatories, ECF No. 25, addresses his state law employment claims, the Court also terminates that motion as moot. 7 1 by lawyers.” Erickson v. Pardus, 551 U.S. 89, 94 (2007) (internal quotation marks and citations 2 omitted). 3 B. 4 As a general matter, patents must list all of the true inventors. Trovan, Ltd. v. Sokymat SA, 5 Irori, 299 F.3d 1292, 1301 (Fed. Cir. 2002). “Conception is the touchstone of invention, and it 6 requires a definite and permanent idea of an operative invention, including every feature of the 7 subject matter sought to be patented.” In re VerHoef, 888 F.3d 1362, 1366 (Fed. Cir. 2018) 8 (internal quotation marks and citation omitted). A definite and permanent idea, in turn, exists 9 “when the inventor has a specific, settled idea, a particular solution to the problem at hand, not 10 United States District Court Northern District of California Patent Inventorship just a general goal or research plan.” Id. (citation omitted). 11 In order for an invention to have co-inventors, they “need not ‘physically work together or 12 at the same time,’ ‘make the same type or amount of contribution,’ or ‘make a contribution to the 13 subject matter of every claim of the patent.’” Vapor Point LLC v. Moorhead, 832 F.3d 1343, 1349 14 (Fed. Cir. 2016) (quoting 35 U.S.C. § 116). Rather, a joint inventor must: 15 (1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art. 16 17 18 In re VerHoef, 888 F.3d at 1366 (quoting Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed Cir. 19 1998)). 20 21 The issuance of a patent “creates a presumption that the named inventors are the true and only inventors.” Ethicon, 135 F.3d at 1460. But “[a] person who alleges that he is a co-inventor 22 of the invention claimed in an issued patent who was not listed as an inventor on the patent may 23 bring a cause of action to correct inventorship in a district court under 35 U.S.C. § 256.” Vapor 24 Point LLC, 832 F.3d at 1348 (quoting Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1357 n.1 25 (Fed. Cir. 2004)).5 To overcome the presumption of correctness, “the alleged co-inventor or co- 26 27 28 5 35 U.S.C. § 256(a) provides in full: Whenever through error a person is named in an issued patent as the 8 United States District Court Northern District of California 1 inventors must prove their contribution to the conception of the claims by clear and convincing 2 evidence.” Ethicon, 135 F.3d at 1461. 3 V. DISCUSSION 4 A. Scope of Documents Considered 5 As an initial matter, the Court addresses consideration of two sets of documents. 6 First, Apple submitted copies of the ’014 patent and the phone-finding patents with its 7 motion to dismiss, ECF Nos. 12-2, 12-3, 12-4, 12-5, 12-6, accompanied by a declaration that these 8 patents issued from the applications cited in the FAC, ECF No. 12 ¶¶ 3-7; FAC at 24-25. The 9 Court notes that the patent application numbers provided by Eastman are listed under prior 10 publication data on each of the respective patents. See ECF No. 12-2 at 2; ECF No. 12-3 at 2; 11 ECF No. 12-4 at 2; ECF No. 12-5 at 2; ECF No. 12-6 at 2. Eastman’s opposition does not dispute 12 the authenticity of the patents or that they correspond to his claims. Because these documents 13 “form the basis of the complaint,” the Court finds that they are incorporated by reference into the 14 FAC. Khoja v. Orexigen Therapeutics, Inc., 899 F.3d 988, 1002 (9th Cir. 2018); see also Guzik 15 Tech. Enterprises, Inc. v. W. Digital Corp., No. 11-CV-03786-PSG, 2011 WL 6013006, at *1 16 (N.D. Cal. Dec. 2, 2011) (finding patent incorporated by reference). Second, with his opposition, Eastman submitted an additional memorandum of points and 17 18 authorities containing new factual allegations and attaching numerous exhibits. See ECF No. 19 19-3. 20 As for the exhibits, the Court “may consider documents alleged in a complaint and 21 essential to [Eastman’s] claim,” but it will not consider documents “that were not attached to or 22 referenced in the complaint.” Bey v. City of Oakland, No. 14-CV-01626-JSC, 2015 WL 8752762, 23 at *1 n.1 (N.D. Cal. Dec. 15, 2015).6 24 To the extent that Eastman’s memorandum contains additional factual allegations, 25 26 27 28 inventor, or through error an inventor is not named in an issued patent, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error. 