United States District Court

for the

Southern District of Florida

DeCurtis LLC, Plaintiff,

v.

Carnival Corporation, Defendant.

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Civil Action No. 20-22945-Civ-Scola

_______________________________________________________________________________

Carnival Corporation, Plaintiff,

v.

DeCurtis Corporation and DeCurtis 

LLC, Defendants.

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Consol. Case No. 20-21547-Civ-Scola

Order Regarding Magistrate Judge’s 

Reports and Recommendations as to Motions to Dismiss

In these consolidated cases, the parties’ grievances against one another 

stem primarily from alleged intellectual-property rights related to portable 

devices aimed at enhancing guest engagement in various tourism venues. 

Carnival Corporation seeks redress against DeCurtis Corporation and DeCurtis 

LLC (singularly or collectively, “DeCurtis”) for breach of contract, trade secret 

misappropriation, and patent infringement (Carnival’s 2nd Am. Compl., ECF No. 

88). DeCurtis, conversely, in its complaint, seeks declaratory relief as to noninfringement and unenforceability, and damages based on unfair competition, 

tortious interference, and antitrust violations (DeCurtis’s Am. Compl., ECF No. 

87). This matter was referred to United States Magistrate Judge Edwin G. 

Torres for a ruling on all pre-trial, nondispositive matters, and for a report and 

recommendation on any dispositive matters. (ECF No. 102.) Judge Torres has 

issued two reports and recommendations, recommending that the parties’ 

respective motions to dismiss be granted in part and dismissed in part (Rep. & 

Rec. on DeCurtis’s Mot. to Dismiss, ECF No. 120; Rep. & Rec. on Carnival’s 

Mot. to Dismiss, ECF No. 128). Both parties have objected to Judge Torres’s 

recommendations that portions of their respective complaints be dismissed 

(Carnival’s Objs., ECF No. 124; DeCurtis’s Objs., ECF No. 131). Both parties 

have also, in turn, timely responded to those objections (DeCurtis’s Resp., ECF 

No. 127; Carnival’s Resp., ECF No. 134). After reviewing the filings, the 

applicable law, and the record, the Court adopts Judge Torres’s reports and 

recommendations, in large part, modifying them, however, to the extent 

explained in more detail, below (ECF Nos. 120, 128). Accordingly, and for the 

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following reasons, the Court grants and part and denies in part the parties’ 

respective motions to dismiss (ECF Nos. 94, 95).

1. Background

DeCurtis is a technology company that designs and manufactures 

systems using wireless communications, small portable devices, and custom 

software to assist businesses—for example, cruise lines and restaurants—in 

improving their guests’ experiences. Carnival is the world’s largest and leading 

cruise vacation company. DeCurtis worked with Carnival, beginning in 2014, 

under the terms of a master services agreement, as Carnival sought to 

continue to develop or enhance its wireless guest-engagement system through 

an endeavor Carnival refers to as Project Trident. After Carnival and DeCurtis 

parted ways, in March 2017, Carnival began filing applications for, and later 

obtained, several patents related to Project Trident. Following approval of the 

patents, press reports came to Carnival’s attention indicating that DeCurtis 

was potentially selling similar technology to certain Carnival competitors. 

Carnival thereafter contacted DeCurtis, Norwegian Cruise Line, and Virgin 

Voyages, the latter two both Carnival competitors, about those reports while 

informing them of Carnival’s Project Trident patent portfolio. 

In response, on April 8, 2020, DeCurtis filed a complaint in the Middle 

District of Florida and then, two days later, Carnival sued DeCurtis in this 

Court. A few months later, the Middle District transferred DeCurtis’s case here 

and the two suits were subsequently consolidated. Carnival has amended its 

complaint twice; DeCurtis, once.

