Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Doda v. Waste Management, Inc.

United States District Court, D. Delaware

September 25, 2019

MARCO DODA, DODA USA, INC., and DODA COSTRUZIONE MACCHINE AGRICOLE, DI DODA ALDOEC. SNC, Plaintiffs,
v.
WASTE MANAGEMENT, INC., WM INTELLECTUAL PROPERTY HOLDINGS, LLC, WASTE MANAGEMENT NATIONAL SERVICES, INC., and JAMES L. DENSON, JR., Defendants.

          Brett D. Fallon, Mary B. Matterer, Morris James LLP, Wilmington, Delaware; Donald Chance Mark, Jr., Patrick J. Rooney, Tyler P. Brimmer, Fafinski, Mark & JOHNSON, P.A., Eden Prairie, Minnesota Counsel for Plaintiffs

          Karen Jacobs, Megan E. Dellinger, Morris, Nichols, Arsht & Tunnell LLP, Wilmington, Delaware; David M. Stein, H. Josh Ji, Greenberg Gross LLP, Costa Mesa, California Counsel for Defendants

          MEMORANDUM OPINION

          COLM F.CONNOLLY UNITED STATES DISTRICT JUDGE

         Plaintiffs Marco Doda ("Doda"), DODA USA, Inc., and DODA Costruzione Macchine Agricole, di Doda Aldo e C. snc have sued Defendants James L. Denson, Jr., Waste Management, Inc. ("WMI"), WM Intellectual Property Holdings, LLC ("WMIP"), and Waste Management National Services, Inc. ("WMNS"). This action concerns, among other things, United States Patent No. 8, 926, 841 (the "#841 patent"), which names Denson as the sole inventor and WMNS as the assignee. The #841 patent was issued by the United States Patent and Trademark Office ("PTO") on January 6, 2015. According to Plaintiffs' first amended complaint, WMNS assigned its interest in the patent to WMI on January 8, 2015; and WMI then assigned its interest in the patent to WMIP on January 15, 2018. D.I. 22, ¶¶ 83-84.

         Three of the counts alleged in the first amended complaint are the subject of Defendants' motion to dismiss pending before me: Count I, in which Plaintiffs seek correction of the inventorship designation on the #841 patent pursuant to 35 U.S.C. § 256; Count IV, in which Plaintiffs seek a declaration that the #841 patent is invalid because Denson did not invent the subject matter claimed in the patent; and Count V, in which Plaintiffs seek a declaration that the #841 patent is unenforceable for inequitable conduct because Denson falsely represented to the PTO that he was the sole inventor of the subject matter claimed by the patent.[1]

         Defendants have moved to dismiss Count I pursuant to Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim upon which relief can be granted insofar as Count I is alleged against WMI and WMNS. Defendants have moved to dismiss Counts IV and V in their entirety pursuant to Rule 12(b)(1) for lack of subject matter jurisdiction and, alternatively, pursuant to Rule 12(b)(6) for failure to state a legally cognizable claim.

         I. BACKGROUND[2]

         Plaintiffs and Defendants do business together. D.I. 22, ¶ 94. Through their business dealings, Defendants learned proprietary information about Plaintiffs' organic waste processing system. Id. ¶ 52. Defendants then used Plaintiffs' proprietary information to obtain the #841 patent. Id. ¶¶ 53-63. Although Doda invented at least some of the patented subject matter, Denson did not disclose to the PTO Doda's inventive role and consequently the #841 patent names Denson as the sole inventor. Id. WMIP currently owns the #841 patent, but WMNS and WMI each owned it previously. Id. ¶¶ 83-84. Defendants continue to benefit economically and reputationally from the #841 patent and by misusing Plaintiffs' proprietary information. Id. ¶ 96.

         II. DISCUSSION

         A. Whether Plaintiffs Have Stated a Claim Against WMI and WMNS for Correction of Inventorship

         1. Legal Standards

         a. Motions to Dismiss under Rule 12(b)(6)

         To state a claim upon which relief can be granted, a complaint must contain "a short and plain statement of the claim showing that the pleader is entitled to relief." Fed.R.Civ.P. 8(a)(2). Detailed factual allegations are not required, but the complaint must set forth sufficient factual matter, accepted as true, to "state a claim to relief that is plausible on its face." Bell Ail. Corp. v. Twombly,550 U.S. 544, 570 (2007). A claim is facially plausible when the factual content allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged. Ashcroft v. Iqbal,556 U.S. 662, 678 (2009). When considering Rule 12(b)(6) motions to ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.