Anywherecommerce, Inc. v. Ingenico, Inc.
| Decision Date | 29 March 2023 |
| Docket Number | Civil Action 1:19-cv-11457-IT |
| Parties | ANYWHERECOMMERCE, INC., and BBPOS LIMITED, Plaintiffs, v. INGENICO INC., INGENICO CORP., and INGENICO GROUP SA, Defendants. |
| Court | U.S. District Court — District of Massachusetts |
In 2010, BBPOS Limited (“BBPOS”) and ROAM Data, Inc. (“ROAM”) entered into an Engineering Development and Licensing Agreement (the “Agreement”). At the time, Ingenico Group SA, Ingenico Inc., and Ingenico Corp. (collectively, “Ingenico”) had an ownership interest in ROAM. By the end of 2017, Ingenico and ROAM had merged, and in 2018, Ingenico sought indemnification from BBPOS pursuant to the Agreement.
In AnywhereCommerce, Inc. (“AnywhereCommerce”) and BBPOS's First Amended Complaint [Doc. No. 67] BBPOS alleges that Ingenico improperly acquired BBPOS's trade secrets and used those trade secrets to unfairly compete in the market, and AnywhereCommerce alleges that Ingenico used BBPOS's trade secrets to interfere in AnywhereCommerce's business relationship with a third party. In the Second Amended Counterclaims [Doc No.78], Ingenico Inc. asserts that BBPOS has failed to indemnify Ingenico Inc. and intentionally interfered with Ingenico Inc.'s business relationship with a different third party, that AnywhereCommerce interfered with Ingenico Inc.'s contractual relationship with BBPOS (and in so doing improperly acquired BBPOS's trade secrets that BBPOS had exclusively licensed to Ingenico Inc. under the Agreement), and that both AnywhereCommerce and BBPOS worked together to engage in unfair methods of competition and deceptive trade practices. Both sides assert claims for tortious interference, breach of contract, and theft of trade secrets.
Ingenico's Motion for Summary Judgment [Doc. No. 191] seeks summary judgment on all counts of BBPOS and AnywhereCommerce's First Amended Complaint [Doc No. 67], and BBPOS and AnywhereCommerce's Motion for Summary Judgment [Doc. No. 189] seeks summary judgment on all remaining counts of Ingenico Inc.'s Second Amended Counterclaims [Doc. No. 78].[1] For the following reasons, both motions are granted in part and denied in part.
Under Rule 56 of the Federal Rules of Civil Procedure, summary judgment is appropriate when “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.” Fed.R.Civ.P. 56(a). A fact is material when, under the governing substantive law, it could affect the outcome of the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Baker v. St. Paul Travelers, Inc., 670 F.3d 119, 125 (1st Cir. 2012). A dispute is genuine if a reasonable jury could return a verdict for the non-moving party. Anderson, 477 U.S. at 248.
The moving party bears the initial burden of establishing the absence of a genuine dispute of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). This burden can be satisfied in two ways: (1) by submitting affirmative evidence that negates an essential element of the non- moving party's claim or (2) by demonstrating that the non-moving party failed to establish an essential element of its claim. Id. at 322-23.
Once the moving party establishes the absence of a genuine dispute of material fact, the burden shifts to the non-moving party to set forth facts demonstrating that a genuine dispute of material fact remains. Anderson, 477 U.S. at 255-56. The non-moving party cannot oppose a properly supported summary judgment motion by “rest[ing] on mere allegations or denials of [the] pleadings.” Id. at 256. Rather, the non-moving party must “go beyond the pleadings and by [his or] her own affidavits, or by the depositions, answers to interrogatories, and admissions on file, designate specific facts showing that there is a genuine issue for trial.” Celotex, 477 U.S. at 324 (internal quotations omitted). The non-moving party must demonstrate through “submissions of evidentiary quality, that a trial worthy issue persists.” Iverson v. City of Boston, 452 F.3d 94, 98 (1st Cir. 2006). Disputes over facts “that are irrelevant or unnecessary” will not preclude summary judgment. Anderson, 477 U.S. at 248.
When reviewing a motion for summary judgment, the court must take all properly supported evidence in the light most favorable to the non-movant and draw all reasonable inferences in the non-movant's favor. Griggs-Ryan v. Smith, 904 F.2d 112, 115 (1st Cir. 1990). “Credibility determinations, the weighing of evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge . . . ruling on a motion for summary judgment.” Anderson, 477 U.S. at 255.
The fact that the parties have filed cross motions does not alter these general standards; rather the court reviews each party's motion independently, viewing the facts and drawing inferences as required by the applicable standard, and determines, for each side, the appropriate ruling. See Wightman v. Springfield Terminal Ry. Co., 100 F.3d 228, 230 (1st Cir. 1996) ( that cross-motions for summary judgment do not “alter the basic Rule 56 standard” but rather require the court “to determine whether either of the parties deserves judgment as a matter of law on facts that are not disputed”).
