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Wyatt Technology Corp. v. Malvern Instruments Inc.

July 29, 2009


The opinion of the court was delivered by: Dean D. Pregerson United States District Judge


[Motions filed on June 29, 2009]

Before the Court are two Motions for Partial Summary Judgment filed by Defendants Malvern Instruments Inc. and David Dolak. In the first Motion, Defendants move for partial summary judgment on Plaintiff's copyright claims. In the second Motion, Defendants move for summary judgment on Plaintiff's non-copyright claims, i.e., those for misappropriation of trade secrets, Lanham Act damages, intentional interference with prospective economic advantage, unfair competition, and accounting. Plaintiff Wyatt Technology Corporation opposes both motions.*fn1 On the Friday afternoon before the hearing on these motions, Plaintiff also filed a Rule 56(f) request. After reviewing the materials submitted by the parties, hearing oral argument, and considering the evidence in detail, the Court denies the Rule 56(f) request as untimely and grants in part and denies in part the Motions for Summary Judgment for the reasons discussed below.


A. Factual Background*fn2

Plaintiff Wyatt Technologies Corporation ("Wyatt" or "Plaintiff") and Defendant Malvern Instruments Incorporated ("Malvern") are competitors in the particle analysis field. Second Amended Complaint ("SAC") ¶ 64. Both manufacture, market, and/or sell laser light scattering goods and services relating to measuring molecular weights and characterization of molecules and particles. Id. The technology is called dynamic light scattering ("DLS"). Plaintiff markets and sells a DLS instrument called a "DynaPro." SAC ¶ 28. Malvern sells a DLS insrument called the Zetasizer Nano. Id. ¶ 64.

In November 2004, Plaintiff acquired certain physical and intangible assets of Proterion Corporation through an Asset Purchase Agreement ("APA"). Proterion Corporation's wholly-owned subsidiary Protein Solutions provided technology to the biomolecular research community. One product of Protein Solutions was the DynaPro DLS Instrument. Among the assets Plaintiff acquired were the DynaPro product line and physical assets, the website domain, software code, customer databases, manufacturing software programs and databases and related documents, and patents.

Beginning in October 2007, Plaintiff registered certain copyrights related to those assets. Those copyright registrations included registrations for: (1) a software program entitled "DYNAMICS v.6.2.05"; (2) a software program entitled "DYNAMICS v.6.3.40"; (3) a software program entitled "DYNAMICS v.5.26.56"; (4) an installation CD entitled "DYNAMIC INSTALLATION CD v.6.3.40"; (5) an installation CD entitled "DYNAMICS INSTALLATION CD v.5.26.56"; (6) text and graphs entitled "PSI Books, Dynamic Light Scattering"; (7) text and graphs constituting the "Protein Solutions" web site; (8) text titled "PSI Books"; and (9) text titled "PSI Frequently Asked Questions."

In January 2003, Malvern hired Defendant David Dolak ("Dolak"), a former Protein Solutions employee. Malvern hired Dr. Kevin Mattison, a former Protein Solutions employee, in 2002. It is undisputed Malvern additionally hired Dr. Ulf Nobbman, also a former Protein Solutions employee, though the parties dispute when Dr. Nobbman began working with Malvern. See Non-Copyright SGI ¶ 7. Dolak was employed by Protein Solutions as its Marketing and Sales Manager for over five years prior to being hired by Malvern.

According to Plaintiff, Dolak signed a confidentiality agreement and breached his obligations under that agreement by conveying confidential information to Malvern and third parties.

According to Plaintiff, through the manufacture, marketing, and sale of the Zetasizer Nano, Malvern and Dolak have infringed Plaintiff's copyrights. See SAC ¶ 49. Additionally, Plaintiff claims that Malvern has used false advertising and misappropriation of Plaintiff's trade secrets to acquire a position in the market.

