Randolh-Rand v. Shafmaster Co., et al

• Court: District Court, D. New Hampshire
• Decided: January 13, 1998
• Docket: CV-97-044-M
• Status: Published

Opinion

Randolh-Rand v. Shafmaster Co., et al CV-97-044-M 01/13/98 UNITED STATES DISTRICT COURT

DISTRICT OF NEW HAMPSHIRE

Randolph-Rand Corporation of New York, Plaintiff

v. Civil No. C-97-44-M

Shafmaster Co., Inc., Leather Loft Stores, Inc., and Import Holdings Corp., Defendants

O R D E R

Randolph-Rand Corporation of New York ("RRC") seeks monetary

damages from and injunctive relief against defendants for their

alleged infringement of United States Patent No. 4,453,294 (the

"'294 patent"), which describes a magnetic lock closure

mechanism. RRC claims that defendants have manufactured, used,

and/or sold magnetic lock closures on certain women's handbags

which are indistinguishable from the invention taught by the '294

patent.

Defendants have moved to dismiss count one of RRC's

complaint, claiming that RRC lacks standing to bring the suit and

has failed to join an indispensable party. See Fed. R. Civ. P.

12(b)(6) and (7). They say that RRC lacks the legal authority to

enforce the '294 patent and, because it has not joined the

patent's owner in this action, its infringement claim should be dismissed. They also claim that Shafmaster and Import Holdings

are improper parties to this action. RRC objects.

Standard of Review

A motion to dismiss under Fed. R. Civ. P. 12(b) (6) is one of

limited inquiry, focusing not on "whether a plaintiff will

ultimately prevail but whether the claimant is entitled to offer

evidence to support the claims." Scheuer v. Rhodes, 416 U.S.

232, 236 (1974). In considering a motion to dismiss, "the

material facts alleged in the complaint are to be construed in

the light most favorable to the plaintiff and taken as admitted,

with dismissal to be ordered only if the plaintiff is not

entitled to relief under any set of facts he could prove."

Chasan v. Village District of Eastman, 572 F.Supp. 578, 579

(D.N.H. 1983), aff'd without opinion, 745 F.2d 43 (1st Cir. 1984)

(citations omitted).

Discussion

Although defendants' motion is captioned as a motion to

dismiss, both parties have submitted and relied upon materials

outside the pleadings. Arguably, the court might simply convert

defendants' motion into one for summary judgment, without

affording the parties any further opportunity to supplement their

submissions. See, e.g., Puerto Rican-American Ins. Co. v.

Beniamin Shipping Co., 829 F.2d 281, 285 (1st Cir. 1987) (when

there is "no unfair surprise and plaintiffs [had] ample

2 opportunity to provide the court with any relevant information

outside the pleadings," the court may properly convert the motion

to one for summary judgment without notice to the parties).

However, the better practice certainly seems to be one in

which the parties are afforded notice and opportunity to submit

any materials relevant under Rule 56. See EEOC v. Green 76 F.3d

19, 24 (1st Cir. 1996). Moreover, even though RRC has implicitly

treated defendants' motion as one for summary judgment (by itself

submitting materials outside the pleadings) , it has specifically

reguested additional time to respond if the court should convert

defendants' motion to one for summary judgment. See Plaintiff's

Memorandum in Opposition to Motion to Dismiss, at 1 n.l.

Accordingly, considerations of eguity and fairness counsel in

favor of treating defendants' motion as one to dismiss and,

therefore, not considering any materials outside the pleadings.

Having determined that it will not consider materials

outside the pleadings, the court is constrained to deny

defendants' motion to dismiss. The allegations set forth in the

complaint, if credited as true, support the conclusion that: (1)

RRC holds the exclusive rights to use, enforce, and sell the '294

patent; and (2) one or more of the defendants has unlawfully

infringed those rights. Accordingly, RRC has alleged sufficient

facts to support a finding that it has standing to assert its

claims against defendants.

3 Conclusion

In light of the foregoing, defendants' motions to dismiss

(document nos. 6 and 7) are denied.

Although the court has not relied upon them in ruling upon

the pending motions, the materials outside the pleadings

submitted by the parties suggest that RRC may not be able to

survive a motion for summary judgment on the issue of standing.

Absent additional rights in the '294 patent beyond those

conferred by the January 26, 1994, agreement between Amsco and

RRC, RRC may lack standing to assert patent claims against

defendants. See generally Ortho Pharmaceutical Corp. v. Genetics

Institute, Inc., 52 F.3d 1026 (Fed. Cir. 1995); see also D.S.

Chisum, 8 Chisum on Patents, § 21.03[2][e] ("Standing to sue for

infringement has traditionally been confined to those with an

ownership interest in the patent at the time of the infringement.

Hence, a contract that purports to convey the right to sue

without also conveying such an ownership interest will be

ineffective to confer standing"). Accordingly, in responding to

any future motion for summary judgment on the issue of standing,

RRC should carefully and thoroughly support (both factually and

legally) its claimed right to bring this patent infringement

action in its own name. Alternatively, it should move to amend

its complaint and join as plaintiffs whatever additional parties

are necessary or appropriate.

4 SO ORDERED.

Steven J. McAuliffe United States District Judge

January 13, 1998

cc: Michael J. Bujold, Esq. Jeffery A. Schwab, Esq. James E. Higgins, Esq. Norman H. Zivin, Esq.