2. Standard of Review

“In order to challenge the findings and recommendations of the 

magistrate judge, a party must file written objections which shall specifically 

identify the portions of the proposed findings and recommendation to which 

objection is made and the specific basis for objection.” Macort v. Prem, Inc., 208 

F. App’x 781, 783 (11th Cir. 2006) (quoting Heath v. Jones, 863 F.2d 815, 822 

(11th Cir.1989) (cleaned up). The objections must also present “supporting 

legal authority.” Local Mag. J. R. 4(b). Once a district court receives “objections 

meeting the specificity requirement set out above,” it must “make a de novo

determination of those portions of the report to which objection is made and 

may accept, reject, or modify in whole or in part, the findings or 

recommendations made by the magistrate judge.” Macort, 208 F. App’x at 783–

84 (quoting Heath, 863 F.2d at 822) (cleaned up). To the extent a party fails to 

object to parts of the magistrate judge’s report, those portions are reviewed, at 

Case 1:20-cv-22945-RNS Document 144 Entered on FLSD Docket 04/20/2021 Page 2 of 9
a minimum, for clear error. Macort, 208 F. App’x at 784 (quoting Johnson v. 

Zema Sys. Corp., 170 F.3d 734, 739 (7th Cir.1999)). A court, in its discretion, 

need not consider arguments that were not, in the first instance, presented to 

the magistrate judge. Williams v. McNeil, 557 F.3d 1287, 1291 (11th Cir. 2009).

3. Analysis

The Court has carefully reviewed both reports and recommendations. As 

to those portions of the reports to which the parties have objected, the Court 

has made a de novo determination of Judge Torres’s findings and 

recommendations. All other aspects—except for whether the Court will sua 

sponte afford the parties leave to amend and whether the dismissed claims are 

dismissed with or without prejudice—have been reviewed for clear error.

A. DeCurtis’s Motion to Dismiss Carnival’s Complaint

In its motion to dismiss, DeCurtis contends counts one through five of 

Carnival’s complaint should be dismissed in their entireties. DeCurtis says 

Carnival’s breach-of-contract claim, count one, should be dismissed based on 

the plain language of the parties’ agreement and related correspondence; 

Carnival’s trade-secret misappropriation claims, counts two and three, should 

be dismissed because they are based on “amorphous, ill defined ‘trade secrets’ 

that overlap entirely with [the allegedly infringed patents]”; and Carnival’s 

allegation of infringement of the ’184 patent, in count four, should be 

dismissed because it is directed to ineligible subject matter under 35 U.S.C. § 

101 and fails to adequately plead direct infringement or infringement under 35 

U.S.C § 271(f). (DeCurtis’s Mot. at 2.) As to counts five and six, infringement of 

Carnival’s ’516 and ’514 patents, respectively, DeCurtis argues each should be 

dismissed in part: count five because it fails to adequately plead indirect 

infringement (neither induced nor contributory); and count six because it fails 

to plead infringement under 35 U.S.C. § 271(f). (Id.)

After a thorough review, Judge Torres recommended denying DeCurtis’s 

motion with respect to Carnival’s breach of contract claim (count one) and its 

claims of infringement of Carnival’s ’184 and ’514 patents (counts four and 

six). Judge Torres also recommended denying DeCurtis’s motion with respect 

to DeCurtis’s arguments that count five’s induced infringement allegations 

should be dismissed. Neither party objects to Judge Torres’s recommendations 

as to those denials. 

On the other hand, Judge Torres recommended granting DeCurtis’s 

motion with respect to Carnival’s trade secret allegations, as well as Carnival’s 

allegation’s as to DeCurtis’s contributory infringement of the ’516 patent. 

Case 1:20-cv-22945-RNS Document 144 Entered on FLSD Docket 04/20/2021 Page 3 of 9
Judge Torres, thus, recommended granting DeCurtis’s motion to dismiss 

counts two and three and part of count five. Carnival objects. With respect to 

Judge Torres’s recommendation that Carnival’s trade secret claims be 

dismissed, Carnival complains Judge Torres erred by (1) applying the wrong 

legal standard; (2) failing to accept Carnival’s factual allegations as true; (3) 

drawing inferences against Carnival; and (4) failing to recognize that Carnival’s 

allegations are at least as detailed as the allegations approved of by numerous 

other federal courts. (Carnival’s Objs. at 2–3.) Carnival also complains that 

Judge Torres erred in recommending dismissal of its contributory infringement 

claim, as part of count five, because he focused solely on one paragraph of 

Carnival’s complaint, ignoring other allegations that give rise to a plausible 

claim for contributory infringement. After careful de novo review, the Court 

overrules Carnival’s objections.