B. Procedural History

Plaintiff filed this suit on December 21, 2007, and filed its SAC, the governing pleading, on April 14, 2008.*fn3 The SAC seeks to bring fourteen causes of action against Defendants Malvern and Dolak (collectively, "Defendants"): (1) nine claims for copyright infringement (U.S. Copyright Nos. TXu 1-569-097, TXu 1-569-098, TXu 1-569-099, TX 6-812-045, TX 6-812-047, TX 6-812-053, TX 6-813-868, TX 6-813-833, and TX 6-816-834); (2) false advertising in violation of the Lanham Act; (3) misappropriation of trade secrets in violation of California Civil Code §3425.1(b); (4) tortious interference with prospective business advantage in violation of California law; (5) unfair competition under California law; and (6) accounting.

Defendants now bring two motions for partial summary judgment: one on Plaintiff's copyright claims, and one on Plaintiff's non-copyright claims.*fn4


Summary judgment is appropriate where "the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to a judgment as a matter of law."

Fed. R. Civ. P. 56(c). All reasonable inferences from the evidence must be drawn in favor of the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). A genuine issue exists if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party"; and material facts are those "that might affect the outcome of the suit under the governing law." Anderson, 477 U.S. at 248. A party opposing summary judgment must come forward with specific facts, supported by admissible evidence, showing a genuine issue for trial. Fed. R. Civ. P. 56(e); Brinson v. Linda Rose Joint Venture, 53 F.3d 1044, 1049 (9th Cir. 1995).


In the afternoon of the Friday before the Monday morning hearing on Defendants' Motions for Summary Judgment, Plaintiff submitted a document titled "Declaration of Frank Frisenda in Support of Request for Denial or Continuance of Summary Judgment under FRCP 56(f)." See Dkt. No. 161 (July 24, 2009). Pursuant to Rule 56(f), a court may deny a summary judgment motion or order a continuance "[i]f a party opposing the motion shows by affidavit that, for specified reasons, it cannot present facts essential to justify its opposition." Fed. R. Civ. P. 56(f).

In addition to for the reasons identified by Defendants, see Defs.' Opposition to Plaintiff's Request (Dkt. No. 162) (July 27, 2009) (noting, among other points, that Plaintiff does not explain which of the various summary judgment grounds may be defeated by information to be obtained through the limited remaining discovery), the Court denies this request as untimely. Although the Court granted Plaintiff's request to reopen discovery a full week prior to the time Plaintiff's Oppositions were due -- and over a week before Plaintiff filed its Oppositions -- Plaintiff wholly failed to request a Rule 56(f) continuance until the Friday afternoon prior to the hearing on the Motions. Prior to that point, at no point in the voluminous materials submitted to the Court did Plaintiff suggest that more information was necessary or would be helpful. The Court denies Plaintiff's Rule 56(f) request as untimely.


Defendants first move for summary judgment on Plaintiff's copyright claims. With respect to claims 1 through 5 and claim 7, Defendants argue that the Court should grant summary judgment in their favor because Malvern's software (claims 1 through 5) and website (claim 7) are not substantially similar to any protected elements of Plaintiff's work.*fn5 With respect to claims 6 and 8, Defendants argue that the Court should grant summary judgment in their favor because the copyrights in the works have been abandoned. With respect to claim 9, Defendants argue that Plaintiff has no evidence of actual damages and is not entitled to statutory damages or attorneys' fees. Additionally, Dolak argues that he is not individually liable with respect to claims 1 through 8. Finally, Defendants argue that Plaintiff cannot get statutory damages or attorneys' fees as to any of its copyright claims.

A. Legal Framework

1. Copyright Infringement Analysis

In order to succeed on a claim for copyright infringement, a plaintiff must show that it owns the copyright and that the defendant copied protected elements of the work. Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 636 (9th Cir. 2008)(quoting Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002)). A plaintiff may prove copying through circumstantial evidence that establishes (1) the defendant had access to the copyrighted work and (2) the protected portions of the works are substantially similar. Id. at 636-37. The issue of substantial similarity can be amenable to summary judgment if "no reasonable juror could find substantial similarity of ideas and expression." Funky Films, Inc. v. Time Warner Entm't Co., L.P., 462 F.3d 1072, 1076 (9th Cir. 2006).

