Sysco Machinery Corp. v. Cymtek Solutions, Inc.

124 F.4th 32
CourtCourt of Appeals for the First Circuit
DecidedDecember 20, 2024
Docket23-1738
StatusPublished
Cited by1 cases

This text of 124 F.4th 32 (Sysco Machinery Corp. v. Cymtek Solutions, Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the First Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Sysco Machinery Corp. v. Cymtek Solutions, Inc., 124 F.4th 32 (1st Cir. 2024).

Opinion

United States Court of Appeals For the First Circuit

No. 23-1738

SYSCO MACHINERY CORP.,

Plaintiff, Appellant,

v.

CYMTEK SOLUTIONS, INC.; CYMMETRIK ENTERPRISE CO. LTD.,

Defendants, Appellees.

APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS

[Hon. Leo T. Sorokin, U.S. District Judge]

Before

Barron, Chief Judge, Lipez and Kayatta, Circuit Judges.

Christopher E. Hanba, with whom Ariana Deskins Pellegrino, Dickinson Wright PLLC, Christopher J. Somma, and Somma Law PLLC were on brief, for appellant. Kevin Tottis, with whom Keith M. Stolte, Max Stein, TottisLaw, Barbara A. Fiacco, Allison L. Anderson, and Foley Hoag LLP were on brief, for appellee Cymtek Solutions, Inc. Li Chen, with whom Lumens Law Group PLLC, Dawn E. Murphy- Johnson, and Miller & Chevalier Chartered were on brief, for appellee Cymmetrik Enterprise Co. Ltd.

December 20, 2024 KAYATTA, Circuit Judge. Taiwanese company Sysco

Machinery Corp. ("Sysco") sued Taiwanese company Cymtek Solutions,

Inc. ("Cymtek") and Taiwanese company Cymmetrik Enterprise Co.

Ltd. ("Cymmetrik") in the U.S. District Court for the District of

Massachusetts for conduct originating in Taiwan that allegedly

infringed Sysco copyrights for material created in Taiwan. The

sole issue addressed on this appeal is whether the district court

properly exercised its discretion in applying the doctrine of forum

non conveniens to dismiss this lawsuit. For the following reasons,

we hold that the district court did not abuse its discretion.

I.

Sysco, Cymtek, and Cymmetrik are three Taiwanese

companies involved in the business of industrial cutting. Around

twenty years ago, Sysco's team members -- all of whom were based

in Taiwan -- developed the rotary die-cutting ("RDC") machine that

spawned this dispute. Sysco also created, in Taiwan, a series of

technical drawings illustrating the RDC. These Taiwanese

drawings, to which we refer as the "copyrighted works," enjoy

copyright protection in both the United States and Taiwan. In

2017, Sysco began shipping RDCs from Taiwan to the United States,

using U.S. distributor DCS USA Corp. ("DCS") to develop and

maintain U.S. client relationships.

In April 2021, several Sysco employees -- all of whom

are Taiwanese -- left the company to create and work for Cymtek.

- 2 - They did so with financial support from Cymmetrik, an existing

company that wholly owned Cymtek until late December 2021.

According to Sysco, Cymtek developed a competing RDC in Taiwan by

misappropriating Sysco's trade secrets and copyrighted works.

Cymtek also formed a relationship with DCS and allegedly used that

relationship to usurp Sysco's U.S. business by shipping Cymtek's

competing RDCs from Taiwan to the United States. Sysco

additionally alleges that Cymtek copied Sysco's copyrighted works

in Taiwan and sent those copies "into the United States in order

to facilitate DCS's installation of RDCs for the U.S. customers."

II.

The present dispute represents Sysco's third roll of the

dice. Sysco first brought suit in Taiwan's Intellectual Property

and Commercial Court ("IPCC") against Cymtek and several of its

employees and won a March 2022 preliminary injunction barring them

from using the copyrighted works or disclosing any information

contained therein. Those proceedings are ongoing. Sysco

reportedly did not include Cymmetrik in those proceedings "because

most of the evidence related to Cymmetrik's unlawful acts are to

be obtained from . . . third part[ies] in the United States."

