Case 2:14-cv-00111-AJS Document 229 Filed 03/24/15 Page 1 of 5
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
`DRONE TECHNOLOGIES, INC.,
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`Plaintiff,
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`14cv0111
`ELECTRONICALLY FILED
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`v.
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`PARROT S.A., PARROT, INC.,
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`Defendants.
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`
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`MEMORANDUM ORDER OF COURT RE: DEFENDANTS’ MOTION TO DISMISS
`FOR LACK OF STANDING (DOC. NO. 172)
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`I. Introduction
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`Presently before this Court is a Motion to Dismiss for Lack of Standing filed by
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`Defendants, in which Defendants move this Court to dismiss the Complaint and vacate the Order
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`of Default Judgment because of Plaintiff’s purported lack of standing. Doc. No. 172.
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`Specifically, Defendants contend that the patents-in-suit are rightfully owned by a non-party
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`Taiwanese company because the technology at issue was invented by the named inventor’s
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`husband while he was employed by the company. Defendants previously raised a similar
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`argument in a Motion for Leave to File First Amended Answer and Counterclaims in October
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`2014 and a Motion for Leave to File Affirmative Defense to Plaintiff’s Damages Claims and
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`Request for Equitable Relief Based Upon Unclean Hands in February 2015. Doc. Nos. 97 and
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`188. Defendants’ Motions were denied as moot on November 3, 2014, when this Court entered
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`default judgment against Defendants as to liability, and denied in a March 2, 2015 Memorandum
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`Order, respectively. Plaintiff wholly opposes Defendants’ current Motion to Dismiss for Lack of
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`Standing. Doc. No. 217.
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
`DRONE TECHNOLOGIES, INC.,
`
`
`
`
`Plaintiff,
`
`
`
`14cv0111
`ELECTRONICALLY FILED
`
`
`
`
`
`v.
`
`
`
`
`PARROT S.A., PARROT, INC.,
`
`
`Defendants.
`
`
`
`MEMORANDUM ORDER OF COURT RE: DEFENDANTS’ MOTION TO DISMISS
`FOR LACK OF STANDING (DOC. NO. 172)
`
`I. Introduction
`
`Presently before this Court is a Motion to Dismiss for Lack of Standing filed by
`
`Defendants, in which Defendants move this Court to dismiss the Complaint and vacate the Order
`
`of Default Judgment because of Plaintiff’s purported lack of standing. Doc. No. 172.
`
`Specifically, Defendants contend that the patents-in-suit are rightfully owned by a non-party
`
`Taiwanese company because the technology at issue was invented by the named inventor’s
`
`husband while he was employed by the company. Defendants previously raised a similar
`
`argument in a Motion for Leave to File First Amended Answer and Counterclaims in October
`
`2014 and a Motion for Leave to File Affirmative Defense to Plaintiff’s Damages Claims and
`
`Request for Equitable Relief Based Upon Unclean Hands in February 2015. Doc. Nos. 97 and
`
`188. Defendants’ Motions were denied as moot on November 3, 2014, when this Court entered
`
`default judgment against Defendants as to liability, and denied in a March 2, 2015 Memorandum
`
`Order, respectively. Plaintiff wholly opposes Defendants’ current Motion to Dismiss for Lack of
`
`Standing. Doc. No. 217.
`
`
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`Case 2:14-cv-00111-AJS Document 229 Filed 03/24/15 Page 2 of 5
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`The matter is ripe for disposition. After consideration of the relevant filings, Defendants’
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`Motion will be DENIED for the following reasons.
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`II. Standard of Review
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`Defendants’ Motion is filed pursuant to Federal Rules of Civil Procedure 12(b)(1) and
`(b)(7).
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`A. Rule 12(b)(1)
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`A Motion to Dismiss pursuant to Fed. R. Civ. P. 12(b)(1) challenges this Court’s subject-
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`matter jurisdiction and its power to hear the case. A court may exercise jurisdiction only if a
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`plaintiff has standing to sue on the date it files suit. Abraxis Bioscience, Inc. v. Navinta LLC,
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`625 F.3d 1359 (Fed. Cir. 2010), quoting Keene Corp. v. United States, 508 U.S. 200, 207 (1993).
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`A plaintiff may assert standing in a patent infringement action where the plaintiff demonstrates
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`“that it held enforceable title to the patent at the inception of the lawsuit.” Id., quoting Paradise
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`Creations, Inc. v. UV Sales, Inc., 315 F.3d 1304, 1309-310 (Fed. Cir. 2003).
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`B. Rule 12(b)(7)
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`Rule 12(b)(7) permits a party to move a court to dismiss a case for failure to join a party
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`under Rule 19, which, in its most basic terms, provides that persons subject to service of process
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`and whose joinder would not deprive the court of subject matter must be joined as a party if: (1)
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`the court cannot accord complete relief amongst the existing parties without the joinder; or (2)
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`the person claims an interest in the matter. Fed.R.Civ.P. 19(a)(1)(A)-(B).
