United States District Court, S.D. Texas, Houston Division
MEMORANDUM AND ORDER
F. ATLAS SENIOR UNITED STATES DISTRICT JUDGE.
patent inventorship case is before the Court on the Motion to
Dismiss [Doc. # 30] filed by Plaintiff/Counterclaim Defendant
Ringers Technologies LLC (“Ringers”), seeking
dismissal of Counts XVI and XVIII of Defendant/Counterclaim
Plaintiff George Harmer's Second Amended Counterclaims.
Harmer filed a Response [Doc. # 33], and Ringers filed a
Reply [Doc. # 34]. Having reviewed the record and applicable
legal authorities, the Court denies the
Motion to Dismiss.
is a safety manager for an oil well servicing company. He
alleges that he is “experienced and knowledgeable with
respect to hazards and safety considerations relevant to the
protection of and injury avoidance to the hands of
individuals working in the oil field.” See
Second Amended Counterclaims (“Counterclaim”)
[Doc. # 19], ¶ 8.
alleges that in 2013 he developed a new glove design that
reduced the risk of hand injury. See id., ¶ 9.
Harmer alleges that in May 2014, he met with Ringers'
National Accounts Manager regarding Harmer's new glove.
See id., ¶ 11. Harmer alleges that Ringers
subsequently represented to third parties that it was working
with Harmer to develop a new glove. See id., ¶
alleges that, later in May 2014, Jim Bailey, the President of
Ringers, corresponded with Harmer expressing an interest in
Harmer's glove design. See id., ¶ 13.
Harmer and Ringers executed a Non-Disclosure Agreement
(“NDA”) on July 2, 2014. Thereafter, Harmer and
Hardy Lim, Ringers' Research and Development Director,
corresponded regarding Harmer's glove design. See
id., ¶ 15.
alleges that on August 8, 2014, Lim offered to fly Harmer to
Texas for an in-person meeting regarding Harmer's glove
design, and asked Harmer to bring “all documentations,
drawings, prototypes, etc.” that were relevant to the
glove design so they could “review and discuss
everything in detail.” See id., ¶ 16.
Harmer traveled to Texas and met with Lim for several hours
on August 21, 2014. See id., ¶ 17. Harmer
alleges that during the meeting, he “contributed his
glove design knowledge, research, and ideas to help develop a
redesigned glove for Ringers.” Id., ¶ 18.
Harmer alleges that Bailey “informed Harmer that
Ringers would compensate Harmer if Ringers went forward with
Harmer's glove design contributions provided during the
development meeting between Harmer and Lim.”
Id., ¶ 19.
September 2014, Lim informed Harmer that Ringers would not
pursue the glove design developed during the August 2014
meeting between Lim and Harmer. See id., ¶ 20.
alleges that in early 2018, however, he “discovered
that Ringers had released a new, modified glove design: the
075 R-Chem Impact glove” that includes one or more of
the ideas that Harmer provided to Ringers during the August
2014 meeting. See id., ¶¶ 21-22. Harmer
later discovered that Ringers had applied for and obtained
patents, listing Lim as the sole inventor, for gloves that
Harmer alleges are based on the ideas he provided to Ringers.
See id., ¶ 25, ¶ 27.
asserts an inequitable conduct counterclaim (Claim XVI) based
on Ringers failing to identify Harmer as an inventor on the
patent applications. Harmer also asserts a fraud counterclaim
(Claim XVIII) based on Ringers misrepresenting its interest
in working with Harmer in order to induce Harmer to disclose
to Ringers his knowledge, research, and ideas in connection
with the new glove design. Ringers has moved to dismiss these
two counterclaims. The Motion to Dismiss has been fully
briefed and is ripe for decision.
STANDARD FOR MOTION TO DISMISS
motion to dismiss under Rule 12(b)(6) of the Federal Rules of
Civil Procedure is viewed with disfavor and is rarely
granted. See Turner v. Pleasant, 663 F.3d 770, 775
(5th Cir. 2011) (citing Harrington v. State Farm Fire
& Cas. Co., 563 F.3d 141, 147 (5th Cir. 2009)). The
complaint must be liberally construed in favor of the
plaintiff, and all facts pleaded in the complaint must be
taken as true. See Harrington, 563 F.3d at 147. The
complaint must, however, contain sufficient factual
allegations, as opposed to legal conclusions, to state a
claim for relief that is “plausible on its face.”
See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009);
Patrick v. Wal-Mart, Inc., 681 F.3d 614, 617 (5th
Cir. 2012). When there are well-pleaded factual allegations,
a court should presume they are true, even if doubtful, and
then determine whether they plausibly give rise to an
entitlement to relief. Iqbal, 556 U.S. at 679. Rule
8 “generally requires only a plausible ‘short and
plain' statement of the plaintiff's claim, not an
exposition of his legal argument.” Skinner v.
Switzer, 562 U.S. 521, 530 (2011).
alleging fraud or mistake, a party must state with
particularity the circumstances constituting fraud or
mistake.” Fed.R.Civ.P. 9(b); see Leatherman v.
Tarrant Cty. Narcotics Intelligence Unit, 507 U.S. 163,
168-69 (1993); Hart v. Bayer Corp., 199 F.3d 239,
247 n.6 (5th Cir. 2000). To satisfy the particularity
requirement of Rule 9(b), a plaintiff must “identify
the time, place, and contents of the false representations,
as well as the identity of the person making the
misrepresentation and what that person obtained
thereby.” Employees' Ret. Sys. v. Whole Foods
Mkt., Inc., 905 F.3d 892, 899 (5th Cir. 2018) (internal
quotations and citation omitted). Although fraud must be
alleged with particularity, it “may be pleaded without
long or highly detailed particularity.” Guidry v.
United States Tobacco Co., 188 F.3d 619, 632 (5th Cir.
1999); Khan v. Wells Fargo Bank, N.A., 2014 WL
200492, *7 (S.D. Tex. Jan. 17, 2014).