1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 KRZYSZTOF SYWULA, Case No. 21-cv-01450-BAS-AGS

12 Plaintiff,

ORDER:

13 v. (1) DENYING EX PARTE 14 ALEXIS DACOSTA, et al.,

MOTION FOR TEMPORARY

15 Defendants. RESTRAINING ORDER (ECF No. 9); 16

17 (2) DIRECTING DEFENDANTS

TO SHOW CAUSE WHY A

18

PRELIMINARY INJUNCTION

19 SHOULD NOT ISSUE; AND

20 (3) SETTING BRIEFING 21

SCHEDULE AND HEARING

22 DATE FOR PRELIMINARY

INJUNCTION

23

24

25 Pending before this Court is Plaintiff’s ex parte application for a temporary 26 restraining order or, in the alternative, a preliminary injunction. (Mot. for a TRO (“Mot.”), 27 ECF No. 9.) Defendants opposed (Opp’n, ECF No. 14) and Plaintiff replied (Reply, ECF 28 1 No. 16). The Court finds the Motion for a TRO suitable for determination on the papers 2 and submitted without oral argument. See Fed. R. Civ. P. 78(b); Civ. L.R. 7.1(d)(1). For 3 the reasons set forth below, the Court DENIES Plaintiff’s application for a TRO and 4 ORDERS Defendants to show cause why a preliminary injunction should not issue. 5 I. BACKGROUND 6 Plaintiff Krzyszstof Sywula (“Sywula” or “Plaintiff”) commenced this action in 7 federal court on August 15, 2021 against Defendants Alexis DaCosta (“DaCosta”), Vincent 8 Coletti (“Coletti”), and Teleport Mobility, Inc. (“Teleport” or “Company” and, together 9 with DaCosta and Coletti, “Defendants”). (Compl., ECF No. 1.) By this action, Sywula 10 seeks to correct inventorship pursuant to 35 U.S.C. § 256 of three United States Patents 11 recently issued to Teleport: Patent No. 11,087,250 titled “Interactive Real Time System 12 And Real Time Method of Use Thereof In Conveyance Industry Segments”; Patent No. 13 11,087,252 titled “Interactive Real Time System And Real Time Method of Use Thereof 14 In Conveyance Industry Segments”; and Patent No. 11,087,253 titled “Interactive Real 15 Time System and Real Time Method of use Thereof In Conveyance Industry Segments” 16 (“Patents”).2 (Compl. ¶ 6.) The named inventors of those Patents are DaCosta and Coletti 17 only. (Declaration of Krzysztof Sywula (“Sywula Decl.”) ¶ 25, ECF No. 12.) However, 18 Sywula asserts that he “solely [was] responsible for [engineering] and developing the 19 software and algorithms” underlying Teleport’s ride-sharing application, which are 20 prominently claimed in the claims of the above-mentioned Patents, not DaCosta and 21 Coletti. (Id. ¶¶ 26, 51–58.) 22 23 1 The parties also submitted additional sur-reply papers beyond the scope of the Court’s September 24 14, 2021 Order setting a briefing schedule for the Motion for a TRO (“Scheduling Order”) (ECF No. 13), 25 and without first seeking leave. (ECF Nos. 20–23, 26.) Despite the parties’ procedural miscues, the Court has reviewed those papers as well. 26 2 Sywula commenced in San Diego Superior Court a separate, related action against DaCosta, Coletti, Teleport, and others, in which he asserts various wage-and-hour violations, fraud, infliction of 27 emotional distress, breach of fiduciary duty, conversion, and breach of contract. It was removed to federal court on August 16, 2021. See Krzysztof Sywula v. Alexis DaCosta, et al., 21-CV-01456-BAS-AGS 28 1 On August 15, 2021, Sywula filed ex parte his Motion for a TRO seeking “to enjoin 2 Teleport from transferring any rights under the [P]atents …, pending resolution of the 3 inventorship issues” pertaining to those Patents raised in the present action.3 (Mot. 1.) 4 Pursuant to this Court’s Scheduling Order, Defendants opposed and Sywula replied (ECF 5 No. 13). (ECF Nos. 14, 16.) 6 Defendants oppose Sywula’s application on three principal bases. First, Defendants 7 contend that the Motion for a TRO should be denied because the Patents are covered by 8 assignments Sywula executed in 2016 and 2019 and, thus, Sywula lacks standing to 9 prosecute this action. (Opp’n 14–17; Consulting Agreement, Ex. 1 to Declaration of Alexis 10 DaCosta (“DaCosta Decl.”), ECF No. 14–2; Teleport’s Employee Proprietary Information 11 and Inventions Agreement (“PIIA”), Ex. 2 to DaCosta Decl., ECF No. 14–3.) Second, 12 Defendants aver that Sywula vastly overstates his contributions to the Patents in order to 13 qualify as an inventor. (Opp’n 23–25.) Third, Defendants argue that the first-to-file rule 14 precludes the issuance of a TRO, as there is currently an action pending in the Northern 15 District of California, captioned Teleport Mobility Inc., et al., v. Krzysztof Sywula, No. 21 16 Civ. 00874, commenced February 3, 2021, which Defendants claim overlaps substantially 17 with this case. (Opp’n 19–21.) Defendants contend that Sywula’s inventorship claim must 18 be brought as a compulsory counterclaim in the first-filed action. (Id. 21.) 