6 The Court notes that Defendants had an opportunity to respond to these exhibits and raised no objection on reply. See ECF No. 21 at 6-7. 9 1 “[a]lthough the statements in plaintiff’s opposition cannot amend the complaint, the Court may 2 consider these statements in determining whether to grant plaintiff leave to amend.” Rodriguez v. 3 Kwok, No. C 13-04976 SI, 2014 WL 889570, at *6 (N.D. Cal. Mar. 3, 2014) (applying rule to pro 4 se plaintiff); see also Broam v. Bogan, 320 F.3d 1023, 1026 n.2 (9th Cir. 2003) (“In determining 5 the propriety of a Rule 12(b)(6) dismissal, a court may not look beyond the complaint to a 6 plaintiff’s moving papers, such as a memorandum in opposition to a defendant’s motion to 7 dismiss. Facts raised for the first time in plaintiff’s opposition papers should be considered by the 8 court in determining whether to grant leave to amend or to dismiss the complaint with or without 9 prejudice.” (internal quotation marks and citation omitted)); Delacruz v. State Bar of Cal., No. 16- United States District Court Northern District of California 10 CV-06858-BLF, 2017 WL 3129207, at *3 (N.D. Cal. July 24, 2017) (same). 11 B. Analysis 12 Apple contends that Eastman’s patent claims must be dismissed because Eastman fails to 13 identify “any specific patent claim nor alleges how his purported contributions to the Patents align 14 with particular claims.” ECF No. 11 at 17. Moreover, Apple argues, the limited information 15 Eastman has provided indicates that his alleged contributions mirror prior art described in the 16 patents, and he thus fail to plead a contribution as a matter of law. Id. at 17-18. 17 18 19 The Court agrees. As pleaded, Eastman’s allegations, even if true do not state a plausible claim for joint ownership. As to the phone-finding patents, the FAC contends that Eastman “invented a novel method 20 and apparatus for locating a lost smartphone or computing device.” FAC at 12. This is simply a 21 legal conclusion, devoid of any facts as to what Eastman invented, from which the Court could 22 plausibly infer that Eastman’s contribution was “significant,” measure it “against the dimension of 23 the full invention,” or discern that it did “more than merely explain to the real inventors well- 24 known concepts and/or the current state of the art.” In re VerHoef, 888 F.3d at 1366. 25 Moreover, the Court is “not required to accept as true conclusory allegations which are 26 contradicted by documents referred to in the complaint.” Steckman v. Hart Brewing, Inc., 143 27 F.3d 1293, 1295-96 (9th Cir. 1998). The documents that Eastman submitted, which purportedly 28 convey his contribution to Apple, reveal that Eastman conceptualized a method through which 10 United States District Court Northern District of California 1 Apple “could leverage the GPS in . . . and /or IP triangulation data for . . . to provide a location (or 2 estimate) . . . which would be launched in Safari by selecting “Locate iPhone” in iTunes.”7 ECF 3 No. 19-3 at 15. In other words, Eastman’s concept was to generate a phone location that the 4 phone’s owner could access remotely. This concept, however, was well-known in the prior art. 5 See ECF No. 12-2 at 17 (“Current systems attempt to address these problems by providing the 6 location of the device to an owner of a lost device, however, these types of systems do not help a 7 person that finds the lost device return it to its owner.”); ECF No. 12-3 at 24 (same); ECF No. 12- 8 4 at 18 (same); cf. ECF No. 12-5 at 28 (describing a device that “enables an honest finder to 9 contact the particular contact even if the device is secured, in case the owner of the device loses 10 the device”). The Court cannot reasonably infer that an alleged contribution that simply mirrors 11 prior art and is seemingly unrelated to the novel aspect of the invention provides a basis for a 12 nonjoinder claim. See In re VerHoef, 