The opinion of the court was delivered by: Ronald M. Whyte United States District Judgge
ORDER DENYING DEFENDANTS'
MOTION TO DISMISS PURSUANT TO
RULE 12(b)(6) [Re Docket No. 10]
Plaintiff Integrated Global Concepts, Inc. ("IGC") brings this action against defendants j2 Global, Inc. and Advanced Messaging Technologies, Inc. (collectively "j2") claiming that j2 21 breached the parties' Agreement of Understanding entered into on June 30, 2000, by filing a patent 22 infringement suit against IGC in the United States District Court for the Central District of 23
12(b)(6) of the Federal Rules of Civil Procedure. Mot., Dkt. No. 10. On October 26, 2012, the 25 court held a hearing to consider defendants' motion. Having considered the papers submitted by 26 the parties and the arguments of counsel, and for the reasons set forth below, the court finds that 27 the release provision in the Agreement of Understanding may be reasonably susceptible to California. Comp., Dkt. No. 1 ¶ 53. j2 now moves to dismiss all of IGC's claims under Rule 24 different interpretations, and, therefore, the action cannot be resolved on a motion to dismiss.
However, the court believes that the issue of whether j2's patent infringement action is barred can 3 be resolved following limited discovery and bifurcation of the contract interpretation issue for 4 early resolution by summary judgment or by trial. 7 offering fax-to-email services in 1997. Dkt. No. 1 ¶¶ 10, 11. In 1999, IGC entered into an 8 exclusive agreement with a company named eFax which called for IGC to operate eFax's fax-to-9 email service using IGC's "own systems, source code and intellectual property . ." Id. ¶¶ 17, 21-10
In 1997 and 1998, Jack Rieley and Jaye Muller, founders of j2,1 an IGC competitor, filed
12 patent applications that later became U.S. Patent Nos. 6,208,638 (the "'638 patent"), 6,597,688 13
Retrieval of Facsimile and Audio Messages Over a Circuit or Packet-Switched Network" and 15
13. j2 later filed a continuation application of the '688 patent that eventually became U.S. Patent 17
Around September 1998, j2 began negotiating the terms of a merger agreement with eFax, 19 unde which eFax would become a wholly owned subsidiary of j2. Id. ¶¶ 19, 27. During these 20 negotiations, j2 became aware of eFax's outstanding obligations to IGC which included a dispute 21 over payments for certain IGC services. Id. ¶¶ 28-30. To settle the dispute, j2, IGC, and eFax 22 entered into an agreement whereby eFax and j2 acquired from IGC a non-exclusive software 23 license and other services to implement the transfer of the eFax customer base from IGC's systems 24 to j2's. Id. ¶ 31. The relevant portions of these agreements were embodied in the Agreement of 25
Understanding ("Understanding"), dated June 30, 2000, among j2, eFax and IGC. Id. ¶ 32; Dkt. 26 1Some of these prior events actually involved j2's predecessor, JFAX. Because this distinction is not relevant to the present motion, the court will refer to both j2 and its predecessor 28 as "j2."
IGC, an Illinois corporation, entered the facsimile business in Chicago in 1993 and began 24. 11 (the "'688 patent"); these patents were titled "Method and Apparatus for Transmission and 14 "Scalable Architecture for Transmission of Messages Over a Network," respectively. Id. ¶¶ 12, 16 No. 7,020,132 (the "'132 patent"). Id. ¶ 14. No. 10 Ex. A at 22. The Understanding provides that it is governed by California law. Dkt. No. 2