PEREGRINE SEMICONDUCTOR CORPORATION, a Delaware corporation, Plaintiff-Counterdefendant,
RF MICRO DEVICES, INC., a North Carolina corporation, Defendant-Counterclaimant. PEREGRINE SEMICONDUCTOR CORPORATION, a Delaware corporation, Plaintiff,
ROBERT BENTON, an individual, Defendant. And Related Case
ORDER DENYING PEREGRINE'S MOTION FOR PRELIMINARY INJUNCTION [Doc. No. 99.]
MARILYN L. HUFF, District Judge.
On November 25, 2013, Plaintiff Peregrine Semiconductor Corporation ("Peregrine") filed a motion for preliminary injunction against Defendants. (Doc. No. 99.) On December 13, 2013, Defendant RF Micro Devices, Inc. ("RFMD") filed its opposition to Peregrine's motion for preliminary injunction. (Doc. No. 113.) On December 20, 2013, Peregrine filed its reply. (Doc. No. 126.) On January 6, 2014, the Court, pursuant to its discretion under Local Rule 7.1(d)(1), submitted the motion on the parties' papers. The Court denies Peregrine's motion.
On April 13, 2012, Peregrine filed the present action against RFMD alleging infringement of U.S. Patent No. 7, 910, 993 ("the 993 Patent"), U.S. Patent No. 7, 123, 898 ("the 898 Patent"), U.S. Patent No. 7, 460, 852 ("the 852 Patent"), U.S. Patent No. 7, 796, 969 ("the 969 Patent"), and U.S. Patent No. 7, 860, 499 ("the 499 Patent"). (Doc. No. 1.) Peregrine's complaint accuses RFMD of marketing and selling integrated circuits that infringe on these patents. (Id.)
On November 21, 2013, Peregrine filed a first amended complaint, adding Robert Benton ("Benton") as a defendant. (Doc. No. 97, "FAC".) Benton worked as a Senior RF Design Engineer in Peregrine's Campbell, California office from April, 1994 to December, 1997. (Doc. No. 99-5 "Reedy Decl." ¶ 4; Doc. No. 113-1 "Benton Decl." ¶ 1.) While at Peregrine, Benton used his own equipment and tools to conduct his work, and took his equipment and tools with him when left Peregrine. (Benton Decl. ¶ 8.)
To state a valid patent infringement claim, all inventors must be listed on the patent. See 35 U.S.C. § 256. Peregrine concedes that Benton should have been named as an inventor on U.S. Patent No. 6, 804, 502 ("the 502 patent") and the subsequent patents-in-suit including the 993 patent, the 898 patent, the 852 patent, the 969 patent, and the 499 patent (collectively, "the 502 family of patents"). (FAC ¶ 20.) In August, 2012, Dr. Ronald Reedy ("Reedy"), co-Founder and Chief Technology Officer of Peregrine, contacted Benton to discuss his contribution to the 502 family of patents. (Reedy Decl. ¶ 27; Benton Decl. ¶ 13.) In March, 2013, Reedy informed Benton that Peregrine wished to name him as an inventor of the 502 family of patents. (Reedy Decl. ¶ 28; Benton Decl. ¶ 17.) However, Benton declined to assign his rights in the 502 family of patents to Peregrine. (Reedy Decl. ¶ 37.) Instead, in September, 2013, Benton transferred his right, title, and interest in the 502 family of patents to RFMD via an assignment agreement. (Reedy Decl. ¶ 40; Benton Decl. ¶ 20.)
On November 25, 2013, Peregrine filed a motion for a preliminary injunction, seeking to enjoin RFMD from engaging in any transfer, licensing, or proceedings before the Patent Office related to Benton's transfer of rights. (Doc. No. 99.)
I. Legal Standard for Preliminary Injunction
Pursuant to Rule 65 of the Federal Rules of Civil Procedure, a court may grant preliminary injunctive relief in order to prevent irreparable injury. Fed.R.Civ.P. 65(a). A party seeking a preliminary injunction must establish (1) that he is likely to succeed on the merits, (2) that he is likely to suffer irreparable harm in the absence of preliminary relief, (3) that the balance of equities tips in his favor, and (4) that an injunction is in the public interest. Winter v. Natural Res. Def. Council, Inc. , 555 U.S. 7, 20 (2008). A preliminary injunction is "an extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is entitled to such relief." Winter , 555 U.S. at 22.
II. Likelihood of Success on the Merits
Peregrine puts forward two theories to argue that Benton's assignment of rights to RFMD was invalid. First, Peregrine argues that Benton was obligated to assign his inventorship rights to Peregrine pursuant to a written Employment and Assignment agreement. Second, Peregrine argues that the inventions developed by Benton during his time at Peregrine belong to Peregrine under the common law hired to invent doctrine and California Labor Code § 2860.
A. Benton's Purported Contractual Obligation to Assign Inventorship Rights to Peregrine
A patent owner who seeks to assign his interest in the patent must do so in writing. 35 U.S.C. § 261; Sky Techs. LLC v. SAP AG , 576 F.3d 1374, 1380 (Fed. Cir. 2009) (citing Akazawa v. Link New Tech. Int'l, Inc. , 520 F.3d 1354, 1357 (Fed. Cir. 2008)). Peregrine admits that it does not have any documentation of an ...