First, the Court disagrees with Carnival’s assessment that Judge Torres 

applied the wrong standard in evaluating Carnival’s trade-secret claims. 

Carnival references an unpublished decision from the Eleventh Circuit as 

providing guidance to courts evaluating such claims. Quoting that case, 

Carnival says, “‘[A]t the dismissal stage in federal court, the plaintiff need only 

allege sufficient facts to plausibly show a trade secret was involved’ and to give 

a defendant fair notice of the claims.” (Carnival’s Objs. at 5 (quoting DynCorp 

Int’l v. AAR Airlift Group, Inc., 664 Fed. App’x 844, 848 (11th Cir. 2016)).) The 

Court finds no conflict, though, between Carnival’s framing of the standard and 

Judge Torres’s. Judge Torres, in his report, unambiguously agreed that 

“DynCorp is instructive on how to determine if a plaintiff meets this standard.” 

(Rep. & Rec. re DeCurtis’s Mot. at 12.) Indeed, Judge Torres quoted the very 

same language that Carnival now highlights. In sum, the Court agrees with 

Judge Torres regarding the applicable standard: there is no error in requiring a 

plaintiff to provide “some specifics” in order to state a claim for the 

misappropriation of trade secrets.

Next, the Court also finds unavailing Carnival’s complaints about the 

way Judge Torres viewed or interpreted Carnival’s allegations. That is, the 

Court does not find that Judge Torres failed to accept the allegations as true; 

drew improper adverse inferences; or failed to recognize that Carnival’s 

allegations were on par with allegations deemed sufficient by other courts. To 

the contrary, upon its own de novo review of the entirety of the complaint, the 

Court agrees with Judge Torres that the allegations in the complaint provide

that “everything connected to Project Trident constitutes a trade secret” (id. at 

16–17 (emphasis added)) without identifying with any specificity what it was 

that DeCurtis, among this universe of information, misappropriated. To be 

sure, “‘all information’ concerning a product is not a trade secret.” VVIG, Inc. v. 

Case 1:20-cv-22945-RNS Document 144 Entered on FLSD Docket 04/20/2021 Page 4 of 9
Alvarez, 18-23109-CIV, 2019 WL 5063441, at *4 (S.D. Fla. Oct. 9, 2019)

(Altonaga, J.). Further, even if it is, listing the universe of information 

associated with a product fails to notify DeCurtis as to any one trade secret, in 

particular, it is being accused of misappropriating. See VVIG, 2019 WL 

5063441, at *4 (“Couching specific terms within a sweeping definition is 

insufficient to state a trade secret claim because doing so fails to notify 

[d]efendants which trade secret or secrets they allegedly misappropriated.”)

(emphasis in original). Thus, while many of the allegations highlighted by 

Carnival, in its objections, certainly identify specific trade secrets, with 

adequate detail, none of those allegations sufficiently identifies which trade 

secrets DeCurtis is actually being accused of misappropriating. 

