United States District Court, W.D. Washington, Seattle
ORDER ON MOTION TO DISMISS
JAMES L. ROBART, District Judge.
This matter comes before the court on Defendant's motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(1) for lack of subject matter jurisdiction. (Mot. (Dkt. # 40).) Having considered the submissions of the parties, the balance of the record, the relevant law, and having heard oral argument, the court DENIES Defendant's motion. The court, however, court declines to exercises supplemental jurisdiction over Plaintiffs' state law claims, and therefore DISMISSES these claims without prejudice. The court also STRIKES the pending discovery motions and motion for a preliminary injunction without prejudice to re-filing.
Plaintiffs Intermec, Inc. and Intermec Technologies Corporation (collectively "Intermec") are leading providers of barcode-reading technologies. (Am. Compl. (Dkt. # 14) ¶¶ 15-16.) Intermec employed Defendant Dr. Paul Maltseff in various positions, including software engineer, technologist, and intellectual property counsel, from 1994 through 2013. ( Id. ¶¶ 24-26.) In these roles, Dr. Maltseff's duties included prosecuting patent applications, directing Intermec's overall strategic intellectual property plan, and inventing barcode-reading and radio frequency identification ("RFID") applications. ( Id. ) Plaintiffs allege that, as a result, Dr. Maltseff now possesses a substantial volume of trade secret and confidential information regarding Intermec's technology development, patent portfolio, intellectual property strategy, and patent protection strategy. ( Id. ¶¶ 2, 28.)
Intermec was purchased by Plaintiff Honeywell International Inc. ("Honeywell") in September 2013. ( Id. ¶ 27.) Shortly thereafter, Dr. Maltseff left Honeywell and accepted the position of Chief U.S. Intellectual Property Counsel at Datalogic, a primary competitor to Honeywell in the barcode-reading technology sector. ( Id. ¶¶ 5, 49.) Dr. Maltseff has already appeared on a Datalogic customer number before the United States Patent and Trademark Office ("USPTO"). ( Id. ¶ 12.) Fearing that Dr. Maltseff, in his new employment, will disclose confidential information regarding Intermec's technology, Honeywell filed this suit. ( Id. ¶ 26.)
Honeywell's first complaint, which proceeded under diversity jurisdiction, alleged two claims under Washington state law: (1) misappropriation of trade secrets and (2) breach of contract. ( See generally Compl. (Dkt. # 1).) When Honeywell amended its complaint to add Intermec, a non-diverse party, Honeywell also added a third claim: (3) a request for a declaratory judgment that Dr. Maltseff's conduct violates certain USPTO regulations. (Am. Compl. ¶¶ 69-75.)
For this third claim, Plaintiffs rely on the USPTO Rules of Professional Conduct, which establish a duty of confidentiality for patent practitioners. ( Id. ¶ 80.) Under the Rules, "[a] practitioner who has formerly represented a client in a matter shall not thereafter represent another person in the same or a substantially related matter in which that person's interests are materially adverse to the interests of the former client...." 37 C.F.R. § 11.109(a); ( see also Am. Compl. ¶ 80). Similarly, a practitioner who has formerly represented a client in a matter "shall not thereafter use information relating to the representation to the disadvantage of the former client...." 37 C.F.R. § 11.109(c).
Patent Rule 56, however, also establishes a duty of disclosure, providing:
Each individual associated with the filing and prosecution of a patent application has a... duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.
37 C.F.R. § 1.56; ( see also Am. Compl. ¶¶ 70-74). Plaintiffs contend that because Patent Rule 56 requires disclosure of all information material to patentability, Dr. Maltseff must be walled off from Datalogic patent applications for which he possesses material confidential Honeywell information in order to avoid violating his duty of confidentiality to Plaintiffs. (Am. Compl. ¶¶ 81-83.)
Shortly after filing their amended complaint, Plaintiffs filed a motion for a preliminary injunction (Dkt. # 17) and a motion for expedited discovery (Dkt. # 25). Dr. Maltseff responded with two motions for expedited discovery (Dkt. ## 37, 41) and indicated that he intended to file a motion to dismiss for lack of subject matter jurisdiction. In light of the time-sensitive nature of Plaintiffs' claims, the court set an abbreviated schedule for briefing on the motion to dismiss. (Min. Order (Dkt. # 38).) This motion is now before the court.
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