Regents of the Univ. of Cal. v. LTI Flexible Prods., 3:20-cv-08686-WHO

CourtUnited States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Northern District of California
Writing for the CourtWilliam H. Orrick United States District Judge
Docket Number3:20-cv-08686-WHO
Decision Date10 September 2021



No. 3:20-cv-08686-WHO

United States District Court, N.D. California

September 10, 2021

ORDER ON MOTION TO DISMISS Re: Dkt. Nos. 61, 63, 72

William H. Orrick United States District Judge

Plaintiffs Regents of the University of California (“the Regents”) and TiMEMS, Inc., sued defendant LTI Flexible Products, Inc., d/b/a Boyd Corporation (“Boyd”) for patent infringement, declaratory judgment of ownership of patents, and unjust enrichment connected to alleged wrongful taking of the patent rights. Boyd's motion to dismiss most of the claims is granted in part and denied in part. The challenged patent infringement claim survives because the plaintiffs have made a sufficient preliminary showing that they have standing to pursue it. One of the three declaratory judgment claims is dismissed because it appears to have been filed beyond the statute of limitations, but the plaintiffs have leave to amend to better plead that the discovery rule saves it. The other two declaratory judgment claims are not similarly time-barred on the face of the complaint. And the unjust enrichment claim is dismissed with leave to amend because the plaintiffs have not adequately connected the alleged wrongful conduct to Boyd.


The Regents administer the University of California system, including the University of California, Santa Barbara (“UCSB”). Second Amended Complaint (“SAC”) [Dkt. No. 49] ¶ 1. TiMEMS is a research and development company associated with the Regents. Id. ¶ 8.

The plaintiffs allege that from 2006 to 2010, Payam Bozorgi was a Ph.D. candidate at UCSB, studying micro electromechanical systems (“MEMS”) and titanium thermal ground planes (“Ti-TGPs”). Id. ¶ 15. He worked under Professor Carl Meinhart. Id. According to plaintiffs, Bozorgi and Meinhart (like all UCSB employees and researchers) signed “patent acknowledgements” in 2006 and 1996, respectively, that committed them to assigning inventions to the University that they “conceive[d] or develop[ed] while employed by the University or during the course of [their] utilization of any University research facilities, or any connection with my use of gift, grant, or contract research funds received through the University.” Id. ¶¶ 18-20. After his Ph.D. was completed, Bozorgi was employed as a UCSB researcher. Id. ¶ 23. The plaintiffs allege that he executed an amendment to the patent acknowledgement on December 10, 2011, that turned the future assignment of rights into an immediate assignment. Id. ¶¶ 26-27. They allege that Meinhart did the same on February 15, 2013. Id. ¶¶ 28-29.

In August 29, 2012, Bozorgi and others founded PiMEMS, Inc. Id. ¶ 31. After Bozorgi left his position as a researcher in May 2014, he received a “zero-percent-time university appointment at UCSB, ostensibly to permit him to access UCSB's library in order to publish his previous research, but not to perform new research at UCSB.” Id. ¶ 33.

Several patents, provisionals, and applications are relevant to these motions. U.S. Patent No. 10, 458, 719 (“the ‘719 patent”) issued in October 2019, with Bozorgi and Meinhart as named inventors. Id. ¶ 36(b). It issued from an application filed in January 2016 and claimed priority from U.S. Provisional Application No. 62/106, 556 (“the ‘556 provisional”) filed in January 2015. Id. U.S. Provisional Application No. 62/340, 308 (“the ‘308 provisional”) was filed in 2016 and would ultimately result in a patent for which Bozorgi was sole inventor. Id. ¶ 36(c). U.S. Provisional Application No. 62/573, 778 (“the ‘778 provisional”) was filed in October 2017 and would ultimately result in a patent for which Bozorgi was sole inventor. Id. ¶ 36(d).

On January 20, 2015, Bozorgi and Meinhart submitted a “request for title clearance” to UCSB for a “high-performance two-phase cooling apparatus”-the subject of the ‘556 provisional-and attached the ‘556 provisional to it. Id. ¶ 39. That title clearance said that “the subject matter of the ‘556 provisional is an improvement on the licensed UC technology.” Id. ¶ 41. It also said-according to the plaintiffs, falsely-that it “was developed exclusively at PiMEMS, Inc., using exclusively PiMEMS' resources” and “funded exclusively by PiMEMS' internal funding and built exclusively using facilities rented by PiMEMS. There were no UC facilities or resources used during the conception or reduction to practice.” Id. (internal quotation marks omitted).