Finally, the Court finds Carnival’s contention that Judge Torres erred in 

dismissing Carnival’s contributory infringement claim, in count five, misses the 

mark. Carnival takes issue with Judge Torres’s conclusion that Carnival failed 

to allege facts showing that the components at issue have no substantial noninfringing uses. According to Carnival, Judge Torres erred by failing to take 

into account allegations that affirmatively described the infringing product as 

being “designed to work with the Band.” (Carnival’s Objs. at 14 (quoting 

Carnival’s 2nd Am. Compl. ¶ 164).) But, simply because a component has been 

“especially made or especially adapted,” it does not necessarily follow, then, 

without more, that the component is categorically not suitable for any 

substantial non-infringing use. (Carnival’s 2nd Am. Compl. ¶ 167.) In short, 

Carnival’s allegations do not supply any factual information that would allow 

the Court to infer that the components are actually incapable of working 

together in a system that avoids infringement of the remaining claim 

limitations. See In re Bill of Lading Transmission & Processing Sys. Patent Litig., 

681 F.3d 1323, 1337 (Fed. Cir. 2012) (“To state a claim for contributory 

infringement, therefore, a plaintiff must, among other things, plead facts that 

allow an inference that the components sold or offered for sale have no

substantial non-infringing uses.”) (emphasis added).

In sum, then, based on its own de novo review, the Court agrees with 

Judge Torres that Carnival has failed to state a claim for trade-secret 

misappropriation and for contributory infringement as set forth in counts two, 

three, and five.

B. Carnival’s Motion to Dismiss DeCurtis’s Complaint

In its motion to dismiss DeCurtis’s complaint, Carnival urges the Court 

to dismiss, based on a lack of subject-matter jurisdiction, four of DeCurtis’s 

counts (one, eight, nine, and ten) in which DeCurtis seeks declaratory relief 

regarding various Carnival patents. Carnival also seeks dismissal, based on a 

Case 1:20-cv-22945-RNS Document 144 Entered on FLSD Docket 04/20/2021 Page 5 of 9
failure to state a claim, of DeCurtis’s claims regarding monopolization, 

attempted monopolization, tortious interference, and unfair competition 

(counts two through five). More specifically, Carnival argues DeCurtis fails to 

state a claim for fraud on the United States Patent Office; DeCurtis’s antitrust, 

tortious interference, and unfair competition claims run afoul of the patent 

privilege and the Noerr-Pennington doctrines; and DeCurtis’s antitrust claim

also fails to properly plead either market power or competitive injury. 

After a thorough review, Judge Torres recommended denying Carnival’s 

motion, in part, finding a number of Carnival’s arguments unavailing. To begin 

with, Judge Torres disagreed with Carnival’s argument that DeCurtis’s claims 

of fraud on the Patent Office, as set forth in counts one through five, should be 

dismissed to the extent they are based on allegations that Carnival omitted Mr. 

DeCurtis as a named inventor in prosecuting its patents. Judge Torres also 

disagreed with Carnival’s assessment that DeCurtis failed, in its antitrust 

claims, to sufficiently allege monopoly, market power, or anti-competitive 

effects. Finally, Judge Torres also rejected Carnival’s position that DeCurtis’s 

antitrust, tortious interference, and unfair competition claims (counts two 

through five) are barred under the patent privilege and the Noerr-Pennington 

doctrines. Neither party objects to Judge Torres’s recommendations on any of 

these bases.

At the same time, Judge Torres recommended granting Carnival’s motion 

with respect to a lack of subject-matter jurisdiction over DeCurtis’s requests for 

declaratory relief in counts one, eight, nine, and ten. Judge Torres also agreed 

with Carnival that DeCurtis failed to allege claims based on prior-art fraud, as 

set forth as parts of counts one through five. DeCurtis objects to these aspects 

of Judge Torres report. In objecting to Judge Torres’s finding as to a lack of 

subject-matter jurisdiction, DeCurtis complains Judge Torres failed to take into 

account the combined and cumulative effect of Carnival’s communications,

instead improperly considering them individually, in isolation from one 

another.1 (DeCurtis’s Objs. at 5.) Additionally, DeCurtis protests Judge Torres’s 

finding that DeCurtis’s prior-art allegations lack sufficient specificity to survive 

1 DeCurtis also, in a footnote, notes that Carnival does not challenge jurisdiction with respect 

to the declaratory relief requested in counts six and seven since those counts deal with patents 

that Carnival has now asserted in its own complaint. (DeCurtis’s Objs. at 4 n. 4.) Accordingly, 

says DeCurtis, the Court should apply the same rationale to count one, at least as that count 

relates to the ’184, ’514, and ’516 patents. (Id.) DeCurtis offers no explanation, however, as to 

why it failed to raise this issue before Judge Torres, in the first instance. Accordingly, the Court 

declines to take up this issue, now, especially given DeCurtis’s cursory treatment of it in its 

objections. See Williams, 557 F.3d at 1292 (“[A] district judge has discretion to decline to 

consider a party’s argument when that argument was not first presented to the magistrate 

judge.”).