In August 2022, after facing setbacks in the IPCC, Sysco

sued Cymtek and Cymmetrik in the U.S. District Court for the

Eastern District of North Carolina. Verified Complaint for

Injunctive & Other Relief, Sysco Mach. Corp. v. Cymtek Sols., Inc.,

- 3 - No. 5:22-cv-00319 (E.D.N.C. Aug. 11, 2022). That lawsuit asserted

claims similar to those at bar but included additional defendants:

DCS and several former Sysco employees. See id. After learning

that Sysco's counsel had contacted a DCS employee without DCS's

counsel present, the court issued a protective order against Sysco.

Order, Sysco Mach., No. 5:22-cv-00319 (Oct. 3, 2022). Two weeks

later, Sysco voluntarily dismissed the suit without prejudice.

Stipulation of Dismissal, Sysco Mach., No. 5:22-cv-00319 (Oct. 18,

2022) (dismissing DCS); Notice of Dismissal, Sysco Mach.,

No. 5:22-cv-00319 (Oct. 18, 2022) (dismissing the other

defendants).

Three days after dismissing its North Carolina suit,

Sysco commenced this lawsuit in the U.S. District Court for the

District of Massachusetts against Cymtek and Cymmetrik. After

some preliminary motions and orders not relevant here, Sysco filed

an amended complaint on December 30, 2022, which forms the basis

for the dispute at bar. That complaint asserted four causes of

action: (1) misappropriation of trade secrets under 18 U.S.C.

§ 1836; (2) federal copyright infringement under 17 U.S.C. §§ 101

810; (3) unfair and deceptive acts and practices under Mass. Gen.

Laws ch. 93A; and (4) tortious interference with prospective

economic advantage under common law.1 The first, third, and fourth

The district court explained that counts three and four 1

"are encompassed within the [analysis] of the trade secret and

- 4 - counts targeted Cymtek and Cymmetrik, while the second count

targeted only Cymtek. Sysco sought monetary, declaratory, and

injunctive relief to remedy Cymtek's and Cymmetrik's alleged

infringing conduct, as well as monetary damages for harms (e.g.,

loss of U.S. business) stemming therefrom.

Cymtek and Cymmetrik both moved to dismiss the suit under

the doctrine of forum non conveniens. After a motions hearing,

the district court granted the two motions. Sysco Mach. Corp. v.

Cymtek Sols., Inc., No. 22-cv-11806, 2023 WL 6035672, at *11 (D.

Mass. Aug. 9, 2023). Sysco appealed.

III.

We review a district court's forum non conveniens

determination for abuse of discretion. Imamura v. Gen. Elec. Co.,

957 F.3d 98, 106 (1st Cir. 2020). "We will find an abuse of

discretion if the district court (1) failed to consider a material

factor; (2) substantially relied on an improper factor; or

(3) assessed the proper factors, but clearly erred in weighing

them." Id. (quoting Interface Partners Int'l Ltd. v. Hananel, 575

F.3d 97, 101 (1st Cir. 2009)). While "the abuse-of-discretion

standard isn't a rubber stamp," Curtis v. Galakatos, 19 F.4th 41,

copyright claims because all of the claims concern the same general alleged course of conduct." Sysco Mach. Corp. v. Cymtek Sols., Inc., No. 22-cv-11806, 2023 WL 6035672, at *4 (D. Mass. Aug. 9, 2023). On appeal, no party challenges this approach. We thus follow suit and devote our discussion to Sysco's federal intellectual property ("IP") claims.

- 5 - 49 (1st Cir. 2021), it nevertheless imposes "a formidable burden"

on anyone "attempting to convince the court of appeals that the

lower court erred," Rivera-Aponte v. Gomez Bus Line, Inc., 62 F.4th

1, 7 (1st Cir. 2023) (quoting Rosario-Diaz v. Gonzalez, 140 F.3d

312, 315 (1st Cir. 1998)). "Of course," any "material error of

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Related

Sysco Machinery Corporation v. DCS USA Corporation
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Bluebook (online)
124 F.4th 32, Counsel Stack Legal Research, https://law.counselstack.com/opinion/sysco-machinery-corp-v-cymtek-solutions-inc-ca1-2024.