The plaintiffs claim that Bozorgi made a series of false statements about his use of UCSB facilities in connection with his patents. They allege that he “used UCSB's pulsed laser welder to fabricate Ti-TGPs on multiple occasions after he resigned his position as a salaried researcher on May 31, 2014, ” but claimed he did not use it. Id. ¶¶ 42-43. They claim that he used UCSB's laser welder one-hundred-and-sixty-two times to fabricate Ti-TGPs after May 31. Id. ¶¶ 44-45. They say he did not use a third-party's welder, despite his statements otherwise. Id. ¶ 46. They claim he also lied to Meinhart about this. Id. ¶ 48.

The director of the pertinent UCSB office and Bozorgi discussed the issue on August 15, 2016, and he-again, the plaintiffs say falsely-told her that the “work was outsourced to a third party.” Id. ¶ 50. As a result, they claim that the ‘556 provisional “contained data obtained using Ti-TGPs fabricated by Bozorgi in November and December 2014 using UCSB's pulsed laser welder.” Id. ¶ 51. He had another conversation later that August with the office in which he allegedly said that he did use UCSB's welder, but that “this use occurred after UCSB's laser welder had been made available to external users in February of 2015.” Id. ¶ 53. He reiterated his alleged untruths to the director several more times. Id. ¶¶ 55, 57-58. UCSB allegedly “made multiple requests to Bozorgi for documentation to support his false claims that he used a third party's laser welder for work relating to the subject matter of the ‘556 provisional” during 2016 and 2017 but “Bozorgi was never able to substantiate any of his false claims that he had used a third party's laser welder to perform any of the work relating to the subject matter of the ‘556 provisional.” Id. ¶ 60.

Accordingly, “[b]ased, at least in part, on Bozorgi's false statements in the Title Clearance and his false statements in subsequent correspondence relating thereto . . . The Regents declined to waive their ownership rights in the ‘556 provisional and, instead, elected to assert sole ownership of the ‘556 provisional.” Id. ¶ 61. The plaintiffs therefore allege that Bozorgi was required to, but did not, assign his rights in the inventions to the Regents.

The plaintiffs allege on information and belief that Boyd “acquired PiMEMS on or around April 4, 2019, ” and that Bozorgi is currently employed by Boyd. Id. ¶ 77.


The plaintiffs filed suit in December 2020 and amended their complaint in February 2021. Dkt. Nos. 1, 26. In May 2021, I granted Boyd's partial motion to dismiss. See Order On Motion to Dismiss (“Prior Order”) [Dkt. No. 45]. In brief, I found that the plaintiffs had not shown they possessed standing to pursue their claim for infringement of the ‘719 patent because the evidence indicated they were not the sole owners of the patent. Id. 5-8. I found that their claim for declaratory judgment that they owned the ‘556 provisional was barred by the statute of limitations. Id. 8-11. And I dismissed their unjust enrichment and rescission claims as inadequately pleaded. Id. 11-13. But I gave leave to amend. In the SAC, the plaintiffs have dropped the rescission claim but realleged all of the others and added two claims for declaratory judgment of ownership on new intellectual property.


A motion to dismiss filed pursuant to Federal Rule of Civil Procedure (“FRCP”) 12(b)(1) is a challenge to the court's subject matter jurisdiction. See Fed. R. Civ. P. 12(b)(1). “Federal courts are courts of limited jurisdiction, ” and it is “presumed that a cause lies outside this limited jurisdiction.” Kokkonen v. Guardian Life Ins. of Am., 511 U.S. 375, 377 (1994). The party invoking the jurisdiction of the federal court bears the burden of establishing that the court has the requisite subject matter jurisdiction to grant the relief requested. Id.

A challenge pursuant to Rule 12(b)(1) may be facial or factual. See White v. Lee, 227 F.3d 1214, 1242 (9th Cir. 2000). In a facial attack, the jurisdictional challenge is confined to the allegations pled in the complaint. See Wolfe v. Strankman, 392 F.3d 358, 362 (9th Cir. 2004). The challenger asserts that the allegations in the complaint are insufficient “on their face” to invoke federal jurisdiction. See Safe Air Safe Air for Everyone v. Meyer, 373 F.3d 1035, 1039 (9th Cir. 2004). To resolve this challenge, the court assumes that the allegations in the complaint are true and draws all reasonable inference in favor of the party opposing dismissal. See Wolfe, 392 F.3d at 362.

“By contrast, in a factual attack, the challenger disputes the truth of the allegations that, by themselves, would otherwise invoke federal jurisdiction.” Safe Air, 373 F.3d at 1039. To resolve this challenge, the court “need not presume the truthfulness of the plaintiff's allegations.” Id. (citation omitted). Instead, the court “may review evidence beyond the complaint without converting the motion to dismiss into a motion for summary judgment.” Id. (citations omitted). Once the moving party has made a factual challenge by offering affidavits or other evidence to dispute the allegations in the complaint, the party opposing the motion must “present affidavits or any other evidence necessary to satisfy its burden of establishing that the court, in...

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