M.A. Mobile Ltd. v. Indian Inst. of Tech. Kharagpur, Case No. 3:08-cv-02658-WHO

• Court: United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Northern District of California
• Writing for the Court: William H. Orrick, United States District Judge
• Citation: 400 F.Supp.3d 867
• Parties: M.A. MOBILE LTD., Plaintiff, v. INDIAN INSTITUTE OF TECHNOLOGY KHARAGPUR, et al., Defendants.
• Docket Number: Case No. 3:08-cv-02658-WHO
• Decision Date: 05 September 2019

400 F.Supp.3d 867

M.A. MOBILE LTD., Plaintiff,
v.
INDIAN INSTITUTE OF TECHNOLOGY KHARAGPUR, et al., Defendants.

Case No. 3:08-cv-02658-WHO

United States District Court, N.D. California.

Signed September 5, 2019

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Sanjiv Nand Singh, Professional Law Corporation, Micah R. Jacobs, Jacobs Law Group SF, San Francisco, CA, for Plaintiff.

Indra Neel Chatterjee, Andrew Shichen Ong, Elizabeth Jill Low, Michael T. Jones, Goodwin Procter LLP, Redwood City, CA, April Sun, Brendan Eugene Radke, Goodwin Procter LLP, William F. Alderman, Orrick Herrington & Sutcliffe LLP, San Francisco, CA, Christopher Benjamin Yeh, Duane Morris LLP, Los Angeles, CA, Theresa Ann Sutton, Orrick, Herrington & Sutcliffe LLP, Menlo Park, CA, for Defendants.

ORDER GRANTING MOTION FOR SUMMARY JUDGMENT AND DISMISSING COUNTERCLAIMS

Re: Dkt. Nos. 596, 599, 600, 608, 615, 616, 617, 624, 628, 638, 649

William H. Orrick, United States District Judge

400 F.Supp.3d 870

After eleven years, two interlocutory appeals, and one denied petition for a writ of certiorari, the merits of the case have come to the fore. From 2003 to 2005, plaintiff M.A. Mobile Ltd. and defendant Indian Institute of Technology, Kharagpur ("IIT" or "IITK") collaborated to develop a technology that would permit applications to function on handheld devices without an internet connection. M.A. Mobile alleges that IIT breached an oral joint venture agreement, breached a nondisclosure agreement, and misappropriated M.A. Mobile's trade secrets. Before me are several motions, chief among them IIT's motion for summary judgment on all three claims against it. M.A. Mobile fails to present sufficient evidence to allow a reasonable fact finder to decide in its favor because its claims rely on speculation rather than evidence and inference. As set forth below, I will grant summary judgment in favor of IIT.

BACKGROUND

I. FACTUAL BACKGROUND

This case arises from the soured relationship between Mandana Farhang of M.A. Mobile and Partha P. Chakrabarti of IIT. Farhang is the sole shareholder in M.A. Mobile, which is registered in California and Dominica. Deposition of Mandana Farhang ("Farhang Depo.") [Dkt. No. 600-54] 102:11–13; 105:15–16. She formed M.A. Mobile to serve as a holding company for the intellectual property (IP) she obtained from a settlement with Ikonodyne, Inc., a company where she served as CEO and focused on raising outside capital. Farhang Depo. 16:14–18, 161:8– 24; Declaration of Mandana Farhang ("Farhang Decl.") [Dkt. No. 614] ¶ 4; see Radke. Decl. Ex. 2 [Dkt. No. 599-74] (settlement agreement). Chakrabarti is the director of and a professor at IIT's Department of Computer Science and Engineering, although he has performed many different roles during his more than 30 years at IIT. Declaration of Partha Chakrabarti ("Chakrabarti Decl.") [Dkt. No. 599-6] ¶¶ 1, 2. The Indian government created the Indian Institutes of Technology in 1956 as an investment in technical research and education.¹ Chakrabarti Decl. ¶ 4. The IIT Kharagpur, which has its principal place of business is in Kharagpur, West Bengal, India, was the first to be established. Id.

A. Initial Contact between Farhang and Chakrabarti, NDAs

On April 27, 2003, Farhang sent an email to Chakrabarti about the intellectual property she newly owned. Chakrabarti Decl. Ex. 2 (April 27, 2003 and May 21, 2003 emails from Farhang to Chakrabarti) [Dkt. No. 599-8]. She wrote that her initial goal was to "explore the IP with [Chakrabarti] to see if there [was] a potential fit and to determine if [he was] interested in being involved." Id. She described the technology, pocketXML ("PXML"), as a follows:

In layman's terms, the technology consists of a ‘mobile markup language’ based on XML, in combination with a GUI tool that enables the quick creation of mobile applications that run on Palm, Pocket PC, Linux, Epoch and Windows CE. The applications can be downloaded from a server via hopsynch and they are fully executable on the handhelds without

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requiring a wireless connection (although a connection can be established at any time).

