Sywula v. Dacosta

ORDER:

(1) DENYING EX PARTE MOTION FOR TEMPORARY RESTRAINING ORDER (ECF No. 9);

(2) DIRECTING DEFENDANTS TO SHOW CAUSE WHY A PRELIMINARY INJUNCTION SHOULD NOT ISSUE; AND

(3) SETTING BRIEFING SCHEDULE AND HEARING DATE FOR PRELIMINARY INJUNCTION

Hon. Cynthia Bashant United States District Judge

Pending before this Court is Plaintiff's ex parte application for a temporary restraining order or, in the alternative, a preliminary injunction. (Mot. for a TRO (“Mot.”), ECF No. 9.) Defendants opposed (Opp'n, ECF No. 14) and Plaintiff replied (Reply, ECF No. 16).^[1]

The Court finds the Motion for a TRO suitable for determination on the papers and submitted without oral argument. See Fed. R. Civ. P. 78(b); Civ. L.R. 7.1(d)(1). For the reasons set forth below, the Court DENIES Plaintiff's application for a TRO and ORDERS Defendants to show cause why a preliminary injunction should not issue.

I. BACKGROUND

Plaintiff Krzyszstof Sywula (“Sywula” or “Plaintiff”) commenced this action in federal court on August 15, 2021 against Defendants Alexis DaCosta (“DaCosta”), Vincent Coletti (“Coletti”), and Teleport Mobility, Inc. (“Teleport” or “Company” and, together with DaCosta and Coletti, “Defendants”). (Compl., ECF No. 1.) By this action, Sywula seeks to correct inventorship pursuant to 35 U.S.C. § 256 of three United States Patents recently issued to Teleport: Patent No. 11, 087, 250 titled “Interactive Real Time System And Real Time Method of Use Thereof In Conveyance Industry Segments”; Patent No. 11, 087, 252 titled “Interactive Real Time System And Real Time Method of Use Thereof In Conveyance Industry Segments”; and Patent No. 11, 087, 253 titled “Interactive Real Time System and Real Time Method of use Thereof In Conveyance Industry Segments” (“Patents”).^[2] (Compl. ¶ 6.) The named inventors of those Patents are DaCosta and Coletti only. (Declaration of Krzysztof Sywula (“Sywula Decl.”) ¶ 25, ECF No. 12.) However, Sywula asserts that he “solely [was] responsible for [engineering] and developing the software and algorithms” underlying Teleport's ride-sharing application, which are prominently claimed in the claims of the above-mentioned Patents, not DaCosta and Coletti. (Id. ¶¶ 26, 51-58.)

On August 15, 2021, Sywula filed ex parte his Motion for a TRO seeking “to enjoin Teleport from transferring any rights under the [P]atents …, pending resolution of the inventorship issues” pertaining to those Patents raised in the present action.^[3] (Mot. 1.) Pursuant to this Court's Scheduling Order, Defendants opposed and Sywula replied (ECF No. 13). (ECF Nos. 14, 16.)

Defendants oppose Sywula's application on three principal bases. First, Defendants contend that the Motion for a TRO should be denied because the Patents are covered by assignments Sywula executed in 2016 and 2019 and, thus, Sywula lacks standing to prosecute this action. (Opp'n 14-17; Consulting Agreement, Ex. 1 to Declaration of Alexis DaCosta (“DaCosta Decl.”), ECF No. 14-2; Teleport's Employee Proprietary Information and Inventions Agreement (“PIIA”), Ex. 2 to DaCosta Decl., ECF No. 14-3.) Second, Defendants aver that Sywula vastly overstates his contributions to the Patents in order to qualify as an inventor. (Opp'n 23-25.) Third, Defendants argue that the first-to-file rule precludes the issuance of a TRO, as there is currently an action pending in the Northern District of California, captioned Teleport Mobility Inc., et al., v. Krzysztof Sywula, No. 21 Civ. 00874, commenced February 3, 2021, which Defendants claim overlaps substantially with this case. (Opp'n 19-21.) Defendants contend that Sywula's inventorship claim must be brought as a compulsory counterclaim in the first-filed action. (Id. 21.)

