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UNIBOARD AKTIEBOLAG v. ACER AMERICA CORP.

August 31, 2000

UNIBOARD AKTIEBOLAG, PLAINTIFF,
V.
ACER AMERICA CORP., ET AL., DEFENDANTS.



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

MEMORANDUM

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.

BACKGROUND

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 performance of 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 which Lans

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 thereto.

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 as well.*fn5

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.

DISCUSSION

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 ...


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