888 F.3d at 1366 (explaining that the putative co-inventor’s 13 contribution must do “more than merely explain to the real inventors well-known concepts and/or 14 the current state of the art”); Coda Dev. s.r.o. v. Goodyear Tire & Rubber Co., No. 5:15-CV-1572, 15 2016 WL 5463058, at *5 (N.D. Ohio Sept. 29, 2016), opinion corrected on other grounds on 16 denial of reconsideration, No. 5:15-CV-1572, 2017 WL 4271874 (N.D. Ohio Sept. 26, 2017) 17 (granting motion to dismiss § 256 claim where the patent in question “actually identifies the[] very 18 concepts [alleged as plaintiff’s contribution] as ‘prior art’). The Court reaches a similar conclusion with respect to the ’014 patent claim. Eastman 19 20 alleges that he “declared a process for selling mobile tickets using an Apple operating system” that 21 “closely resembles” claims in the ‘014 patent, but does not specify any of the alleged similarities. 22 FAC at 13. Eastman’s conclusory allegation that his idea was similar to that disclosed in the ‘014 23 patent does not provide sufficient detail for the Court to determine the nature of Eastman’s alleged 24 contribution, or the degree to which it overlaps with prior art. Cf. Informatics Applications Grp., 25 Inc. v. Shkolnikov, 836 F. Supp. 2d 400, 414 (E.D. Va. 2011) (finding that complaint that 26 27 28 Incorporation by reference is appropriate because Eastman’s complaint directly references this record, see FAC at 12; ECF No. 19-3 at 5, and it forms the basis for his inventorship claim, see Khoja, 899 F.3d at 1002. 11 7 1 “identifies the claims, and thus the subject matter, of the . . . Patent which [plaintiff] allegedly 2 helped to conceive and develop” survived motion to dismiss). Accordingly, the Court holds that Eastman has failed to state a claim for relief under 35 3 4 U.S.C. § 256. The Court is mindful, however, that the liberal policy favoring leave to amend 5 applies with particular force to a pro se plaintiff. Lucas v. Dep’t of Corr., 66 F.3d 245, 248 (9th 6 Cir. 1995) (per curiam) (“Unless it is absolutely clear that no amendment can cure the defect, 7 however, a pro se litigant is entitled to notice of the complaint’s deficiencies and an opportunity to 8 amend prior to dismissal of the action.”). Because the Court cannot say with certainty that 9 Eastman will not be able to identify – consistent with his current allegations – a sufficient 10 contribution to the relevant patents, the Court will grant leave to amend. CONCLUSION United States District Court Northern District of California 11 In sum, the Court severs and remands Eastman’s state-law claims to state court. The Court 12 13 dismisses without prejudice Eastman’s patent claims. 14 Eastman may file an amended complaint regarding his patent claims, not later than thirty 15 days from the date of this order. Failure to do so, or failure to otherwise comply with this order, 16 will result in dismissal with prejudice pursuant to Rule 41(b) of the Federal Rules of Civil 17 Procedure, which means that Eastman will not be allowed to pursue this action any further. Eastman may wish to consult the resources for pro se litigants on the Court’s website, 18 19 https://cand.uscourts.gov/pro-se. These materials include the manual, “Representing Yourself in 20 Federal Court: A Handbook for Pro Se Litigants,” which can be downloaded at 21 https://cand.uscourts.gov/prosehandbook or obtained free of charge from the Clerk’s office. Eastman may also wish to seek assistance from the free Legal Help Center operated by the 22 23 Bar Association of San Francisco. The Legal Help Center has two locations: 450 Golden Gate 24 /// 25 /// 26 /// 27 /// 28 /// 12 1 Avenue, 15th Floor, Room 2796, San Francisco, California, and 1301 Clay Street, 4th Floor, 2 Room 470S, Oakland, California. Assistance is provided at both offices by appointment only. 3 4 5 6 IT IS SO ORDERED. Dated: November 14, 2018 ______________________________________ JON S. TIGAR United States District Judge 7 8 9 10 United States District Court Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 13
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