The opinion of the court was delivered by: Penn, District Judge.
This matter is before the Court on plaintiff's Motion for
Leave to File a First Amended Complaint Substituting Uniboard
Aktiebolag for Hakan Lans as Plaintiff and defendant's Motion for
Summary Judgment due to Lack of Standing. For the reasons set
forth below, plaintiff's motion for leave to file a first Amended
Complaint substituting plaintiffs is denied and defendant's
motion for summary judgment is granted.
Plaintiff Hakan Lans ("Lans") was issued the patent*fn1 which
is the subject of this infringement suit on December 1, 1981.
See Declaration of Hakan Lans ("Lans Decl.") at ¶ 2. In 1996
Lans advised defendant, as well as several other technology
companies, of alleged infringements of United States Patent No.
4,303,986 ("'986 patent"). When defendant failed to refrain from
the alleged infringement, as well as compensate him for it, Lans
commenced the present action in his own name on October 24, 1997.
During the normal course of discovery, defendant discovered
that, on October 19, 1989, Lans had executed an "Assignment and
Declaration" in which he
sold, assigned and transferred to Uniboard Aktiebolag
("Uniboard" or "Uniboard AB")*fn2, a Swedish
corporation, all [his] right, title and interest in
and to United States Patent No. 4,303,986 and all
patents and patent applications of other countries
corresponding to said United States patent, together
with the right to sue third parties in respect of any
infringement of any of said patents and patent
applications which infringement has occurred prior to
the date of this assignment. [Furthermore] the said
Uniboard Aktiebolag is now the sole owner of said
United States patent and
said patents and patent applications of other
countries corresponding thereto.
Assignment and Declaration (attached to Plaintiff Hakan Lans'
Motion for Leave to File a First Amended Complaint Substituting
Uniboard Aktiebolag for Hakan Lans as Plaintiff ("Lans Motion for
Leave to Amend") (filed Aug. 24, 1999)).*fn3
Prior to filing his motion for leave to amend by substituting
plaintiffs, Lans had denied that the '986 patent had ever been
assigned. Lans's original complaint made no mention of Uniboard
or any assignment. During discovery, Lans appeared to resist
disclosing any information that would cast doubt on his status as
patentee. For example, in response to an interrogatory filed in a
related case,*fn4 Lans declared that "[t]here has been no
assignment of the '986 patent." Hakan Lans' Responses to Compaq
Computer Corporation's First Set of Interrogatories as adopted by
Gateway 2000, Inc. (attached to Opposition of Defendant Gateway
2000, Inc. to Plaintiff Hakan Lans' Motion for a Recommendation
to Modify the Joint Discovery Order (filed Sept. 10, 1999)) at 8.
Furthermore, that same interrogatory response indicates that Lans
was the party licensing the patent to IBM, when in fact Uniboard
was the licensor in the transaction. Id.
Apparently, even when confronted with defendant's repeated
discovery requests surrounding any assignment, Lans neglected to
inform even his attorneys that an assignment had taken place.
See Declaration of Louis S. Mastriani in Support of Emergency
Motion for Extension of Time to Respond to Motions by Gateway
("Mastriani Decl.") (dated Aug. 13, 1999) at ¶ 3("Inasmuch as I
and other counsel to Mr. Lans have been repeatedly informed by
Mr. Lans that no assignment had ever taken place with respect to
the ['986] patent. . ."). Finally, after being confronted by
defendant with a copy of the assignment, "Lans recalled that he
had signed the document approximately ten years ago in the
context of granting a license to IBM under the Lans patent. As
such, Mr. Lans now understands that the patent is owned by his
wholly-owned company, Uniboard." Lans Motion for Leave to Amend
As a result of the assignment, Lans is now asking the Court for
leave to amend his complaint to substitute Uniboard as the
plaintiff. Defendant alleges that since Lans is not the owner of
the patent, he has no standing to sue for its infringement or to
motion to substitute parties. Defendant has asked the Court to
grant summary judgment against Lans due to a lack of
The Court begins with Lans's motion to substitute Uniboard as
plaintiff. Lans relies on two provisions of the Federal Rules of
Civil Procedure to support his motion. Lans relies on Federal
Rule of Civil Procedure 15(a) ("Rule 15(a)"), which generally
prescribes that leave to amend a complaint will be granted freely
when justice so requires. Lans also relies on Federal Rule of
Civil Procedure 17(a) ("Rule 17(a)"), which requires all civil
suits in federal court to be brought in the name of the real
party in interest and provides that "[n]o action shall be
dismissed on the ground that it is not prosecuted in the name of
the real party in interest until a reasonable time has been
allowed after objection for ratification . . . by, or joinder or
substitution of, the real party in interest." The Court will
consider each of these arguments in turn.
Rule 15(a) provides that once a responsive paper has been
filed, a party may amend the pleading only with leave of the
court or with the written consent of the adverse party.
[The] grant or denial of an opportunity to amend is
within the discretion of the district court, but
outright refusal to grant the leave without any
justifying reason appearing for the denial is not an
exercise of discretion; it is merely an abuse of that
discretion and inconsistent with the spirit of the
Foman v. Davis, 371 U.S. 178, 182, 83 S.Ct. 227, 230, 9 L.Ed.2d
222 (1962). See also 3 James Wm. Moore, et al., Moore's
Federal Practice ¶ 15.14 (3d ed. 1999) ("Moore's") ("Under
[Foman,] it is an abuse of discretion if the district ...