In response, Sywula disputes Defendants' contention that he assigned away his rights respecting the Patents. Moreover, Sywula claims that even assuming arguendo the Consulting Agreement and/or PIIA apply to the Patents, he still has standing to prosecute this action because (1) those assignments are void and (2) he has suffered reputational harm

from his exclusion as an inventor, an alleged independent basis for standing. (Reply 5- 10.) Sywula further argues that the first-to-file rule is inapplicable here because his Complaint seeks declaratory relief pertaining to the Patents and, thus, falls within a recognized exception to the first-to-file rule. (Reply 3 (citing Knapp v. Depuy Synthes Sales, Inc., 983 F.Supp.2d 1171, 1178 (E.D. Cal. 2015)).)

II. LEGAL STANDARD

A temporary restraining order is “an extraordinary remedy never awarded as of right.” Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 24 (2008) (“Winter”).^[4] A district court should issue a temporary restraining order only when there is “clear showing that plaintiff is entitled to such relief. Id. at 22. Movants seeking a temporary restraining order “must establish that (1) they are likely to succeed on the merits; (2) they are likely to suffer irreparable harm in the absence of preliminary relief; (3) the balance of equities tips in their favor; and (4) a preliminary injunction is in the public interest” (“Winter Test”). Sierra Forest Legacy v. Rey, 577 F.3d 1015, 1021 (9th Cir. 2009) (citing Winter, 555 U.S. at 20). Alternatively, “‘serious questions going to the merits' and a hardship balance that tips sharply toward the plaintiff can support issuance of an injunction, assuming the other two elements of the Winter [T]est are also met.” All. for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1132 (9th Cir. 2011) (interpreting Winter and explaining that the ‘sliding scale' test for preliminary injunctive relief remains valid). A “serious question” is one which the movant “has a fair chance of success on the merits.” Sierra On-Line, Inc. v. Phoenix Software, Inc., 739 F.2d 1415, 1421 (9th Cir. 1984).

III. ANALYSIS

“A plaintiff seeking a preliminary injunction must show more than a ‘possibility' of irreparable injury'; he must demonstrate that irreparable injury is ‘likely' in the absence of

preliminary relief.” JBF Interlude 2009 Ltd. v. Quibi Holdings, LLC, Nos. 2:20-CV-02299-CAS (SKx), 2:20-CV-02250-CAS (SKx), 2020 WL 7314845, at *2 (C.D. Cal. Nov. 5, 2020) (quoting Winter, 555 U.S. at 22); see also Am. Trucking Assocs., Inc. v. City of Los Angeles, 559 F.3d 1046, 1052 (9th Cir. 2009). “A plaintiff must do more than merely allege imminent harm sufficient to establish standing; a plaintiff must demonstrate immediate threatened injury as a prerequisite to [a temporary restraining order].” Caribbean Marine Servs. Co. v. Baldridge, 844 F.2d 668, 674 (9th Cir. 1988). Indeed, conclusory affidavits without sufficient support in facts are insufficient to demonstrate immediate, irreparable harm. Am. Passage Media Corp. v. Cass Comms., Inc., 750 F.2d 1470, 1473 (9th Cir. 1985) (emphasis in original).

The Court does not-and need not-reach the merits of Sywula's inventorship claim-or, for that matter, the defenses raised by Defendants in their papers-because absent from the declarations Sywula submits in support of his Motion for a TRO are even speculative attestations of irreparable harm. See JBF Interlude 2009 Ltd., 2020 WL 7314845, at *2 (denying TRO in patent inventorship action without considering likelihood of success on the merits where movant failed to demonstrate more than speculative irreparable harm). Wherever courts might draw the line between ‘merely speculative' irreparable harm, on the one hand, and factually supported assertions of an immediate threatened injury justifying ex parte relief, on the other hand, Sywula's Motion for a TRO falls far below it, for Sywula simply does not provide any evidentiary...