19 In response, Sywula disputes Defendants’ contention that he assigned away his 20 rights respecting the Patents. Moreover, Sywula claims that even assuming arguendo the 21 Consulting Agreement and/or PIIA apply to the Patents, he still has standing to prosecute 22 this action because (1) those assignments are void and (2) he has suffered reputational harm 23 3 Without specifying to which patents he refers, Sywula also asks this Court to enjoin Teleport 24 from transferring any rights under patents that are the subject of a first-filed lawsuit between the parties 25 in the Northern District of California. (Mot. 1 (citing Teleport Mobility Inc. et al. v. Sywula, Case No. 3:21-cv-874 (N.D. Cal. Feb. 3, 2021)).) Because Sywula fails to explain how this strand of his request 26 for injunctive relief relates to the allegations of the Complaint, this Court finds that it lacks authority to grant such relief and will consider Sywula’s application only to the extent he seeks to enjoin the Patents 27 identified in the Complaint. See Pac. Radiation Oncology, LLC v. Queen’s Med. Ctr., 810 F.3d 631, 636 (9th Cir. 2015) (“We hold that there must be a relationship between the injury claimed in the motion for 28 1 from his exclusion as an inventor, an alleged independent basis for standing. (Reply 5– 2 10.) Sywula further argues that the first-to-file rule is inapplicable here because his 3 Complaint seeks declaratory relief pertaining to the Patents and, thus, falls within a 4 recognized exception to the first-to-file rule. (Reply 3 (citing Knapp v. Depuy Synthes 5 Sales, Inc., 983 F. Supp. 2d 1171, 1178 (E.D. Cal. 2015)).) 6 II. LEGAL STANDARD 7 A temporary restraining order is “an extraordinary remedy never awarded as of 8 right.” Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 24 (2008) (“Winter”).4 A district 9 court should issue a temporary restraining order only when there is “clear showing that 10 plaintiff is entitled to such relief. Id. at 22. Movants seeking a temporary restraining order 11 “must establish that (1) they are likely to succeed on the merits; (2) they are likely to suffer 12 irreparable harm in the absence of preliminary relief; (3) the balance of equities tips in their 13 favor; and (4) a preliminary injunction is in the public interest” (“Winter Test”). Sierra 14 Forest Legacy v. Rey, 577 F.3d 1015, 1021 (9th Cir. 2009) (citing Winter, 555 U.S. at 20). 15 Alternatively, “‘serious questions going to the merits’ and a hardship balance that tips 16 sharply toward the plaintiff can support issuance of an injunction, assuming the other two 17 elements of the Winter [T]est are also met.” All. for the Wild Rockies v. Cottrell, 632 F.3d 18 1127, 1132 (9th Cir. 2011) (interpreting Winter and explaining that the ‘sliding scale’ test 19 for preliminary injunctive relief remains valid). A “serious question” is one which the 20 movant “has a fair chance of success on the merits.” Sierra On-Line, Inc. v. Phoenix 21 Software, Inc., 739 F.2d 1415, 1421 (9th Cir. 1984). 22 III. ANALYSIS 23 “A plaintiff seeking a preliminary injunction must show more than a ‘possibility’ of 24 irreparable injury’; he must demonstrate that irreparable injury is ‘likely’ in the absence of 25 26 4 Although the Supreme Court in Winter expatiated the proper standard for granting or denying a 27 preliminary injunction, it is well-settled that the standard for issuing a temporary restraining order and a preliminary injunction is “substantially identical.” Stuhlbarg Int’l Sales Co. v. John D. Brushy & Co., 240 28 1 preliminary relief.” JBF Interlude 2009 Ltd. v. Quibi Holdings, LLC, Nos. 2:20-CV- 2 02299-CAS (SKx), 2:20-CV-02250-CAS (SKx), 2020 WL 7314845, at *2 (C.D. Cal. Nov. 3 5, 2020) (quoting Winter, 555 U.S. at 22); see also Am. Trucking Assocs., Inc. v. City of 4 Los Angeles, 559 F.3d 1046, 1052 (9th Cir. 2009). “A plaintiff must do more than merely 5 allege imminent harm sufficient to establish standing; a plaintiff must demonstrate 6 immediate threatened injury as a prerequisite to [a temporary restraining order].” 