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`2
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`Case 2:14-cv-00111-AJS Document 229 Filed 03/24/15 Page 3 of 5
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`III. Discussion
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`Defendants’ requested relief is premised on the following allegations:
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` Diane Lee is not the sole inventor of the patented inventions;
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` Bruce Ding was the inventor or co-inventor of the inventions;
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`the inventions of the patents-in-suit were invented while Ding was employed
`by his former Taiwanese employer;
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`the inventions “relate to the actual or anticipated business of [the former
`employer], or result from, or are suggested by” the work suggested by Ding’s
`work;
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` Ding could not transfer ownership to Drone because his former employer is
`the rightful owner of the patents-in-suit by assignment from Ding; and
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` Drone is not the sole owner of the patents-in-suit
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`The key issue before the Court is whether Drone had standing to sue under Article III of
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`the Constitution at the time Drone filed suit because Lee was the sole inventor and owner, and
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`therefore, she permissibly transferred her patents to Drone. Paradise, 315 F.3d at 1308 (Fed.Cir.
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`2003). If Lee was the sole inventor, then it is not necessary to address the remainder of
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`Defendants’ arguments.
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`Defendants point to the following to demonstrate that Lee is not the sole inventor of the
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`patents-in suit:
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` Lee is not an engineer and has not had any meaningful technical training;
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` Lee stated during her deposition that she does not understand the technology or
`disclosures of her patents and she did not write any of her credited inventions;
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` Ding is an engineer;
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` Ding suggested the use of microchip accelerometers and magnetometers for a
`remote controller;
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` Ding had access to these materials through his employment;
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`3
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`Case 2:14-cv-00111-AJS Document 229 Filed 03/24/15 Page 4 of 5
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` Ding was untruthful about this past employment during depositions; and
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` Ding has drafted and filed at least twelve patent applications on Lee’s behalf and
`manages the business of this patent portfolio
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`Defendants concede that Lee is presumed to be the sole inventor because she is the only
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`inventor named on the face of the patents-in-suit. Doc. No. 172, 15; See Acromed Corp. v.
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`Sofamor Danek Group, Inc., 253 F.3d 1371, 1379 (Fed. Cir. 2001), citing 35 U.S.C. § 282.
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`However, Defendants argue that “there can be no reasonable dispute” that her husband, Ding,
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`was “at the very least” a co-inventor. Doc. No. 173, 16.
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`Invention within the Courts is founded upon conception, the test for which is “whether
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`the inventor had an idea that was definite and permanent enough that one skilled in the art could
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`understand the invention; the inventor must prove his conception by corroborating evidence,
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`preferably by showing a contemporaneous disclosure.” Burroughs Wellcome Co. v. Barr Lab.,
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`Inc., 40 F.3d 1223, 1227-28 (Fed. Cir. 1994). The idea should be “specific” and “settled,” rather
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`than a “general goal or research plan.” Id. at 1228, citing Fiers v. Revel, 984 F.2d 1164, 1169
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`(Fed. Cir. 1993); Amgen Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1206 (Fed. Cir.
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`1991).
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`The Court agrees with Plaintiff that Defendants’ present arguments are re-styled versions
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`of previously unsuccessful invalidity defenses and perhaps are another attempt to stall the
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`upcoming damages trial, but the Court has evaluated Defendants’ standing arguments
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`independently of these prior positions. Defendants’ selected portions of the record, some of
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`which are allegations of fraud and lies and are not related to the technologies at issue, do not
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`demonstrate that Ding is at least a co-inventor of the technology at issue, or that his former
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`employer is the rightful owner of the technology. After a review of the applicable documents,
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`4
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`Case 2:14-cv-00111-AJS Document 229 Filed 03/24/15 Page 5 of 5
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`the Court finds that Plaintiff’s contention that Lee is the properly named inventor of the patents-
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`in-suit is sufficiently supported by the record. As such, Plaintiff had proper standing at the time
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`the Complaint was filed and continues to be the appropriately named Plaintiff for the upcoming
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`damages trial. Therefore, Defendants’ Motion to Dismiss for lack of standing fails and must be
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`denied.
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`IV. Conclusion/Order
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`AND NOW, this 24th day of March, 2015, IT IS HEREBY ORDERED THAT
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`Defendants’ Motion to Dismiss for Lack of Standing (Doc. No. 172), including a request for a
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`hearing pursuant to Federal Rule of Civil Procedure 12(i), is DENIED.
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`The case will proceed to jury trial, beginning on April 27, 2015, according to the
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`previously ordered schedule. Doc. Nos. 126 and 127.
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`s/ Arthur J. Schwab
`Arthur J. Schwab
`United States District Judge
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`cc:
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`All Registered ECF Counsel and Parties
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`5
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