The Ninth Circuit uses a two-part test -- an extrinsic test and an intrinsic test -- to determine whether two works are substantially similar. Jada Toys, Inc., 518 F.3d at 637. While the extrinsic test considers whether there are substantial similarities in both ideas and expression, the intrinsic test measures expression subjectively, from the standpoint of the ordinary reasonable observer. Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1442 (9th Cir. 1994). On summary judgment, courts look only to the extrinsic test. When applying the extrinsic test, "a court must filter out and disregard the nonprotectable elements in making its substantial similarity determination." Cavalier, 297 F.3d at 822. Put differently, in the extrinsic test, the court uses "analytic dissection to determine the scope of copyright protection before works are considered as a whole." Apple Computer, Inc., 35 F.3d at 1443.

In Apple Computer, the Ninth Circuit identified three steps as "helpful" to follow in performing the substantial similarity analysis. Id. First, the plaintiff must identify the sources of the alleged similarity between its work and the defendant's work. Id.

Second, using "analytic dissection," the court must determine "whether any of the allegedly similar features are protected by copyright." In so doing, the Court must separate ideas from potentially protectable expression. Id. "[T]o that expression, the court must then apply the relevant limiting doctrines in the context of particular medium involved." Id. Analytic dissection is appropriate because the party claiming infringement may place no reliance upon similarity in expression resulting from unprotectable elements. Id. at 1446. Instead, "the unprotectable elements have to be identified, or filtered, before the works can be considered as a whole." Id. Limiting doctrines that bear on the amount of protection of the work include the merger doctrine, the constraints of the medium that limit the options for expression, and originality. Id. at 1444-45. Pursuant to the merger doctrine, when an idea and its expression are indistinguishable, the expression will only be protected against nearly identical copying. Id. at 1444. In the copyright context, "originality" is defined as material created by the author.

Third, the Court "must define the scope of the plaintiff's copyright-that is, decide whether the work is entitled to 'broad' or 'thin' protection." Id. at 1443. Depending on the degree of protection, the court must set the appropriate standard for a subjective comparison of the works to determine whether, as a whole, they are sufficiently similar to support a finding of illicit copying. Id. at 1443. A work afforded broad protection is then compared as a whole with the allegedly infringing design to determine if the two are substantially similar. Computer Access Tech. Corp. v. Catalyst Enters., Inc., 2001 WL 34118030, *14 (N.D. Cal. June 13, 2001) (Jenkins, J.). On the other hand, a work afforded thin protection is compared as a whole with the allegedly infringing design to determine if the two are "virtually identical." Id. (citing Apple Computer, 35 F.3d at 1446-47).

2. Software and Copyright

These rules apply equally to software, Apple Computer, 35 F.3d at 1445 ("[G]raphical user interface audiovisual works are subject to the same process of analytical dissection as are other works."), though software tends to enjoy more limited copyright protection because of its functional nature. As Apple Computer suggests, "not all copyrighted works are entitled to the same level of protection": "[t]o the extent that a work is functional or factual it may be copied, as may those expressive elements of the work that must necessarily be used as incident to expression of the underlying ideas, functional concepts, or facts." Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1524 (9th Cir. 1992)(internal citation and quotation marks omitted). As a general rule, copyright protection does not apply to any "idea, procedure, process, system, method of operations . . . regardless of the form in which it is described, explained, illustrated, or embodied in such work." 17 U.S.C. § 102(b). Because computer programs can have creative elements but are also fundamentally functional, software tends to enjoy relatively weak protection and is subjected to a high standard for similarity before there will be infringement. Id. at 1524-26; see Sony, 203 F.3d at 603; Apple Computer, 35 F.3d at 1446 (computer programs entitled to "thin" protection).

