Sywula v. Teleport Mobility, Inc.

• Docket Number: Case No. 21-cv-1450-BAS-AGS
• Decision Date: 23 January 2023
• Citation: 652 F.Supp.3d 1195
• Parties: Krzysztof SYWULA, Plaintiff, v. TELEPORT MOBILITY, INC., et al., Defendant.
• Court: U.S. District Court — Southern District of California

652 F.Supp.3d 1195

Krzysztof SYWULA, Plaintiff, v.TELEPORT MOBILITY, INC., et al., Defendant.

Case No. 21-cv-1450-BAS-AGS

United States District Court, S.D. California

Signed January 23, 2023

Gary L. Eastman, Gary L. Eastman, a Professional Law Corporation, San Diego, CA, Sara Lauren Gold, Eastman McCartney Dallmann LLP, San Diego, CA, for Plaintiff.

Michael Edward Williams, Law Offices of Michael Williams, Encinitas, CA, for DefendantsAlexis DaCosta, Vincent Coletti.

Andrew Kubik, Law Office of Andrew J. Kubik, San Diego, CA, Frederic G. Ludwig, III, Ludwig, APC, San Diego, CA, for DefendantTeleport Mobility, Inc.

ORDER:

(1) DENYING TELEPORT'S MOTION TO STRIKE[ECF No. 65];

(2)GRANTING PLAINTIFF'S MOTION TO SEAL[ECF No. 60]; and

(3) DENYING MOTION TO DISMISS[ECF No. 65]

Cynthia Bashant, United States District Judge

A patent application must list each and every inventor who is responsible for developing the technology claimed therein.See35 U.S.C. § 116(a)(providing that "[w]hen an invention is made by two or more persons jointly," the patent application must identify all such inventors);see37 C.F.R. § 1.63(a)(2)(instructing patent applicant must "[i]dentify each inventor");see alsoid.§ 1.56(instructing patent applicant "has a duty of candor and good faith in dealing with the United States Patent and Trademark Office"("USPTO")).A putative inventor whose status has been omitted from a patent may petition a federal court pursuant to 35 U.S.C. § 256 to direct the USPTO to correct that patent's inventorship acknowledgments.But the putative-inventor plaintiff must demonstrate he or she has Article III standing to do so.

Typically, a putative-inventor plaintiff demonstrates standing to seek correction by showing he or she has either: (1) an ownership interest in the disputed patent, see, e.g., Fina Oil & Chem. Co. v. Ewen,123 F.3d 1466, 1470(Fed. Cir.1997)("Fina Oil"); or (2) a financial interest in being named an inventor of the disputed patent, see, e.g., Chou v. Univ. of Chi.,254 F.3d 1347, 1359(Fed. Cir.2001)("Chou").But in 2015, the Federal Circuit in Shukh v. Seagate Technology LLC,803 F.3d 659(Fed. Cir.2015)("Shukh"), held a putative-inventor plaintiff need not have an ownership or financial-interest in the disputed patent to bring a § 256 claimifthe plaintiff can show a "concrete and particularized reputational injury" arising from the defendant's allegedly wrongful omission of inventorship status.Id. at 663(emphasis added).

In the instant case, PlaintiffKrzysztof Sywula("Sywula") seeks to correct several patents owned by DefendantTeleport Mobility, Inc.("Teleport"), which relate to a software application for aggregating ride-sharing services.Sywula purports to have invented the Teleport patents' underlying technology but alleges that DefendantsAlexis DaCosta("DaCosta")—Teleport's majority shareholder—and Vincent Coletti("Coletti")—DaCosta's business partner—wrongfully withheld inventorship credit in the patent applications.¹However, Sywula has twice failed to demonstrate standing to pursue his § 256 claim.

As explained in this Court's Order dismissing the First Amended Complaint (FirstAm. Compl., ECF No. 15) for lack of standing, Sywula has no ownership or financial interest in the Teleport patents.(Dismissal Orderat 8-10, ECF No. 54.)Therefore, he is foreclosed from demonstrating Article III standing pursuant to Fina Oil and Chou.(Id.)Moreover, Sywula's prior attempt to invoke Shukh was unsuccessful.(Id. at 10-12.)Although Sywula has demonstrated Defendants' purported failure to credit him with inventing the technology claimed by the Teleport patents damaged his professional reputation, he has failed to show that reputational injury is a "concrete" one.(Id.)Without doing so, Sywula lacks standing to pursue correction of the Teleport patents.(Id.)

Nevertheless, the Dismissal Order left open the possibility Sywula can satisfy the standing requirements of Shukh if he is able to demonstrate his reputational injury has an "economic component," such as "loss of employment prospects or other opportunities."(Dismissal Orderat 12(quotingShukh,803 F.3d at 667).)On August 11, 2022, Sywula filed a pleading with new standing allegations designed to do just that; this pleading is styled as Sywula's "Second Amended Complaint."(SecondAm. Compl., ECF No. 59.)It alleges, inter alia, that in early 2022 Sywula began seeking new employment opportunities beyond the Software Engineer position he held at Intel for approximately 12 years.However, because Defendants purportedly failed to properly recognize him as an inventor of the Teleport patents, Sywula alleges (1)he was unable to advance in rank within Intel and (2) another employer rescinded a job offer that was more lucrative than the position he ultimately secured.

