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Case 1:06-cv-00404-LPS Document 368 Filed 12/04/09 Page 1 of 6 PageID #: 6820
`Case l:O6—cv—OO404—LPS Document 368 Filed 12/04/09 Page 1 of 6 Page|D #: 6820
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`ST. CLAIR INTELLECTUAL PROPERTY:
`
`CONSULTANTS,
`
`INC.,
`
`Plaintiff,
`
`V.
`
`MATSUSHITA ELECTRONIC
`
`INDUSTRIAL CO., LTD., et al.,
`
`Defendants.
`
`ST. CLAIR INTELLECTUAL PROPERTY:
`
`CONSULTANTS,
`
`INC.,
`
`Civ. Act. No. 04-1436-JJF-LPS
`
`Plaintiff,
`
`V.
`
`Civ. Act. No. O6-403—JJF-LPS
`
`VERIZON COMMUNICATIONS,
`et al.,
`
`INC.,
`
`Defendants.
`
`ST. CLAIR INTELLECTUAL PROPERTY:
`
`CONSULTANTS,
`
`INC.,
`
`Plaintiff,
`
`v.
`
`PALM,
`
`INC., et al.,
`
`Defendants.
`
`Civil Action No. 06-404-JJF—LPS
`
`MEMORANDUM ORDER
`
`Pending before the Court are Objections To Report And
`
`Recommendation Regarding Motion To Dismiss For Lack Of Subject
`
`

`
`Case 1:06-cv-00404-LPS Document 368 Filed 12/04/09 Page 2 of 6 PageID #: 6821
`Case l:O6—cv—OO404—LPS Document 368 Filed 12/04/09 Page 2 of 6 Page|D #: 6821
`
`Matter Jurisdiction And For Jurisdictional Discovery (D.I. 203 in
`
`Civ. Act. No. 06-404) filed by Defendant Kyocera Wireless Corp.
`
`(“Kyocera”). Objections have also been filed by Hewlett-Packard
`
`Company (D.I. 296 in Civ. Act. No. 04—l436 ) and Audiovox
`
`Communications Corporation, BenQ Corporation, BenQ America
`
`Corporation, Siemens AG, Siemens Corporation, and UTStarcom Inc.
`
`(D.I. 2l5 in Civ. Act. No. 06-403). All Defendants rely upon and
`
`incorporate into their Objections the arguments made by Kyocera
`
`in its Objection.
`
`For the reasons discussed,
`
`the Court will
`
`overrule Defendants’ Objections in all of the above-captioned
`
`cases and adopt
`
`the Report and Recommendation Regarding Motions
`
`To Dismiss For Lack Of Subject Matter Jurisdiction And For
`
`Jurisdictional Discovery (D.I. 183 in Civ. Act. No. 06-404; D.I.
`
`183 in Civ. Act. No. 06-403; D.I. 276 in Civ. Act. No. 04—l436).
`
`I.
`
`THE PARTIES’ CONTENTIONS
`
`Defendants contend that Magistrate Judge Stark erred in his
`
`interpretation of the inventors’ employment agreements.
`
`Specifically, Defendants contend that St. Clair lacks standing to
`
`sue, because St. Clair did not own the Roberts Patents at the
`
`time it initiated these actions. According to Defendants,
`
`the
`
`Roberts Patents were automatically assigned to Mirage Systems,
`
`Inc. pursuant to the inventors’ employment agreements and then
`
`subsequently transferred to Kodak by Mirage. Defendants contend
`
`that Magistrate Judge Stark (l)
`
`incorrectly concluded that the
`
`

`
`Case 1:06-cv-00404-LPS Document 368 Filed 12/04/09 Page 3 of 6 PageID #: 6822
`Case l:O6—cv—OO404—LPS Document 368 Filed 12/04/09 Page 3 of 6 Page|D #: 6822
`
`present assignment
`
`language in Paragraph 4 does not apply to
`
`employee made inventions;
`
`(2)
`
`incorrectly concluded that
`
`Kyocera’s construction of Paragraph 4 makes the other paragraphs
`
`of the contract superfluous;
`
`(3)
`
`inappropriately gave the same
`
`words different meaning in different paragraphs of the employment
`
`agreement;
`
`(4)
`
`interpreted the employment agreement
`
`in a way that
`
`creates unreasonable results and (5) failed to apply Federal
`
`Circuit precedent regarding language of present assignment. At
`
`the very least, Defendants contend that the employment agreements
`
`are ambiguous, and therefore,
`
`jurisdictional discovery is
`
`required.
`
`In response, Plaintiff contends that Magistrate Judge Stark
`
`correctly concluded that only Paragraphs 5 and 6 of the
`
`employment agreements apply to the assignment of employee
`
`“Inventions” and that these provisions lack the requisite
`
`language of present assignment. As to Paragraphs 3 and 4,
`
`Plaintiff contends that these paragraphs apply only to
`
`“Proprietary Information.” Plaintiff further contends that
`
`Magistrate Judge Stark’s interpretation of the employment
`
`agreements is the only interpretation that does not render
`
`Paragraphs 5 and 6 superfluous and does not result in the
`
`unenforceability of paragraphs 3 and 4 under California Law,
`
`which requires an employee to be noticed regarding any assignment
`
`of employee inventive rights.
`
`