BBPOS is a foreign corporation founded in 2008 by Ben Lo. First Am. Compl. ¶ 6 [Doc. No. 67]; Lo Dep. Tr. 11:20-12:5 [Doc. No. 188-1]. BBPOS designs and manufactures mobile point of sales (“mPOS”) devices that allow mobile phones to be used as sales service terminals for payment. First Am. Compl. ¶ 16 [Doc. No. 67]; Defs' Stmt. of Facts ¶ 10 [Doc. No. 193]; Lo Dep. Tr. 18:3-13 [Doc. No. 188-1]. BBPOS also sells hardware including point of sales (“POS”) terminals that do not require smartphones, printers, scanners, or accessories. Lo Dep. Tr. 19:16-20:22 [Doc. No. 188-1].
AnywhereCommerce is a foreign corporation involved in credit card processing. First Am. Compl. ¶ 5, 15; Defs' Stmt. of Facts ¶¶ 1, 9 [Doc. No. 193]. AnywhereCommerce has been a distributor for BBPOS since approximately 2010. Kron Dep. Tr. 18:22-24 [Doc. No. 188-6]; Pls' Ex. CC, Vanderhart Rep. 11 [Doc. No. 188-29]. Prior to its incorporation, AnywhereCommerce's parent company, 4361423 Canada Inc. (“436 Canada”), operated under the trade names AnywhereCommerce and HomeATM. Kron Dep. Tr. 19:2-20:18 [Doc. No. 188-6]. 436 Canada holds certain patents that it has licensed to BBPOS. Id. at 21:1-25; Pls' Resp. to Defs' Stmt. of Facts ¶ 3(b) [Doc. No. 198]; Pls' Ex. S [Doc. No. 188-19].
Ingenico Inc. (a corporation organized and existing under the laws of Georgia) and Ingenico Corp. (a Delaware corporation registered to do business in Georgia) are subsidiaries of a foreign corporation, Ingenico Group SA. Answer ¶¶ 1, 7, 8 [Doc. No. 68]; Sec. Am. Counterclaims ¶ 3 [Doc. No. 78]. Ingenico is a payment solution company and a manufacturer of electronic POS payment terminals. Defs' Resp. to Pls' Stmt. of Facts ¶¶ 31, 32 [Doc. No. 200]; Lo 30(b)(6) Dep. Tr. 45:25-46:11 [Doc. No. 188-10].
ROAM was founded in Massachusetts in approximately 2007 by William Graylin as a mobile payments company. Defs' Resp. to Pls' Stmt. of Facts ¶¶ 22, 23 [Doc. No. 200]. In May 2010, when BBPOS and ROAM entered into the Agreement, Ingenico had a 40.32% ownership in ROAM. Id. In February 2012, Ingenico increased its ownership stake in ROAM to approximately 74.71%. Id. at ¶ 27.
In March 2012, BBPOS and ROAM signed a term sheet to negotiate ROAM's potential acquisition of BBPOS. Lo 30(b)(6) Dep. Tr. 146:22-147:2 [Doc. No. 198-2]; see Pls' Ex. CC, Vanderhart Rep. 5 [Doc. No. 188-29] (). This period of due diligence lasted until approximately June 11, 2012. Lo 30(b)(6) Dep. Tr. 146:22-147:2 [Doc. No. 198-2]. That acquisition never occurred. Pls' Ex. D, Zatkovich Rep. 17 [Doc. No. 188-4].
In May 2013, AnywhereCommerce rejected ROAM's request for an amendment of BBPOS's licensing agreement with 436 Canada (which was terminable on 90 days notice), but invited discussions about potential acquisition, noting that AnywhereCommerce valued its “relationship with BBPOS and by extension Roam/Ingenico.” Pls' Ex. V [Doc. No. 188-22].
On July 1, 2013, 436 Canada and BBPOS entered into a new license agreement that granted to BBPOS “a royalty bearing, personal, non-transferrable and non-exclusive license with a right to sub-license….” without the provision for termination on 90 days notice. Pls' Ex. T, 436 Canada License Agreement ¶ 3.1 [Doc. No. 188-20].
By January 2015, Ingenico had acquired 100% ownership of ROAM, and on December 31, 2017, Ingenico and ROAM merged. Defs' Resp. to Pls' Stmt. of Facts ¶ 30 [Doc. No. 200]; Defs' Stmt. of Facts ¶ 8 (undisputed) [Doc. No. 193]; Graylin Dep. Tr. 6:15-23 [Doc. No. 188-5]; Lo 30(b)(6) Dep. Tr. 58:3-8 [Doc. No. 198-2].
On May 4, 2010, ROAM and BBPOS entered into the Agreement [Doc. No. 188-3]. On August 15, 2011, ROAM and BBPOS amended the Agreement. 2011 Amendment [Doc. No. 188-3]. The relevant provisions of the Agreement, as amended, provides as follows:
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