For example, a plaintiff is not entitled to copyright protection for features such as calculators and other methods of operation. 17 U.S.C. § 102(b); see also Calyx Technologies, Inc. v. Ellie Mae, Inc., 2005 WL 2036918, *3 (N.D. Cal. August 22, 2005) (Illston, J.).*fn6 Similarly, common methods for organizing and depicting data are generally not protected. See Computer Access, 2001 WL 34118030 at *15. Moreover, to the extent the screen display merely includes a "blank form," the material is not entitled to protection. 37 C.F.R. § 202.1(c); Bibbero Sys., Inc. v. Colwell Sys., Inc., 893 F.2d 1104, 1107 (9th Cir. 1990). Under Bibbero, "the blank forms rule denies copyrightability to forms consisting entirely of spaces for the recording of information, whether labeled or unlabeled, that are not accompanied by text conveying information, such as instructions regarding the use of forms." Advanz Behavioral Mgmt. Res., Inc. v. Miraflor, 21 F. Supp. 2d 1179, 1189 (C.D. Cal. 1998).

B. Claims 1 through 5

With respect to the SAC's First through Fifth Claims, Defendants argue that there is no substantial similarity between the various Malvern works and the Wyatt works. In particular, Defendants focus on a lack of substantial similarity between protected elements because of the largely unprotected nature of much of the work.*fn7 Plaintiff's Opposition includes nearly no explanation; while some of Plaintiff's evidence supports access (which Defendants do not contest in this motion), almost none of it addresses substantial similarity, and Plaintiff provides no analysis connecting the evidence. The Court considers only the screen display basis for copyright infringement, not any source code similarities.*fn8

1. First Claim

The First Claim alleges infringement by Malvern's Dispersion Technology Software Version 5 ("DTS v.5") of Plaintiff's Dynamics v. 6.2.05 software ("Dynamics v.6"). Specifically, Plaintiff claims that Malvern has infringed Plaintiff's software in the following ways: (1) the DTS v.5 hydrodynamic diameter estimate software includes the same inputs and is calculated through the same models as the Dynamics v.6 and yield the same results, SAC Ex. 18 at 128-29; (2) infringement of the Dynamics v.6 Statistics Table because the operator can hide certain results, id. at 130-31; and (3) infringement of the Dynamics v.6 "units" menu because each displays a check mark next to the selected units, id. at 132-33.

a. Calculator

Wyatt complains that the calculator "incorporates substantially similar elements and produces substantially similar results." Ransom Decl., Ex. A at 10. The hydrodynamic radius calculator estimates the hydrodynamic radius of a molecule based on the molecule's weight and molecular family. Copyright Reply SUF ¶ 2. The calculator contains a blank form that allows the user to enter the required information. Id. The calculator then returns a hydrodynamic radius estimate based upon mathematical relationship between the data values that are derived from empirical data. Id. ¶¶ 2, 4. According to Defendants, the estimated diameter of a molecule is a function of well-known equations and the data necessary to create the equations can be found publicly. Mattison Decl. ¶ 10. Wyatt disagrees only in part: Wyatt agrees that the basic relationship is defined through a well-known equation, see Copyright SGI ¶ 36; Copyright Opp'n at 10, but represents that the calculations are based on a proprietary model, see Collins Decl. ¶ 8; Copyright Opp'n at 10. Plaintiff's calculator requires the user to enter four values ("DynaPro model," "Molecular Family," "Molecular Weight," and "Power") and provides two different results (estimated hydrodynamic radius and data about the requirements to run an experiment on that particular particle). Ransom Decl., Ex. B at 23. Defendants' software includes a single input (molecular weight) and returns four hydrodynamic diameter estimates as a result (one for each of the four "molecular families"). Id.

After analytical dissection, the Court finds that there is no substantial similarity between the screen displays of the two calculators. Plaintiff cannot protect the idea of the hydrodynamic radius calculator based on molecular weight. Additionally, Plaintiff cannot protect functions or elements that are indispensable to the idea of a hydrodynamic radius calculator. Defendants have submitted evidence that molecular weight is an indispensable input value and estimated hydrodynamic radius or diameter is an indispensable output value. Mattison Decl. ¶ 10.