`
`Case 1:06-cv-00404-LPS Document 368 Filed 12/04/09 Page 4 of 6 PageID #: 6823
`Case l:O6—cv—OO404—LPS Document 368 Filed 12/04/09 Page 4 of 6 Page|D #: 6823
`
`II.
`
`STANDARD OF REVIEW
`
`When reviewing the decision of a magistrate judge on a
`
`dispositive matter,
`
`the Court conducts a ge novo review. 28
`
`U.S.C. § 636(b)(l)(B); Fed. R. Civ. P. 72(b)(3).
`
`A motion to
`
`dismiss is a dispositive matter.
`
`Id; The court may accept,
`
`reject, or modify the recommendations of the magistrate judge.
`
`The court may also receive further evidence or return the matter
`
`to the magistrate judge with instructions for proceeding.
`
`Id.
`
`III. DISCUSSION
`
`Reviewing the Report and Recommendation of Magistrate Judge
`
`Stark ge novo,
`
`the Court concludes that Magistrate Judge Stark
`
`did not err in his interpretation of the employee agreements.
`
`The Court finds no ambiguity in the agreements and is further
`
`persuaded by the distinction drawn in the agreements between
`
`“Inventions” in paragraphs 5 and 6, and “inventions” as that term
`
`is used in paragraphs 3 and 4 as an example of what constitutes
`
`“Proprietary Information.”
`
`In the Court's view,
`
`this
`
`interpretation gives effect to all the provisions of the
`
`Employment Agreement and avoids conflict with Section 2870 of the
`
`California Labor Code.
`
`In this regard,
`
`the Court is further
`
`persuaded that the reference to Paragraph 6 in the Paragraph 7
`
`notice provision required by the California Labor Code further
`
`demonstrates that Paragraph 4 was not
`
`intended to cover employee-
`
`conceived inventions.
`
`

`
`Case 1:06-cv-00404-LPS Document 368 Filed 12/04/09 Page 5 of 6 PageID #: 6824
`Case 1:06—cv—00404—LPS Document 368 Filed 12/04/09 Page 5 of 6 Page|D #: 6824
`
`In sum,
`
`the Court concludes that the Magistrate Judge did
`
`not err in his interpretation of the inventors’ employment
`
`agreements, and the Court fully adopts the rationale set forth by
`
`Magistrate Judge Stark in his Report and Recommendation
`
`recommending the denial of the pending Motions To Dismiss.
`
`NOW THEREFORE,
`
`IT IS HEREBY ORDERED that:
`
`l.
`
`The Objections To Report And Recommendation Regarding
`
`Motion To Dismiss For Lack Of Subject Matter Jurisdiction And For
`
`Jurisdictional Discovery (D.I. 203 in Civ. Act. No. 06-404) filed
`
`by Defendant Kyocera Wireless Corp.
`
`(“Kyocera”) are OVERRULED.
`
`2.
`
`Defendant Hewlett—Packard Company's Objections To
`
`Report And Recommendation Regarding Motion To Dismiss For Lack Of
`
`Subject Matter Jurisdiction (D.I. 296 in Civ. Act. No. 04-1436 )
`
`are OVERRULED.
`
`3.
`
`The Objections To Report And Recommendation Regarding
`
`Motion To Dismiss For Lack Of Subject Matter Jurisdiction And For
`
`Jurisdictional Discovery filed by Audiovox Communications
`
`Corporation, BenQ Corporation, BenQ America Corporation, Siemens
`
`AG, Siemens Corporation, and UTStarcom Inc.
`
`(D.I. 204 in Civ.
`
`Act. No. 06-403) are OVERRULED.
`
`4.
`
`The Report And Recommendation Regarding Motions To
`
`Dismiss For Lack Of Subject Matter Jurisdiction And For
`
`

`
`Case 1:06-cv-00404-LPS Document 368 Filed 12/04/09 Page 6 of 6 PageID #: 6825
`Case l:O6—cv—OO404—LPS Document 368 Filed 12/04/09 Page 6 of 6 Page|D #: 6825
`
`Jurisdictional Discovery (D.I. 276 in 04-1436; D.I. 183 in 06-403
`
`and D.I. 183 in 06-404)
`
`is ADOPTED.
`
`
`
`December‘ %
`
`DAT E‘.
`
`2009

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