International Medical Devices, Inc. v. Robert Cornell

• Court: District Court, C.D. California
• Decided: March 28, 2024
• Docket: 2:20-cv-03503
• Status: Unknown

Opinion

1 O 2 3

7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10

11 INTERNATIONAL MEDICAL Case No.: 2:20-cv-03503-CBM (RAOx) DEVICES, INC.; et al., 12 ORDER RE: PLAINTIFFS’ Plaintiffs, 13 v. MOTION FOR INJUNCTIVE RELIEF AND PATENT 14 ROBERT CORNELL, MD, an INVALIDATION [669] individual; et al., 15 Defendants. 16

17 18 The matter before the Court is Plaintiffs’ Motion for Injunctive Relief and 19 Patent Invalidation. (Dkt. No. 669 (the “Motion”).) The matter is fully briefed. 20 (Dkt. Nos. 672, 678.)1 21 I. BACKGROUND 22 A. The Complaint 23 On April 15, 2020, Plaintiffs International Medical Devices, Inc. (“IMD”), 24 Menova International, Inc. (“Menova”) and James Elist, MD (“Dr. Elist”) 25

26 1 Defendants’ Motion to Dissolve the Preliminary Injunction (Dkt. No. 666) is also 27 pending. The ruling of this Motion will render Defendants’ Motion moot. Accordingly, the Court DENIES Defendants’ Motion to Dissolve the Preliminary 28 1 (collectively, “Plaintiffs”) brought this trademark infringement suit against 2 Defendants Robert Cornell, MD; Robert J. Cornell M.D., P.A.; Augmenta, LLC; 3 AM Founders, LLC; Augmenta Investors, LLC; Jonathan Clavell Hernandez, MD; 4 Clavell Urology, PLLC; OAM LLC; Cornell Cosmetic Urology, LLC; David 5 Louis Nichols; Huck Medical Technologies, Inc.; Hans Mische; Hans Mische, 6 LLC; Run Wang, MD; RW Global Men’s Health Consulting Services, PLLC; 7 Capital Urology Associates, LLC; Richard B. Finger; and LATA Lignum LLC 8 (collectively the “Defendants”). The First Amended Complaint (“FAC”) asserts 9 the following claims: (1) Misappropriation of Trade Secrets under Defend Trade 10 Secrets Act (“DTSA”), 18 U.S.C. §§ 1836 et seq. (against all Defendants); (2) 11 Misappropriation of Trade Secrets under Cal. Uniform Trade Secrets Act 12 (“CUTSA”), Cal. Civ. Code §§ 3426 et seq. (against all Defendants); (3) RICO 13 under 18 U.S.C. § 1962(c) (against all Defendants); (4) RICO under 18 U.S.C. § 14 1962(d) (against all Defendants); (5) Trademark Infringement under 15 U.S.C. §§ 15 1114, 1125(a) (against. Dr. Cornell, the Cornell PA, Dr. Clavell, and the Clavell 16 PA); (6) Counterfeit Mark under 15 U.S.C. § 1117 (against Dr. Cornell, the 17 Cornell PA, Dr. Clavell, and the Clavell PA); (7) Copyright Infringement under 17 18 U.S.C. § 501 (against Drs. Cornell, Mische, and Nichols); (8) Breach of Contract 19 (against Dr. Cornell and Dr. Wang); (9) Breach of Contract (against Dr. Wang); 20 (10) Breach of Covenant of Good Faith and Fair Dealing (against Dr. Cornell and 21 Dr. Wang); (11) Violation of California’s Unfair Competition Law (“UCL”), Cal. 22 Bus. & Prof. Code § 17200 (against all Defendants); (12) Declaratory Relief 23 (against all Defendants); (13) False Advertising under 15 U.S.C. § 1125(a) 24 (against Dr. Cornell and Augmenta, LLC). (Dkt. No. 96.) 25 B. The Preliminary Injunction 26 On January 1, 2021, the Court issued a preliminary injunction precluding 27 Defendants from: (1) using or disclosing Plaintiffs’ trade secret information; (2) 28 commercializing, marketing, advertising, promoting, offering for sale, and/or 1 profiting from the Augmenta implant, U.S. Patent No. 10413413 (“’413 Patent”), 2 and Patent Application No. 16/238,821 (“’821 Application”); (3) referencing, 3 mentioning, promoting, advertising, marketing and/or using the Penuma mark in 4 commerce; and (4) acting in a way likely to cause confusion, mistake, or 5 deception on the part of consumers as to the origin or sponsorship of Penuma. 6 (Dkt. No. 138.) The injunction remains in full force and effect. (Id.) 7 On November 1, 2022, the Court issued an Order re Plaintiffs’ Ex Parte 8 Request for an Order to Show Cause Why Defendants Should Not Be Held in 9 Civil Contempt. (Dkt. No. 530.) The Court held Defendants in civil contempt for 10 violating the Court’s Preliminary Injunction and granting Plaintiffs leave to file a 11 Motion for Attorneys’ Fees to recover the attorneys’ fees and costs incurred for 12 litigating the Motion for Contempt. (Id.) The Court subsequently granted 13 Plaintiffs’ Motion for attorneys’ fees in the amount of $94,222.29. (Dkt. No. 14 572.) 