“[E]quitable relief will not be granted if there is a plain, complete, 11 speedy, and adequate remedy at law.”
How later courts described this case
- “[E]quitable relief will not be granted if there is a plain, complete, 11 speedy, and adequate remedy at law.”
Written by the judges who cited it.
The opinion
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8 UNITED STATES DISTRICT COURT
9 CENTRAL DISTRICT OF CALIFORNIA
10 Case No. 2:19-cv-04980-AB-FFM
NOMADIX, INC.,
11 ORDER GRANTING PLAINTIFF’S
MOTION FOR A PERMANENT
12 Plaintiff, INJUNCTION [Dkt. No. 121]
13 v.
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GUEST-TEK INTERACTIVE
15 ENTERTAINMENT, LTD.,
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Defendant.
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18 I. INTRODUCTION
19 Before the Court is Plaintiff Nomadix, Inc.’s (“Nomadix”) motion for a
20 permanent injunction. (Dkt. No. 121.) Defendant Guest-Tek Interactive Entertainment
21 Ltd. (“Guest-Tek”) opposes Nomadix’s motion. (Dkt. No. 122.) For the reasons stated
22 below, the Court GRANTS Nomadix’s motion for a permanent injunction.
23 II. BACKGROUND
24 This case arises from the breach of a forum selection clause negotiated between
25 the parties. On January 23, 2020, the Court granted Nomadix’s summary judgment
26 motion, concluding that Guest-Tek breached the parties’ forum selection clause by
27 filing inter partes review petitions in the United States Patent and Trademark Office’s
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1 Patent Trial and Appeal Board (“PTAB”) challenging several of Nomadix’s patents.
2 (See Dkt. No. 113.) In particular, the Court concluded that by filing inter partes
3 review petitions in the PTAB, Guest-Tek breached Section 8.10 of the parties’ License
4 Agreement, which provides, in relevant part, that “all disputes arising out of or in
5 connection with this Agreement shall be brought in the United States District Court
6 for the Central District of California[.]” (Id.)
7 After granting Nomadix’s summary judgment motion, the Court ordered the
8 parties to submit a proposed judgment within ten days. (Id.) Nomadix submitted its
9 proposed judgment on February 3, 2020, seeking a permanent injunction. (See Dkt.
10 No. 115.) Because Nomadix did not move for a permanent injunction in its summary
11 judgment motion, the Court denied Nomadix’s request to enter its proposed judgment,
12 and set a briefing schedule on the issue of whether a permanent injunction should
13 issue. (See Dkt. No. 120.)
14 III. LEGAL STANDARD
15 Because Nomadix seeks a permanent injunction to enforce its meritorious
16 California breach of contract claim, California law governs whether a permanent
17 injunction should issue. See Sullivan By and Through Sullivan v. Vallejo City Unified
18 Sch. Dist., 731 F. Supp 947, 956 (E.D. Cal. 1990) (“Where federal courts are called
19 upon to adjudicate a claim predicated on state law, under either its diversity or
20 pendent claim jurisdiction, there appears to be no question that the ultimate issue of
21 whether injunctive relief may issue must be decided under applicable state law.”
22 (citing 7 Moore’s Federal Practice, Pt. 2, ¶ 65.18[1])). Pursuant to California’s Civil
23 Code, a permanent injunction may be granted to prevent the breach of an obligation
24 where: (1) pecuniary compensation would not afford adequate relief, (2) it would be
25 extremely difficult to ascertain the amount of compensation which would afford
26 adequate relief, (3) the restraint is necessary to prevent a multiplicity of judicial
27 proceedings, or (4) the obligation arises from a trust. See Cal. Civ. Code § 3422.
28 //
1 IV. DISCUSSION
2 a. Nomadix has demonstrated that pecuniary compensation would not
3 afford it adequate relief for its breach of contract claim.
4 In moving for a permanent injunction, Nomadix identifies several injuries that it
5 alleges cannot be adequately remedied by monetary damages. For a remedy at law to
6 be adequate, “[i]t must reach the whole mischief and secure the whole right of the
7 party in a perfect manner at the present time and not in the future.” See Hicks v.
8 Clayton, 136 Cal. Rptr. 512, 520 (Ct. App. 1977) (quoting Quist v. Empire Water Co.,
9 269 P. 533, 535 (Cal. 1928)); see also Andal v. City of Stockton, 40 Cal. Rptr. 3d 34,
10 37 (Ct. App. 2006) (“[E]quitable relief will not be granted if there is a plain, complete,
11 speedy, and adequate remedy at law.”). As a result of Guest-Tek’s breach of the forum
12 selection clause, Nomadix has suffered injuries including: (1) loss of the presumption
13 of patent validity that is applied in district court proceedings pursuant to 35 U.S.C. §
14 282(a), (2) loss of the ability to assert contract-based defenses to Guest-Tek’s patent
15 invalidity challenges, and (3) loss of the opportunity to have its patents’ validity
16 determined by a jury of at least six persons from the Los Angeles area. With respect to
17 these injuries, money damages would not afford an adequate and complete remedy.
18 Although money damages may compensate Nomadix for its litigation expenses in the
19 PTAB, such damages would not secure to Nomadix its whole rights under the forum
20 selection clause to litigate patent validity in the United States District Court for the
21 Central District of California.1 See Hicks, 136 Cal. Rptr. at 520; see also Dodocase
22 VR, Inc. v. MerchSource, LLC, 767 F. App’x. 930, 935 (Fed. Cir. 2019) (mem.)
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1 Separately, the Court rejects Guest-Tek’s argument that a final injunction cannot
25 issue under California Civil Code § 3422 because such an injunction would not
“prevent the breach of an obligation.” Here, Nomadix has shown that Guest-Tek’s
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breach of the forum selection clause is ongoing, as Guest-Tek continues to seek to
27 invalidate Nomadix’s patents in the PTAB. Accordingly, issuing a final injunction
under California Civil Code § 3422 would prevent this ongoing breach of the parties’
28 forum selection clause.
1 | cholding that filing a petition for inter partes review in the PTAB in breach of a forum
2 | selection clause constitutes irreparable injury under the preliminary injunction
3 | standard set out in Winter v. Natural Resources Defense Council, Inc., 555 U.S. □
4 | (2008)).
5 Accordingly, because Nomadix has shown that money damages would not
6 | provide adequate relief for Guest-Tek’s breach of the parties’ forum selection clause,
7 | the Court GRANTS Nomadix’s motion for a permanent injunction. The Court shall
8 | enter Nomadix’s proposed judgment separately from this order.
9 | ITISSO ORDERED.
□ —
11 | Dated: April 22, 2020
12 HONORABLE ANDRE BIROTTE JR.
UNITED STATES DISTRICT COURT JUDGE
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