Order Denying Defendants' Motion to Dismiss and Anti-SLAPP Motion to Strike, Sonus Networks, Inc. v. Inventegry, Inc., C-15-0322 EMC (Judge Edward Chen)
Patent licensing company Inventegry, Inc. recently suffered some setbacks when Judge Edward M. Chen denied its motion to dismiss and Anti-SLAPP motion to strike several claims that plaintiff Sonus brought as part of its declaratory judgment action.
As background, Sonus, the provider of Session Initiation Protocol communications equipment, sued Inventegry earlier this year, alleging that it tried to pressure Sonus into a $24 million patent license for patents Inventegry had recently purchased from Huawei Technologies Co. Sonus alleges, among other things, that Inventegry—over a two-year period—contacted Sonus's executives "demand[ing] that Sonus pay Inventegry" in exchange for a license. Sonus asserted claims for declaratory relief of non-infringement of seven Inventegry patents, unfair competition (UCL), Civil RICO violations, and breach of contract. Inventegry moved to dismiss Sonus's claims for declaratory judgment and breach of contract. Inventegry also moved to strike Sonus's UCL and Civil RICO claims under California's Anti-SLAPP statutes. Inventegry was unsuccessful on both motions.
As for its motion to dismiss Sonus's declaratory judgment claim, Judge Chen found Sonus had sufficiently pled an actual controversy sufficient for declaratory judgment, relying, in part, on the "voluminous" pre-litigation correspondence between the parties relating to Inventegry's patent infringement allegations. Judge Chen also concluded Sonus had sufficiently pled a claim for breach of contract.
As for Inventegry's Anti-SLAPP motion, Judge Chen rejected Inventegry's Noerr-Pennington arguments that its pre-suit infringement allegations were protected speech that could not form the basis of a claim. In so holding, Judge Chen reasoned that Sonus had sufficiently pled that Inventegry's pre-suit infringement allegations were objectively and subjectively meritless—i.e., a sham—and as such, not protected under Noerr-Pennington. The final proverbial "nail in the coffin" for Inventegry was Judge Chen's refusal to transfer the case to the District of Massachusetts, reasoning that Sonus filed first in the Northern District of California, Inventegry's home district.
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