Plaintiff's cited evidence does not address this issue. See Collins Decl. ¶¶ 8-9. A calculator is a method of operation that does not enjoy copyright protection. 17 U.S.C. § 102(b); Calyx Tech., 2005 WL 2036918 at *3. Moreover, to the extent the screen display is a "blank form," it is also generally not entitled to protection. 37 C.F.R. § 202.1; Bibbero, 893 F.2d at 1107-08. What remains is the arrangement of the screen display. There are limited ways to display the information the idea rests on conveying. Here, they are not "virtually identical," see Apple, 35 F.3d at 1442, 1449, as the forms ask for different information.*fn9

b. Statistics Table (Hiding/Showing Results, Units)

Plaintiff's "statistics table" allows the user to compare measurements. The interface allows the user to modify which data is visible and what units of measure are displayed. SAC, Ex. 18 at 130, 131. Malvern's software also allows a user to compare experiment data. The types of data included on Plaintiff's table are mean, standard deviation, and %S. Id. at 130. The idea for a table that allows the user to compare values generated by experiments is not protectable, nor are calculations such as means, standard deviations, and percentages, which are common mathematical formulas. Common ways of organizing and depicting data, such as a table view and an option to hide columns are common ways to display information. Cf. Apple, 35 F.3d at 1444. The Court agrees with Defendants that all of the similarities rest in these common data-display issues. To the extent Plaintiff argues that the drop-down "units" menu is substantially similar, the Court notes that the menu commands are not protected. See Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807, 815 (1st Cir. 1995).

2. Second Claim

In the Second Claim for Relief, Plaintiff alleges that Malvern's ZetaSizer Nano software infringes the copyright for the software program Dynamics v.6.3.40. Plaintiff specifically alleges that the "tree design" interface and the standard operating procedure features of the two works are substantially similar. SAC ¶¶ 86-87 & Ex. 19 at 134-35.

a. Tree Design

Plaintiff's software allows a user to specify the parameters for a given experiment. Copyright Reply SUF ¶ 8. The screen display is organized using a "tree design structure." Id. Once a user selects the information he or she wishes to view, that information appears on the right side of the screen. Id. Malvern's "SOP" or "standard operating procedure" interface allows a user to control the parameters for Zetasizer Nano experiments. Additionally, there appear to be some differences between the functionality of the two designs. See Mattison Decl. ¶¶ 14-17. Although Plaintiff attempts to dispute this fact, the purported evidence supporting a similarity in functionality is not presented in an admissible way. See Collins Decl. ¶¶ 15-18; Defs.' Evidentary Objections, ¶¶ 15-17 (pp. 10-13). In any event, the Court addresses the tree design structure without reference to the functionality behind them. See Sega, 977 F.2d at 1524.

To the extent Plaintiff alleges that Malvern's display infringes Plaintiff's copyright because it organizes information using a "tree design" interface, that organizational approach is common and flows from computer screen displays. Likewise, the idea and function of choosing actions to be included in an experiment cannot be protected. Aside from those similarities, the two displays convey different information. See SAC, Ex. 19 at 134. Although they have a similar look, the Court agrees that they are not similar enough to fall within the thin protection afforded to the display. Accordingly, the Court finds that there is no genuine issue as to substantial similarity.

b. SOP Player

Dynamics also includes a feature that allows a user to repeat the same action multiple times within an experiment. Copyright Reply SUF ¶ 11. The user can customize which actions will be performed during the experiment by selecting options from a list and clicking an "Add" or "Delete" button. Id. Like the DynaPro, Malvern's SOP player also allows a user to repeat an action multiple times within an experiment and to customize the experiment by selecting the options from a list. SAC, Ex. 19 at 135; Mattison Decl. ¶ 19.*fn10 Malvern's SOP Player selection menu includes icons, while Wyatt's is text-only. The programs have overlapping options, but are labeled differently, are not totally coextensive, and are sometimes in different locations. SAC, Ex. 19 at 135.*fn11

Methods for organizing information and commands are "methods of operation" that are both unprotected and common to software programs. Focusing on the "unique selection and arrangement of Malvern's screen display" likewise yields no substantial similarity, as the displays contain noticeable differences. For example, the Malvern "SOP Player" is styled as creating a "playlist" with icons, while the Wyatt DynaPro portrays a text-only command structure. Given the thin protection already afforded to Plaintiff's work, there can be no substantial similarity as a matter of law.

The Court therefore grants the Motion with respect to the screen displays ...

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