Plumley v. Mockett
July 14, 2008
Second District – Division Four
2008 SOS 4144

Plaintiff is not Liable to Pay Tort Liability for Malicious Prosecution

The Second Appellate District reversed the trial court decision finding the plaintiff and his attorney liable to pay penalty of tort liability.

Roger Plumley, a sales representative of a plastics manufacturer filed a patent application for a plastic grommet to be used to cover the hole on top of a desk that computer cables and other cords passed through.

Two months later, Douglas Mockett the owner of Dough Mockett and Company, Inc. (DMC) filed a patent application for the same device. DMC marketed furniture related products designed and patented by Mockett, including various kinds of grommets.

Plumleys application was granted, while Mocketts was denied. Mockett filed for an interference proceeding between Plumley’s patent and Mockett’s application.

Mockett also filed in California State Court an action alleging unfair competition and misappropriation of trade secrets against Plumley. Mockett argued that he created the original design of the “pivoting-tab” grommet and he communicated the grommet design to Plumley in order to obtain a bid from the plastics manufacturer where Plumley worked, and that Plumley had undertaken to market the device as his own. In support, Mockett offered into evidence copies of letters he allegedly written to Plumley in which he disclosed the grommet design and requested a bid for the manufacturing cost.

The trial court entered a judgment in Plumley’s favor, finding that the letters submitted by Mockett were fabricated and was not sent to Plumley and Mockett was not the first to both conceive and build the concept of the pivoting-tab grommet.

PTO Board of Patent Appeal also held a hearing on Mocket’s claim, that he conceived the grommet first and communicated his idea to Plumley.

The Board found that Mockett had conceive the pivoting-tab and communicated it to Plumley regardless of whether the letters where sent to Plumley. Mockett failed to establish that it was sent on the right address. However, the Board found that notwithstanding the lack of proof of communication, circumstantial evidence was provided to establish that such communication took place.

The Board’s decision was overturned by the district court, which held that Mockett had communicated the design for the pivoting-tab grommet to Plumley base solely on circumstantial evidence.

Plumley then filed a malicious prosecution action against Mockett and his attorney Stanford Astor. He contended that the latter filed the federal interference action with malice and without probable cause. Mockett and his attorney then filed a special motion to strike the malicious prosecution action as a SLAPP suit.

The trial court denied the motion having no merit. The court of appeal reversed the decision holding that the trial court erred in finding that Plumley has the probability of prevailing on the merits. In order to prevail in a malicious prosecution action, Plumley has to prove that the action was (1) commenced by Mockett and Astor and pursued to a legal termination in Plumley’s favor (2) brought without probable cause (3) initiated with malice. Mockett was able to prove the first but failed to prove probable cause.

The superior court ruling on Mockett’s unfair competition claim, relied on by Plumley in the trial court did not establish lack of probable cause to initiate interference. The issue of the two cases initiated by Mockett was different. The first was whether Plumley misappropriated Mockett’s invention and the second was whether Mockett has reasonable cause to believe that Plumley has done so. The superior court found that collateral estoppel does not apply. The trial court and Plumley failed to recognize the difference between unsuccessful litigation and unmeritorious litigation.

Mockett and his attorney are not required to pay penalty of tort liability to attempt to predict how a trier of fact will weigh the competing evidence or to abandon their claim if they think the evidence will ultimately weigh against them. The denial of Mockett’s unfair competition claim does not establish that his claim is without merit and he acted tortuously in filling another action.

The court rejected Plumleys other arguments and remanded the case to the trial court with directions to grant Mockett and his attorney to strike and to enter judgment in their favor.