7 Caribbean Marine Servs. Co. v. Baldridge, 844 F.2d 668, 674 (9th Cir. 1988). Indeed, 8 conclusory affidavits without sufficient support in facts are insufficient to demonstrate 9 immediate, irreparable harm. Am. Passage Media Corp. v. Cass Comms., Inc., 750 F.2d 10 1470, 1473 (9th Cir. 1985) (emphasis in original). 11 The Court does not—and need not—reach the merits of Sywula’s inventorship 12 claim—or, for that matter, the defenses raised by Defendants in their papers—because 13 absent from the declarations Sywula submits in support of his Motion for a TRO are even 14 speculative attestations of irreparable harm. See JBF Interlude 2009 Ltd., 2020 WL 15 7314845, at *2 (denying TRO in patent inventorship action without considering likelihood 16 of success on the merits where movant failed to demonstrate more than speculative 17 irreparable harm). Wherever courts might draw the line between ‘merely speculative’ 18 irreparable harm, on the one hand, and factually supported assertions of an immediate 19 threatened injury justifying ex parte relief, on the other hand, Sywula’s Motion for a TRO 20 falls far below it, for Sywula simply does not provide any evidentiary material addressing 21 the second prong of the Winter Test. (ECF Nos. 12-1, 17–20); see, e.g., Mazurek v. 22 Armstrong, 520 U.S. 968, 972 (1997) (“[A] preliminary injunction is an extraordinary and 23 drastic remedy, one that should not be granted unless the movant, by a clear showing, 24 carries the burden of persuasion.”); Goldie’s Bookstore, Inc. v. Superior Court, 739 F.2d 25 466, 472 (9th Cir. 1984) (overturning trial court’s issuance of TRO where finding of 26 irreparable harm was “not based on any factual allegations” and, thus, “speculative”); 27 Knapp v. Cate, No. 1:08-cv-01779-SKO PC, 2010 WL 4323023, at *2 (E.D. Cal. Oct. 26, 28 2010) (“A party seeking a temporary restraining order or preliminary injunction simply 1 cannot prevail when that motion is unsupported by evidence.”). For this reason alone, the 2 Court has ground to find Sywula cannot satisfy the Winter Test, and that his Motion for a 3 TRO must be denied. 4 Nevertheless, because courts are not limited to considering only admissible evidence 5 when determining whether to grant or deny an application for a temporary restraining 6 order, this Court also considers the claims of irreparable harm made in Sywula’s supporting 7 briefs. RBP SA v. Hyla, Inc., No. LA CV20-04105 JAK (SKx), 2020 WL 3213737, at *5 8 (C.D. Cal. June 2, 2020). Here, Sywula avers that “[g]iven Teleport’s past actions to 9 intentionally sabotage Sywula … there is a great risk of Teleport transferring the patents 10 to a different entity in order to reduce the value of Sywula’s shares to practically zero.” 11 (Mot. 14; see also Reply 5 (“After years of being strung along by Teleport and its lawyers 12 on the promise of his legally earned inventorship, Sywula reasonably fears that without an 13 injunction, Teleport will once again scheme to prevent him from gaining any benefit at all 14 from his years of laboring over the ride-sharing application.”).) In essence, Sywula asks 15 this Court to infer from Defendants’ alleged past conduct that they will take some 16 nonspecific step in the future to derogate Sywula’s purported rights respecting the Patents. 17 To be sure, Sywula alleges that he was solely responsible for engineering the 18 technologies that comprise the subject matter of the Patents; that DaCosta and Coletti have 19 no software experience or capability to assess or explain that technology or advocate for 20 the patents’ registration; and, despite that, DaCosta and Teleport omitted Sywula as an 21 inventor in the Patents’ applications. (Sywula Decl. ¶¶ 4–5, 24–25.) However, the most 22 recent act about which Sywula complains took place in January 2021 when Teleport’s 23 patent counsel allegedly failed to follow through on her promise to amend the Patents to 24 name Sywula as an inventor therein. (Id. ¶¶ 