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LANS v. GATEWAY 2000

November 23, 1999

HAKAN LANS, PLAINTIFF,
v.
GATEWAY 2000, INC., DEFENDANT.



The opinion of the court was delivered by: Penn, District Judge.

MEMORANDUM

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.

BACKGROUND

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 at 3.*fn5

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 standing.*fn6

DISCUSSION

I.

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.

A.

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
  Federal Rules.

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 ΒΆ 15.14[2] (3d ed. 1999) ("Moore's") ("Under [Foman,] it is an abuse of discretion if the district ...


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