15 C. Summary Adjudication 16 On September 14, 2021, Plaintiffs filed a motion for summary adjudication 17 on their trademark (Fifth Cause of Action), counterfeit (Sixth Cause of Action), 18 copyright (seventh cause of action), breach of contract (Eighth and Ninth Causes 19 of Action), and good faith and fair dealing claims (Tenth Cause of Action). (Dkt. 20 No. 254.) The Court granted Plaintiffs’ Motion as to the copyright infringement 21 cause of action against Defendants Cornell, Mische, and Nichols and held that 22 Plaintiffs are “entitled to damages and permanent injunctive relief as to their 23 seventh claim for copyright infringement.” (Dkt. No. 528 at 19.) 24 D. Trial and Jury Verdict 25 On June 16, 2023, this case proceeded to trial. The jury found in favor of 26 the Plaintiff for: (1) misappropriation of four of Plaintiffs’ trade secrets under the 27 California Uniform Trade Secrets Act (“CUTSA”), (2) infringement of Plaintiff 28 Menova’s registered trademark (the “Penuma Mark”), (3) use of a counterfeit 1 Penuma Mark, (4) infringement of Plaintiffs’ copyrighted video, and (5) breach of 2 the Non-Disclosure Agreement (“NDA”) by Dr. Cornell. (Dkt. No. 649.) The 3 jury also found invalid, by clear and convincing evidence, Defendants’ United 4 States Patent 10,413,413, and United States Patent 10,980,639. (Id.) The jury 5 awarded Plaintiffs $1,650 for Defendants’ copyright infringement of a Penuma 6 informational video based on an invoice for the creation of the video. (Id. at 6, 7 Trial Ex. 314.) 8 E. Evidentiary Hearing 9 On October 25, 2023, the Court held an evidentiary hearing on Plaintiffs’ 10 Motion for a Permanent Injunction. (Dkt. No. 690.) Plaintiffs seek the following: 11 (1) a permanent injunction prohibiting Defendants from using Plaintiffs’ 12 registered Penuma Mark; (2) a permanent injunction prohibiting Defendants from 13 using Plaintiffs’ registered copyrighted material; (3) a permanent injunction under 14 the California Uniform Trade Secrets Act (“CUTSA”) prohibiting Defendants 15 from using or commercializing Plaintiffs’ trade secrets for a period of at least 16 seven (7) years; and (4) an Order directing that the United States Patent and 17 Trademark Office invalidate U.S. Patent No. 10,413,413 (“‘413 Patent”) and U.S. 18 Patent No. 10,980,639 (“639 Patent”). 19 II. DISCUSSION 20 A. Enjoin Defendants from Using or Commercializing Plaintiff’s Trade Secret Design Concepts 21 22 Plaintiff IMD requests that this Court issue a “head start” injunction to 23 alleviate the commercial advantage Defendants gained by misappropriating, 24 disclosing, and using Plaintiff IMD’s secret design concepts. Defendants have 25 filed a motion vacating portions of the preliminary injunction issued by the Court 26 on the basis that the trade secrets are now public. California Civil Code section 27 3426.2(a) states that even after a trade secret has ceased to exist, “[u]pon 28 application to the court, an injunction shall be terminated when the trade secret has 1 ceased to exist, but the injunction may be continued for an additional period of 2 time in order to eliminate commercial advantage that otherwise would be derived 3 from the misappropriation.” 