23–25; see Compl. ¶ 38). Sywula does not 25 identify in his Motion for a TRO any current conduct of Defendants’ that would warrant 26 ex parte relief. Nor does Sywula assert that Defendants have threatened, or are in the 27 process of undertaking, any action to assign, transfer, or otherwise encumber the Patents 28 in a manner that would cause imminent, irreparable harm. See JBF Interlude 2009 Ltd., 1 2020 WL 7314845, at *2 (denying TRO where movant “d[id] not provide additional 2 evidence—such as an assertion that [nonmovant] agreed to a transaction encumbering its 3 IP assets, has announced its intention to distribute funds to investors by a particular date, 4 or has taken legal action to dissolve []—that might justify immediate ex parte relief.”); see 5 also Caribbean Marine, 844 F.2d at 674. 6 Furthermore, Sywula does not show that Teleport’s possible transfer of the Patents 7 would likely inflict upon him irreparable harm. Sywula claims that the “[P]atents are 8 Teleport’s main asset and at the heart of the [C]ompany, a transfer of these patents could 9 very well harm Sywula’s 4[9]-percent ownership interest in the [C]ompany in ways that 10 are difficult to calculate or measure.” (Id. (emphasis added).) That assertion is not made 11 with any degree of certainty, let alone evidentiary support. Winter, 555 U.S. at 22 (“Issuing 12 a [temporary restraining order] based only on a possibility of irreparable harm is 13 inconsistent with our characterization of injunctive relief as an extraordinary remedy that 14 may only be awarded upon a clear showing that the plaintiff is entitled to such relief.”); 15 Stormans, Inc. v. Selecky, 576 F.3d 1109, 1127 (9th Cir. 2009). Thus, Sywula’s claim of 16 irreparable injury is purely speculative and “does not constitute irreparable injury sufficient 17 to warrant granting a preliminary injunction.” Caribbean Marine, 844 F.2d at 674. 18 Sywula cites several cases in support of his assertion that “[i]n other settings, interim 19 injunctive relief has been granted to prevent a potentially fraudulent transfer of disputed 20 property to an unsuspecting bona fide purchaser or in any other manner designed to ‘place 21 those assets further out of reach of [the plaintiff].’” (Reply 4 (quoting Pheasant v. 22 Zaremba, 398 B.R. 583, 590 (N.D. Ohio 2008) and citing DLJ Mortg. Cap., Inc. v. 23 Kontogiannis, 594 F. Supp. 2d 308, 332 (E.D.N.Y. 2008); Kaisha v. Dodson, No. 08-0225 24 SC, 2009 WL 1066295, at *1 (N.D. Cal. Apr. 21, 2009)).) This Court is neither bound by 25 nor finds persuasive any of these authorities. Each of the decisions upon which Sywula 26 relies lacks substantive analysis into whether the movants’ alleged irreparable harm was 27 “imminent” as opposed speculative; these decisions do not explain why they veered from 28 the standard set forth by the Supreme Court in Winter. As explained above, the Ninth 1 Circuit has instructed that for a temporary restraining order to issue, a movant “must 2 ||demonstrate immediate threatened injury.” Caribbean Marine, 844 F.2d at 674. This 3 || Court may not ignore Sywula’s failure to present any evidence in support of such a finding 4 the basis that several trial courts in other circuits have issued injunctive relief without 5 || probing likelihood of injury. 6 Because Sywula fails to demonstrate that there is an emergency such that he is likely 7 suffer an imminent, irreparable injury, the Court denies his Motion for a TRO without 8 || prejudice to renewal. 9 CONCLUSION 10 For the reasons stated above, the Court HEREBY ORDERS the following: 11 (1) The Court DENIES the temporary restraining order and issues an order to show 12 cause as to why a preliminary injunction should not issue. 13 (2) The Court sets a hearing on the order to show cause why a preliminary injunction 14 should not issue on December 6, 2021, at 3:00 p.m. 15 (a) Defendants are directed to file any further opposition to the instant request 16 by no later than October 27, 2021. 17 (b) Plaintiff shall file any reply by no later than November 10, 2021. 18 (c) Defendants shall file any sur-reply by no later than November 17, 2021. 19 IT ISSO ORDERED. 20 21 || DATED: October 13, 2021 (uf Ll. (Liphan 6 22 United States District Judge 23 24 25 26 27 28