Id. She explained that several companies had expressed interest in the technology and gave a sense of her understanding of its potential value. Id. Due to her lack of technical training, she was "not the right person to evaluate the technology and its development status." Id. She indicated an interest in Chakrabarti selecting a team and proceeding as the Chief Technology Officer. Id. Farhang and Chakrabarti met in person in California in May 2003. Farhang Decl. ¶ 6. In a follow-up email on May 21, Farhang indicated that once Chakrabarti signed a short NDA, she would send him a copy of the patent application, the source code, the business plan, and a presentation. Chakrabarti Decl. Ex. 2. In the emails and during the in-person meeting, Farhang "communicated only what [she] considered to be high level, non-confidential information." Farhang Decl. ¶ 6.

On July 21, 2003, Chakrabarti told Farhang that he had received permission from IIT's Dean of Sponsored Research to sign the NDA. Chakrabarti Decl. Ex. 3 (July 21, 2003 email from Chakrabarti to Farhang) [Dkt. No. 599-9]. On August 11, 2003, Chakrabarti sent his signed NDA to Farhang along with a copy that his colleague Pallab Dasgupta had signed. Chakrabarti Decl. ¶ 16. Farhang then sent him a CD of the source code and other materials, which Chakrabarti had received by September 21, 2003. Id. ¶ 17; see Chakrabarti Decl. Ex. 5 [Dkt. No. 599-11] (September 21, 2003 email from Chakrabarti to Farhang). He told Farhang that "[a]t first glance, [the technology] look[ed] interesting to him." Chakrabarti Decl. Ex. 5.

After an early review, Chakrabarti informed Farhang that the idea was "excellent." See Chakrabarti Decl. Ex. 6 [Dkt. No. 599-12] (emails between Farhang and Chakrabarti between October 23 and November 5, 2003). He noted that the code was "incomplete with big gaps" and that there was far more work left to be done than Farhang had initially indicated. Id. (November 5, 2003 email). In addition, Chakrabarti noted that there was competition in the space, and it was not clear what new applications this technology might have that did not already exist. Id. He also asked for permission to have Subrat Panda, one of his students, sign the NDA and begin working on the code. Id. ; see also Singh Decl. Ex. 14 [Dkt. No. 608-23] (email from Farhang to Chakrabarti) (approving others signing NDAs and beginning work).

In February 2004, Chakrabarti told Farhang that engineers Panda and Rakesh Gupta had signed the NDA and begun work. Chakrabarti Decl. Ex. 7 [Dkt. No. 599-13] (February 13, 2004 email from Chakrabarti to Farhang). The engineers who eventually signed onto the NDA and began work were Panda, Gupta, Gurashish Brar, and Pravanjan Choudhury.² Chakrabarti Decl. ¶¶ 19, 20; see Deposition of Subrat Panda ("Panda Depo."), Radke Decl. Ex. 14 [Dkt. No. 600-67] 16:10–18; 20:15–16; Deposition of Gurashish Brar ("Brar Depo."), Radke Decl. Ex. 11 [Dkt. No. 600-64] 57:3–18; Deposition of Pravanjan Choudhury ("Choudhury Depo."), Radke Decl. Ex. 12 [Dkt. No. 600-65] 13:20–25.

B. Early Efforts

Chakrabarti and Farhang exchanged numerous emails and had numerous phone calls about their respective progress on the

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project, and on some occasions they experienced connectivity issues. See Chakrabarti Decl. Ex. 16 [Dkt. No. 599-21] (June 22 to June 25, 2004 emails between Farhang and Chakrabarti with some copied to Jenkins) (expressing Farhang's wish that they "go back to scheduling 1 call per week"). As the work progressed, Farhang "[left] the team building on the technical side completely up to [Chakrabarti]." Chakrabarti Decl. Ex. 7 (February 14, 2004 email from Farhang to Chakrabarti). He had "free rein" to hire for the technical side of the business, and Farhang decided who to hire in California for the operations side. Farhang Depo. 137:6–13. Chakrabarti and Farhang deferred to one another with respect to each one's side of the business. Id. at 137:19–23.

In terms of the technical work, Panda estimated that "around...70 percent of the code was incomplete," and that there were "a lot of inconsistencies in the code, all across." Panda Depo. 23:2–5, 27:3–9. The engineers began working to determine whether they could make a minimum viable product out of the code. Id. at 27:8–11. According to Farhang, these gaps existed because she had "inadvertently failed to send IIT the CD Rom of a third-party software package called Excelon, that the PXML Technology required in order to fully run." Farhang Decl. ¶ 7. She later uploaded that software to an IIT server and learned from Brar that the technology was working with Excelon. Id. By March 2004, the engineers had created a report "that described the development status and identified the deficiencies of the code," and Chakrabarti sent the report to Farhang. Chakrabarti Decl. ¶¶ 21–23; see id. Ex. 10 [Dkt. No. 599-15] (March 15, 2004 email from Brar to Chakrabarti attaching the report); id. Ex. 11...