The opinion of the court was delivered by: Oliver W. Wanger United States District Judge
MEMORANDUM DECISION REGARDING DEFENDANT'S MOTION TO DISMISS
Plaintiff General Electric Company("Plaintiff") proceeds with an action against Defendant Thomas Wilkins ("Defendant"). On July 15, Defendant filed a motion to dismiss Plaintiff's complaint. (Doc. 26). Plaintiff filed opposition to the motion to dismiss on September 9, 2010. (Doc. 43). Defendant filed a reply on September 21, 2010. (Doc. 47).
Plaintiff is a developer of energy technologies and the holder of U.S. Patent Nos. 6,921,985 ("'985 Patent") and 6,924,565, ("the'565 patent"). (Complaint at 1-2). Plaintiff is currently asserting its rights in the '985 patent in ongoing actions against Mitsubishi Heavy Industries LTD, et al. ("MHI") in both the United States International Trade Commission and the U.S. District Court for the Southern District of Texas ("the Actions"). (Complaint at 2). MHI has employed Defendant as a consultant in the Actions and has relied upon Defendant's assertions to challenge Plaintiff's standing to bring the Actions as well as the enforceability of the '985 patent. (Complaint at 2).
Defendant is listed as one of seven inventors of the '565 patent and has asserted that he is an unnamed co-inventor of the '985 patent. (Complaint at 2). Defendant was employed as an electrical engineer by Enron Wind Corp. ("Enron") from approximately April 1998 to May 2002. (Complaint at 2). In May 2002, Plaintiff acquired the assets of Enron; at that time, Defendant became an employee of Plaintiff's at 13000 Jameson Rd., Tehachapi, California. (Complaint at 2). Defendant voluntarily resigned from Plaintiff's employ in December, 2002. (Complaint at 2).
Defendant's job responsibilities while employed by Enron and Plaintiff included the design, development, installation and testing of wind turbine generators. (Complaint at 4). In the course of his work, Defendant was expected to improve and innovate in the area of wind turbine generators. (Complaint at 4). Defendant was expressly hired by Enron and Plaintiff to invent such wind technology. (Complaint at 4).
As a condition of his employment with Enron, Defendant signed a Confidentiality and Inventions Agreement ("C&I Agreement"). (Complaint at 4). The C&I Agreement provided, inter alia, that Defendant agreed "upon the Company's request and without the need for further consideration, to execute any and all documents and take such actions which may be necessary in the Company's judgment to assign all rights to any Invention Idea to the Company and to obtain patent or other intellectual property protections for any Invention Idea." (Complaint at 4). Under the terms of the C&I Agreement, Defendant was obligated to assign any interest in the '985 and '565 patents to Plaintiff. (Complaint at 4).
Upon becoming an employee of Plaintiff, Defendant was required to execute Plaintiff's Employee Innovation and Proprietary Information Agreement ("EIPI Agreement"). (Complaint at 4). The EIPI Agreement provided, inter alia, that Defendant agreed "to disclose and assign to the Company (or as the Company may direct) as its exclusive property, all inventions, discoveries, innovations, improvements, trade secrets and technical or business information which [he] may solely or jointly develop, conceive, reduce to practice or author during the period of [his] employment." (Complaint at 4). Under the terms of the EIPI Agreement, Defendant was obligated to assign any interest in the '985 and '565 patents to Plaintiff. (Complaint at 4). Defendant was also required to sign an acknowledgment that he was required to comply with the policies described in the guide: "GE Policies. Integrity: The Spirit the Letter of our Commitment" ("GE Policy Guide"), which also specified Defendant's obligations with respect to the intellectual property in dispute. (Complaint at 5).
Plaintiff applied for the '565 patent after Defendant terminated his employment with Plaintiff. (Complaint at 3). Plaintiff requested that Defendant sign documents in the course of the prosecution of the application for the '565 patent, but Defendant refused. (Complaint at 3). Defendant has never signed an assignment expressly assigning the '565 patent to Plaintiff, despite Plaintiff's request that he do so. (Complaint at 3).
Dismissal under Rule 12(b)(6) is appropriate where the complaint lacks sufficient facts to support a cognizable legal theory. Balistreri v. Pacifica Police Dep't, 901 F.2d 696, 699 (9th Cir.1990). To sufficiently state a claim to relief and survive a 12(b) (6) motion, the pleading "does not need detailed factual allegations" but the "[f]actual allegations must be enough to raise a right to relief above the speculative level." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). Mere "labels and conclusions" or a "formulaic recitation of the elements of a cause of action will not do." Id. Rather, there must be "enough facts to state a claim to relief that is plausible on its face." Id. at 570. In other words, the "complaint must contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face." Ashcroft v. Iqbal, --- U.S. ----, ----, 129 S.Ct. 1937, 1949, 173 L.Ed.2d 868 (2009) (internal quotation marks omitted).
The Ninth Circuit has summarized the governing standard, in light of Twombly and Iqbal, as follows: "In sum, for a complaint to survive a motion to dismiss, the nonconclusory factual content, and reasonable inferences from that content, must be plausibly suggestive of a claim entitling the plaintiff to relief." Moss v. U.S. Secret Serv., 572 F.3d 962, 969 (9th Cir.2009) (internal quotation marks omitted). Apart from factual insufficiency, a complaint is also subject to dismissal under Rule 12(b)(6) where it lacks a cognizable legal theory, Balistreri, 901 F.2d at 699, or where the ...