The opinion of the court was delivered by: John Garrett Penn, District Judge.
Currently pending before the Court are defendants' Motions to Dismiss,
or in the Alternative, for Summary Judgment.*fn1 For the reasons set
forth in this memorandum, the motions to dismiss are granted.
The pertinent background of this case is largely uncontested. Hakan
Lans ("Lans") filed United States Patent No. 4,303,986 ("'986 patent"),
entitled "Data Processing System and Apparatus for Color Graphics
Display," on January 9, 1979. The '986 patent was issued on December 1,
1981, by the United States Patent and Trademark Office. Among other
things, the inventions covered by this patent optimize and accelerate the
color graphics subsystems in contemporary computers. According to
Uniboard's complaint, the '986 patent expired on January 9, 1999.
Complaint at ¶¶ 15, 16, 18.
By letter dated September 27, 1996, Lans advised defendants of alleged
infringements of the '986 patent. Complaint at ¶ 21. When defendants
failed to refrain from the alleged infringement, or seek a settlement of
the dispute, Lans filed suit against the defendants in his own name on
October 24, 1997.*fn2
During the normal course of discovery, Gateway discovered that, on
October 19, 1989, Lans had executed an "Assignment and Declaration" in
sold, assigned and transferred to Uniboard Aktiebolag
("Uniboard" or "Uniboard AB"),*fn3 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
Assignment and Declaration (attached to Consolidated Opposition of
Uniboard Aktiebolag to Motions of Defendants to Dismiss Uniboard's
Complaint Pursuant to Federal Rule of Civil Procedure 12(b)(6), or in
the Alternative for Summary Judgment ("Uniboard's Consolidated
Opposition") (filed Jan. 3, 2000)). See also Complaint at ¶ 17.
On November 23, 1999, this Court granted summary judgment to the
defendants and dismissed the Lans cases for patent infringement. The
basis for dismissal was that Lans conceded that, although he was the
original inventor-patentee, he was no longer the owner of the patent due
to the assignment to Uniboard. See Lans v. Gateway 2000, Inc.,
84 F. Supp.2d 112, 114 (D.D.C. 1999). As such, the Court concluded that
Lans lacked standing to sue for the patent's infringement. Id., at 123.
The Court also denied Lans's motion to amend the complaint in order to
substitute Uniboard as plaintiff See Id., at 115-22.
Upon dismissal of the Lans cases, Lans and Uniboard embarked on two
separate tracks, although they both continued to be represented by the
same counsel. First, Lans, in his personal capacity, filed an appeal of
the Court's dismissal of the Lans cases with the United States Court of
Appeals for the Federal Circuit ("Federal Circuit") on December 22, 1999.
Furthermore, on January 24, 2000, Lans filed motions under Federal Rule
of Civil Procedure 60(b)(2) ("Rule 60(b)(2)"), requesting relief from
judgment due to the discovery of new evidence.*fn4 Finding that the new
evidence submitted by Lans did not satisfy the requirements of Rule 60
(b)(2), the Court denied those motions. It is the Court's understanding
that Lans has subsequently appealed those rulings to the Federal Circuit
Second, on November 29, 1999, Uniboard filed its own patent
infringement action against the eight defendants from the Lans cases.*fn6
On December 23, 1999, defendant Gateway filed a motion to dismiss for
failure to state a claim. As noted above, each of the other defendants
adopted Gateway's motion. With the motion fully briefed, the Court held
oral arguments on June 7, 2000.
In response to Uniboard's complaint, defendant Gateway filed a motion
to dismiss for failure to state a claim. Gateway's theory is that
Uniboard can only collect damages for the period of infringement after
the date on which Uniboard provided actual notice of the infringement.
Gateway alleges that this date is November 29, 1999, the date on which
the Uniboard suit was filed. Since the patent expired on January 9,
1999, there is no measurable period of damages, and no injunctive relief
is possible. Therefore, the suit must be dismissed.
Uniboard replies that defendants received actual notice of the
infringement on one of two earlier dates: either September 27, 1996, the
date on which Lans originally wrote to the defendants, or October 24,
1997, the date on which the Lans cases were filed.*fn7 Uniboard alleges
that both of these notices satisfy the notice requirement. Gateway
alleges that neither of these ...