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September 21, 1988


The opinion of the court was delivered by: HUYETT, 3RD


 Presently before the court are the Defendants' Motion to Dismiss for Failure to Join an Indispensable Party, Defendants' Motion for Sanctions Under Rule 37, and Defendants' Motion for a Limited Re-Opening of Discovery. I shall discuss each in turn.

 Motion to Dismiss for Failure to Join Indispensable Party

 The defendants have moved to dismiss the complaint pursuant to Fed. R. Civ. Pro. 19 for failure to join an indispensable party, namely, the Hammond, Louisiana law firm of Baham, Anderson, and Bennett ("Baham"). *fn1" On May 26, 1982, plaintiff Janice Howes assigned to Baham an undivided half interest in her rights in the multi-lumen catheter at issue in this litigation. The "Assignment of Rights and Patent," a copy of which is appended to the defendants' motion, states that the assignment was made in exchange for the firm's representation in Louisiana litigation in which plaintiff Randolph Howes was contesting Janice Howes' claims to the catheter.

 The defendants assert that Baham, as holders of an undivided one quarter interest in the catheter patent, must be joined as plaintiffs in this action. According to the defendants, the failure to join Baham constitutes both a jurisdictional defect and a violation of Fed.R.Civ.Pr. 19.

 The defendants argue that under Waterman v. MacKenzie, 138 U.S. 252, 34 L. Ed. 923, 11 S. Ct. 334 (1891), all co-owners of a patent must be joined in order for a patent infringement suit to proceed. However, as this Court has stated, the adoption of the 1966 amendments to Rule 19 "makes inappropriate any contention that patent co-owners are per se indispensable in infringement suits." Catanzaro v. International Telephone and Telegraph Corp., 378 F. Supp. 203 (E.D.Pa. 1974); see also Tycom Corp. v. Redactron Corp., 380 F. Supp. 1183 (D.Del. 1974). The Advisory Committee Notes accompanying the 1966 amendments make clear that the changes to the rule were designed to "state affirmatively" the relevant factors in determining whether an action should be dismissed when joinder of interested persons is not feasible. The Committee observed that

courts did not undertake the relevant inquiry or were misled by the "jurisdiction" fallacy. In other instances there was undue preoccupation with abstract classification of rights or obligations, as against consideration of the particular consequences of proceeding with the action and the ways by which those consequences might be ameliorated by the shaping of final relief or other precautions.

 The Supreme Court, in Provident Tradesmens Bank & Trust Co. v. Patterson, 390 U.S. 102, 19 L. Ed. 2d 936, 88 S. Ct. 733 (1968), essentially adopted the view of the Advisory Committee.

The decision whether to dismiss (i.e., the decision whether the person missing is "indispensable") must be based on factors varying with the different cases, some such factors, being substantive, some procedural, some compelling by themselves, and some subject to balancing against opposing interests. Rule 19 does not prevent the assertion of compelling substantive interests; it merely commands the courts to examine each controversy to make certain that the interests really exist. To say that the court "must" dismiss in the absence of an indispensable party and that it "cannot proceed" without him puts the matter the wrong way around: a court does not know whether a particular person is "indispensable" until it has examined the situation to determine whether it can proceed without him.

 390 U.S. at 118-19; see also Catanzaro, supra, 378 F. Supp. at 205.

 Under its new formulation, Rule 19 "requires courts to face squarely the pragmatic substantive and procedural considerations which properly should be controlling in determining whether a party is needed for the just adjudication of a case . . . Rule 19 teaches that whether or not a party is indispensable is the conclusion, not the starting point, of legal analysis." Tycom Corp., supra, 380 F. Supp. at 1186.

 Thus, in determining whether this action may proceed in the absence of Baham, the Court must consider the factors laid out in Rule 19, which provides, in relevant part:

(a) Persons to be Joined if Feasible. A person who is subject to service of process and whose joinder will not deprive the court of jurisdiction over the subject matter of the action shall be joined as a party to the action if
(1) in the person's absence complete relief cannot be accorded among those already parties, or
(2) the person claims an interest relating to the subject of the action and is so situated that the disposition of the action in the person's absence may (i) as a practical matter impair or impede the person's ability to protect that interest or (ii) leave any of the persons already parties subject to a substantial risk of incurring double, multiple, or otherwise inconsistent obligations by reason of the claimed interest.
If the person has not been so joined, the court shall order that the person be made a party. If the person should join as a plaintiff but refuses to do so, the person may be made a defendant, or, in a proper case, an involuntary plaintiff . . .
(b) Determination by Court Whenever Joinder not Feasible. If a person as described in subdivision (a)(1)-(2) hereof cannot be made a party, the court shall determine whether in equity or good conscience the action should proceed among the parties before it, or should be dismissed, the absent person being thus ...

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