4 To qualify for a permanent injunction, the plaintiff must prove: (1) 5 irreparable injury; (2) inadequacy of legal remedies; (3) that the balance of 6 hardships favors an injunction; and (4) that the public interest would not be 7 disserved by a permanent injunction. See eBay Inc. v. MercExchange, L.L.C., 547 8 U.S. 388, 391 (2006). “An injunction in a trade secret case seeks … to eliminate 9 any unfair head start the defendant may have gained[,]” and that “after the trade 10 secret is public, the injunction may be continued for an additional reasonable 11 period of time in order to eliminate the commercial advantage that otherwise 12 would be derived from the misappropriation.” Lamb-Weston, Inc. v. McCain 13 Foods, Ltd., 941 F.2d 970, 974–75 (9th Cir. 1991) (internal quotation marks and 14 citation omitted). The goal of a “head start” injunction is to “place[] [the 15 defendant] in the position it would have occupied if the breach of confidence had 16 not occurred prior to the public disclosure[.]” Id. at 974 (quoting Winston 17 Research Corp. v. Minn. Mining and Mfg., 350 F.2d 134, 141 (9th Cir. 1965)). 18 Plaintiff IMD seeks a seven-year injunction to place Defendants in the 19 position they would have occupied had they not misappropriated IMD’s trade 20 secrets. Plaintiffs estimate that it would have taken Defendants approximately 4.5 21 years to develop the Augmenta implant, patent the product, and obtain FDA 22 approval after a license to use the design concepts was granted. Plaintiffs contend 23 that Defendants’ misappropriation gave them a competitive advantage of time, 24 including ultimately obtaining two patents by April 20, 2021. (Trial Exs. 29, 78.) 25 Defendants also obtained FDA clearance in September 2022. (Trial Tr. 1168:3-5.) 26 All four factors favor a permanent injunction enjoining Defendants from 27 using IMD’s trade secret information. The Court finds that Plaintiffs demonstrate 28 (1) they have suffered an irreparable injury; (2) remedies available at law, such as 1 monetary damages, are inadequate to compensate for that injury; (3) considering 2 the balance of hardships between IMD and Defendants, a remedy in equity is 3 warranted; and (4) the public interest would not be disserved by a permanent 4 injunction. 5 Injunctive relief must be tailored to remedy the specific harm alleged. 6 Lamb-Weston, Inc., 941 F.2d at 974. “[T]he appropriate duration for the 7 injunction should be the period of time it would have taken [the defendant], either 8 by reverse engineering or by independent development, to develop [the product] 9 legitimately without use of [plaintiff's] trade secrets.” K-2 Ski Co. v. Head Ski 10 Co., 506 F.2d 471, 474 (9th Cir. 1974). The Court enjoins Defendants from using 11 or commercializing Plaintiffs’ trade secrets for the period of time during which 12 IMD could have prohibited Dr. Cornell from using the trade secrets based on the 13 duration of the Nondisclosure Agreement Dr. Cornell signed on March 30, 2018. 14 (Trial Ex. 14.) Thus, Defendants are enjoined from using or commercializing 15 Plaintiff’s trade secret design concepts for five years from the date of this Order. 16 B. Trademark, Copyright, and Counterfeiting Injunctions 17 Plaintiffs seek a permanent injunction enjoining Defendants from infringing 18 Plaintiffs’ registered trademark and copyrighted work. The Court previously 19 found that Defendants Cornell, Nichols, and Mische infringed Plaintiffs’ 20 copyrighted video. The jury found Defendants Cornell and Cornell PA liable for 21 trademark infringement and counterfeiting. (Dkt. No. 649.) The Court finds that 22 the evidence supports the factors favoring a permanent injunction: (1) Plaintiffs 23 have suffered an irreparable injury; (2) remedies available at law, such as 24 monetary damages, are inadequate to compensate for that injury; (3) considering 25 the balance of hardships between Plaintiffs and Defendants, a remedy in equity is 26 warranted; and (4) the public interest would not be disserved by a permanent 27 injunction. eBay Inc., 547 U.S. at 391. 28 1 C. ‘Patent Invalidation 5 The jury found by clear and convincing evidence that Defendants’ ‘413 and

3 ‘639 Patents are invalid. The Court will enter judgment consistent with the jury’s 4 finding. 5 I. CONCLUSION ‘ Accordingly, the Court GRANTS Plaintiffs’ Motion for Injunctive Relief

4 and Patent Invalidation.

IT IS SO ORDERED.

9 Cm {St DATED: March 28, 2024. _ 10 CONSUELO B. MARSHALL UNITED STATES DISTRICT JUDGE 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28