Now before the Court is Teleport's Second Motion to Dismiss for lack of standing pursuant to Federal Rule of Civil Procedure ("Rule")12(b)(1).(Second Mot. to Dismiss("Rule 12(b)(1) Motion"), ECFNo. 65-1.)Teleport argues all three prerequisite elements of Article III standing still are missing from Sywula's pleading.It also argues the extraneous facts it proffers alongside its Rule 12(b)(1) Motion dispossess this Court of jurisdiction.Those facts, Teleport asserts, demonstrate Sywula's loss of vocational leverage and employment opportunities has nothing to do with Sywula's lack of published patents.Sywula opposes (Opp'n, ECF No. 70) and Teleport replies (Reply, ECF No. 72).

The Court finds resolution of Teleport's Rule 12(b)(1) Motion—and the parties' other pending motions relating thereto—is suitable without the need for oral argument.SeeCiv. L. R. 7.1(d)(1).For the reasons set forth below, Sywula has sufficiently invoked Shukh to demonstrate he has standing to pursue his § 256 claim.

I.BACKGROUND

The Court presumes the parties' familiarity with the facts and procedural history of this matter, which are principally set forth in this Court's Order denying Sywula's application for a temporary restraining order(ECF No. 27) and its Dismissal Order.The Court repeats that information here only to the extent necessary to frame the issues pertinent to the Motions now before it.

A. Sywula's First Amended Complaint and the Dismissal Order

As mentioned above, seesupra Introduction, the Federal Circuit recognizes three distinct theories of standing in the § 256 context.SeeFina Oil,123 F.3d at 1470(holding owner of disputed patent has standing to pursue § 256 claim);Chou,254 F.3d at 1359(holdingplaintiff with financial interest in being named inventor of disputed patent has standing to pursue § 256 claim);Shukh,803 F.3d at 663(holdingplaintiff who suffers concrete reputational injury from withholding of inventorship credit has standing to pursue § 256 claim).Sywula unsuccessfully sought to invoke all three in his First Amended Complaint.

Ownership Interest: Sywula alleged he has standing to pursue this inventorship action as "part-owner" of the Teleport patents.While he acknowledged he had assigned his ownership interest in the disputed patents to Teleport, he asserted those assignments are invalid.(FAC ¶ 73.)Hence, Sywula claimed he still retains ownership interest in the Teleport patents and, therefore, has standing to pursue this action under Fina Oil.(Id.);seeFina Oil,123 F.3d at 1470.

The Court observed Sywula's ownership-interest theory of standing is viable only if the assignments to Teleport of his ownership interest in the subject patents are undone by judicial decree, which Sywula presently is litigating in the Rescission Action.Noting that it has no jurisdiction to address the invalidity issue in the instant § 256 action, (Dismissal Orderat 9(citingLarson v. Correct Craft, Inc.,569 F.3d 1319, 1327(Fed. Cir.2009);Jim Arnold Corp. v. Hydrotech Sys., Inc.,109 F.3d 1567, 1571-72(Fed. Cir.1997))), this Court concluded Sywula cannot proceed on his ownership-interest theory "unless and until he regains title to the patents."(Id.(quotingLarson,569 F.3d at 1327).)

Financial Interest: Sywula also asserted he possesses a financial interest in the disputed patents because he is a minority shareholder of Teleport, the entity that purportedly owns the patents.(FAC ¶¶ 2, 31.)Sywula claimed his stake in Teleport gave him a financial interest in the disputed patents and, therefore, standing to sue to correct their inventorship credits.(Id.)The Court disagreed and disposed of Sywula's financial-interest theory.(Dismissal Orderat 9.)In doing so, it noted other courts have concluded with near uniformity a plaintiff's shareholder status in an entity that owns the disputed patent does not constitute a "concrete financial interest sufficient to confer standing."(Id.(quotingEastwood v. Molecular Defs. Corp.,373 F. Supp. 3d 502, 507-08(S.D.N.Y.2019); citing additional authorities).)

Reputational Interest: Finally, Sywula alleged his "omission from th[e][Teleport][p]atents has caused [him] concrete reputational harm[.]"(FAC ¶ 74(citingShukh,803 F.3d at 659)(emphasis added).)Sywula identified three items of purported reputational injury; the first two relate to his professional reputation and the last to his personal reputation.First, Sywula alleged Defendants' withholding of inventorship credit "depriv[ed][him] of the public recognition and vocational leverage that comes from being named as an inventor on a patent in one's field."(Id.¶ 75.)Second, he averred Defendants made diminishing statements about his contributions to the Teleport ride-sharing technology, which also "are harmful to Sywula's credibility as a reputable software engineer."(Id.)And third, Sywula claimed "reputational harm ... based on ... the intense acrimony" arising from the various disputes between the parties, including publicly available police reports and a civil harassment restraining order DaCosta filed against him in...