United States District Court, D. Utah
MEMORANDUM DECISION AND ORDER ORDER GRANTING
DEFENDANTS' REQUEST FOR JUDICIAL NOTICE AND STRIKING
DEFENDANTS' MOTIONS TO DISMISS
N. Parrish United States District Court Judge.
matter was recently transferred to the District of Utah from
the District of Delaware on defendants' successful motion
to transfer venue under 28 U.S.C. § 1404(a). Before
transfer, the parties had fully briefed two motions to
dismiss. The first motion (ECF No. 33) seeks dismissal of
plaintiff's patent infringement claim, and the second
motion (ECF No. 36) seeks dismissal of plaintiff's trade
secret misappropriation claims asserted under federal law and
Delaware's Uniform Trade Secrets Act. Also pending is
defendants' unopposed request for judicial notice in
support of its motion to dismiss the patent infringement
claim (ECF No. 34).
transfer, defendants submitted supplemental authority in
support of their contention that both Utah and Delaware have
adopted the Uniform Trade Secrets Act (the
“UTSA”), further asserting that any differences
between the language adopted by, or the judicial
interpretation of, the respective state acts are not
implicated by their motion to dismiss.
wholly missing from defendants' supplemental brief and
the memorandum in support of their motion to dismiss is any
choice-of-law analysis establishing that the only two
possible sources of governing law are Delaware or Utah. The
presupposition of defendants' supplemental brief is that
the transfer of this case to the District of Utah
automatically requires the application of Utah's act.
While Utah's act may ultimately be found to apply,
defendants have completely failed to undertake the
appropriate analysis to establish which state's law
applies to the state law trade secrets claim, a fatal
deficiency when viewed alongside plaintiff's allegations,
which portray defendant John M. Stoddard as having
misappropriated plaintiff's trade secrets while residing
in Ohio and California, only moving to Utah after he quit the
job that is alleged to have granted him access to the trade
secrets. Thus, it is far from clear that the only possible
sources of law are Delaware and Utah. And even though nearly
every state has adopted the UTSA, even a brief review of the
case law reveals that states have not adopted identical
versions of the UTSA, and that many states' acts have
been shaped considerably by judicial interpretation.
general, a federal court exercising supplemental jurisdiction
over a state law claim applies the choice-of-law rules of the
state in which it sits. BancOklahoma Mortg. Corp. v.
Capital Title Co., Inc., 194 F.3d 1089, 1103 (10th Cir.
1999). However, where, as here, a case is properly venued in
one district but is subsequently transferred to a different
district under 28 U.S.C. § 1404(a), the choice-of-law
rules of the transferor court's forum state apply.
Van Dusen v. Barrack, 376 U.S. 612, 635-37 (1964).
As an exception to that exception, the Tenth Circuit holds
that in cases that are transferred because the transferor
court could not exercise personal jurisdiction over a
defendant, the transferee court should apply the
choice-of-law rules of the state in which it sits.
Trierweiler v. Croxton & Trench Holding Corp.,
90 F.3d 1523, 1535 (10th Cir. 1996); see also Doering ex
rel. Barrett v. Copper Mountain, Inc., 259 F.3d 1202,
1209 (10th Cir. 2001) (“When the transferor court lacks
personal jurisdiction . . . the choice of law rules of the
transferee court apply.”). “This is so even when
the case was transferred under 28 U.S.C. §
1404(a)-purportedly for convenience-rather than 28 U.S.C.
§ 1406(a)-for improper venue- so long as the transfer
did in fact cure a jurisdictional defect.” Id.
The transferor court's characterization of the reason for
the transfer is not controlling. Id. at n.4.
the transferor court transferred this case under §
1404(a)(1), but did so, at least in part, on the basis of
“substantial questions about whether [the United States
District Court for the District of Delaware] can exercise
personal jurisdiction over Mr. Stoddard, who has never been
in Delaware.” (ECF No. 64 at 12). Thus, to determine
which choice-of-law rules apply, this court must first
determine whether the district court in Delaware could have
exercised personal jurisdiction over Mr. Stoddard.
the defendants' pending motion to dismiss the trade
secrets claims does not address any of these choice-of-law
issues, the court is without the necessary facts and
arguments to resolve them.
Defendants' Request for Judicial Notice
Fed R. Evid. 201(a)-(b), “the court may judicially
notice an [adjudicative] fact that is not subject to
reasonable dispute because it . . . can be accurately and
readily determined from sources whose accuracy cannot
reasonably be questioned.” Patent records are properly
the subjects of judicial notice because they are
“adjudicative facts” contained in public records.
See Standard Havens Prod., Inc. v. Gencor Indus.,
Inc., 897 F.2d 511, 514 n.3 (Fed. Cir. 1990).
Fed.R.Evid. 201(d), “the court may take judicial notice
at any stage of the proceeding.” See also Function
Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1316 (Fed.
Cir. 2013) (“It is proper to take judicial notice of a
decision from another court or agency at any stage of the
proceeding . . . .”). “This includes another
court's publicly filed records ‘concerning matters
that bear directly upon the disposition of the case at
hand.'” Hodgson v. Farmington City, 675
Fed.Appx. 838, 840-41 (10th Cir. 2017) (quoting United
States v. Ahidley, 486 F.3d 1184, 1192 n.5 (10th Cir.
2007)). Because plaintiff has so requested and has further
supplied the court “with the necessary information,
” the court will take judicial notice of the two
documents contained within the Patent record: 1) the April
29, 2010 First Office Action and 2) Applicant's July 29,
2010 response to non-final office action.
reasons articulated, the court will STRIKE
defendants' motion-and supporting
memorandum-to dismiss ...