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dismissal. (Id. at 9.) After careful de novo review, the Court overrules 

DeCurtis’s objections.

First, as to DeCurtis’s criticism as to the manner in which Judge Torres 

evaluated Carnival’s communications, the Court is not persuaded. Judge 

Torres’s analysis of the communications was comprehensive and allencompassing, spanning some twelve pages of assessment. (Rep. & Rec. as to 

Carnival’s Mot. at 10–22.) The Court has also reviewed the communications 

itself, de novo, along with the relevant case law, cited by both Judge Torres and 

the parties, and fully agrees with Judge Torres’s conclusion that jurisdiction is 

lacking, for counts one, eight, nine, and ten, “without any reference that a 

dispute exists for any specific patent.” (Id. at 16 (emphasis added), 18 (citing, 

among other cases, Hewlett-Packard Co. v. Acceleron LLC, 587 F.3d 1358, 1363 

(Fed. Cir. 2009), for contrast, where the court there found a dispute justiciable 

where a patentee twice contacted the plaintiff, simultaneously asserting rights 

against specific products under a specific patent).)

Second, the Court also finds DeCurtis’s objections as to Judge Torres’s 

findings regarding DeCurtis’s prior-art fraud allegations unavailing. Judge 

Torres found DeCurtis’s prior-art inequitable-conduct allegations vague, 

confusing, and inadequate in several respects. (Id. at 25 (noting “vague 

references to other systems without any specificity as to how they go hand in 

hand with a fraudulent failure to disclose”) (noting lack of clarity regarding 

DeCurtis’s allegation that Carnival’s patent applications “failed to disclose the 

‘full extent of the prior art systems’”), 27 (finding DeCurtis’s allegations 

“hopelessly vague in explaining the duty to disclose an electronic lock system”) 

(pointing out that DeCurtis’s allegation that the patent examiners could not 

appreciate the full extent of publicly available information failed to specify what 

it was, in particular, that the examiners failed to appreciate), 28 (“[I]t is entirely 

unclear how any of these allegations meet the heightened pleading 

requirements under Rule 9(b)”).) After its own de novo review, the Court agrees

with Judge Torres: “more specificity is required to meet the particularity 

requirements under Rule 9(b).” (Id. at 25–26.) Accordingly, the Court agrees 

that DeCurtis has failed to state a claim based on prior-art fraud, as alleged as 

theories supporting its claims in counts one through five.

4. Conclusion

As set forth above, the Court agrees with the entirety of Judge Torres’s 

substantive conclusions and overrules both Carnival and DeCurtis’s objections.

The Court also finds no clear error with respect to the unobjected to portions of 

the reports. 

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However, the Court has further conducted a de novo review of Judge 

Torres’s recommendation that both parties be afforded leave to amend and his 

determination that all of the dismissed claims should be dismissed without 

prejudice. In his report recommending dismissal of some of Carnival’s claims, 

Judge Torres recommended affording Carnival the opportunity to correct the 

flaws in its second amended complaint. (Rep. & Rec. on DeCurtis’s Mot. at 39.) 

And Carnival, in its objections to Judge Torres’s report, also informs that it “is 

amenable to filing an amended complaint.” (Carnival’s Objs. at 2.) The Court 

notes that Carnival additionally requests “leave to amend any deficiencies 

identified by the Court,” in a footnote, on the last page of its response to 

DeCurtis’s motion to dismiss. (Carnival’s Mot. at 20 n. 11.) Similarly, Judge 

Torres noted, in his report recommending dismissal of some of DeCurtis’s 

claims, that DeCurtis could perhaps “repackage its allegations” or make some 

of its allegations “clearer in an amended complaint.” (Rep. & Rec. on Carnival’s 

Mot. at 21, 25.) 

As to the claims that the Court agrees should be dismissed based on a 

failure to state a claim under Rule 12(b)(6), those claims are dismissed with 

prejudice, rather than without, as recommended by Judge Torres. N.A.A.C.P. v. 

Hunt, 891 F.2d 1555, 1560 (11th Cir. 1990) (“[T]he Supreme Court has clearly 

stated that the dismissal for failure to state a claim under Federal Rule of Civil 

Procedure 12(b)(6) is a judgment on the merits.”) (cleaned up). DeCurtis’s 

counts for declaratory judgment, however, are dismissed for a lack of subjectmatter jurisdiction and so are dismissed without prejudice, as Judge Torres 

recommended. Stalley ex rel. U.S. v. Orlando Reg’l Healthcare Sys., Inc., 524 

F.3d 1229, 1232 (11th Cir. 2008) (“A dismissal for lack of subject matter 

jurisdiction is not a judgment on the merits and is entered without prejudice.”)

Regardless, though, of whether the claims are dismissed with or without 

prejudice, the Court declines to adopt Judge Torres’s recommendation that the 

parties be afforded leave to amend. See Wagner v. Daewoo Heavy Industries 

Am. Corp., 314 F.3d 541, 542 (11th Cir. 2002) (“A district court is not required 

to grant a plaintiff leave to amend his complaint sua sponte when the plaintiff, 

who is represented by counsel, never filed a motion to amend nor requested

leave to amend before the district court.”) Further, to the extent Carnival seeks 

leave to amend, the Court denies those requests, inserted first as an 

afterthought, in its opposition to DeCurtis’s motion to dismiss, and next as a 

kind of suggestion to the Court, in its objections. The requests are both 

procedurally defective and lacking in substantive support. See Newton v. Duke 

Energy Florida, LLC, 895 F.3d 1270, 1277 (11th Cir. 2018) (“[W]here a request 

for leave to file an amended complaint simply is imbedded within an opposition 

memorandum, the issue has not been raised properly.”); Avena v. Imperial 

Case 1:20-cv-22945-RNS Document 144 Entered on FLSD Docket 04/20/2021 Page 8 of 9
Salon & Spa, Inc., 740 Fed. App’x 679, 683 (11th Cir. 2018) (“[W]e’ve rejected 

the idea that a party can await a ruling on a motion to dismiss before filing a 

motion for leave to amend.”) (noting also that “a motion for leave to amend 

should either set forth the substance of the proposed amendment or attach a 

copy of the proposed amendment”) (cleaned up). Further, the deadline for 

amending the pleadings has long since passed so any request for leave to 

amend would be untimely as well.

In sum, then, the Court overrules the parties’ objections (ECF Nos. 

124, 131) and affirms and adopts the entirety of the substance of Judge 

Torres’s reports and recommendations (ECF Nos. 120, 128), modifying them

only to the extent described in the preceding two paragraphs. Accordingly, the 

Court grants DeCurtis’s motion to dismiss to Carnival’s complaint, in part—as 

to counts two and three, in their entireties, and count five, as to contributory 

infringement, with prejudice—and denies it in part, as to the remainder. 

(ECF No. 95.) The Court also grants Carnival’s motion to dismiss DeCurtis’s 

complaint, in part—as to counts one, eight, nine, and ten, without prejudice, 

based on a lack of subject-matter jurisdiction, and as to the prior-art 

allegations of counts one through five, with prejudice—and denies it in part, 

as to the remainder. (ECF No. 94).

The parties must file their respective answers to the complaints on or 

before May 3, 2021.

Done and ordered at Miami, Florida, on April 19, 2021.

________________________________

Robert N. Scola, Jr.

United States District Judge

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