United States District Court, E.D. Pennsylvania
patent infringement case, plaintiff Midwest Athletics and
Sports Alliance, LLC (MASA) moves for leave to file a second
amended complaint to add an averment that it had been
assigned two terminal disclaimer patents necessary to enforce
three of the patents allegedly infringed. Defendant Ricoh
USA, Inc. (Ricoh) argues the proposed amendment would be
futile because MASA lacks standing to enforce the patents
subject to the terminal disclaimers because it did not
commonly own the disclaimers with the patents when it filed
this lawsuit. Ricoh also moves for judgment on the pleadings
on MASA's claims for infringement of the patents subject
to the disclaimers. MASA replies that the assignment
“confirmed” that it owned the terminal
disclaimers, curing any standing defect.
conclude that MASA lacks standing to assert infringement of
the subject patents because it did not own the terminal
disclaimers to which they are subject when it initiated this
action. Therefore, we shall deny MASA's motion for leave
to amend and grant Ricoh's motion for judgment on the
patents at issue are U.S. Patent Nos. 7, 502, 582 (‘582
Patent); 7, 720, 425 (‘425 Patent); and 8, 005, 415
(‘415 Patent) (collectively, Pentachrome Patents); and
U.S. Patent Nos. 7, 236, 734 (‘734 Patent) and 7, 340,
208 (‘208 Patent) (together, Terminal Disclaimer
Patents). Eastman Kodak Company (Kodak), the prior owner of
the Pentachrome Patents, overcame double patenting rejections
by terminally disclaiming them to the Terminal Disclaimer
Patents. Specifically, the ‘582 and
‘425 Patents were disclaimed to both Terminal
Disclaimer Patents, and the ‘415 Patent was terminally
disclaimed to the ‘734 Patent. Each of the terminal
disclaimers contained the same language:
The owner hereby agrees that any patent so granted on the
instant application shall be enforceable only for and during
such period that it and [the associated Terminal Disclaimer
Patent(s)] are commonly owned. This agreement runs with any
patent granted on the instant application and is binding upon
the grantee, its successors or assigns.
December 9, 2016, Kodak assigned the Terminal Disclaimer
Patents to Commercial Copy Innovations, Inc.
(CCI). On June 29, 2017, Kodak assigned the
Pentachrome Patents to MASA. MASA filed its complaint on
January 5, 2018. Two and a half months later, on April 18,
2019, CCI assigned the Terminal Disclaimer Patents to
to amend a pleading is freely granted “when justice so
requires.” Shane v. Fauver, 213 F.3d 113,
115-17 (3d Cir. 2000) (quoting Fed.R.Civ.P. 15(a));
Berkshire Fashions, Inc. v. M.V. Hakusan II, 954
F.2d 874, 886-87 (3d Cir. 1992). Factors considered are undue
delay, bad faith or dilatory motive on the part of the
movant, repeated failure to cure deficiencies by previously
allowed amendments, undue prejudice to the opposing party,
and futility of the amendment. Foman v. Davis, 371
U.S. 178, 182 (1982). Futility alone can be a reason to deny
a motion to amend a complaint. Futility means that after
amendment, the complaint would still fail to state a claim.
In re Alpharma Sec. Litig., 372 F.3d 137, 153 (3d
Cir. 2004) (quoting In re Burlington Coat Factory,
114 F.3d 1410, 1434 (3d Cir. 1997)). Thus, leave to amend
will be denied where the proffered amendments fail to cure
the deficiencies in the earlier complaint. Winer Family
Tr. v. Queen, 503 F.3d 319, 331-34 (3d Cir. 2007).
deciding a motion for judgment on the pleadings made pursuant
to Rule 12(c), we consider the facts alleged in the pleadings
and documents attached as exhibits or incorporated by
reference in the pleadings. See Fed. R. Civ. P.
12(c); Commercial Money Ctr., Inc. v. Ill. Union Ins.
Co., 508 F.3d 327, 335 (6th Cir. 2007); cf.
Steinhardt Grp. Inc. v. Citicorp, 126 F.3d 144, 145
& n.1 (3d Cir. 1997) (in Rule 12(b)(6) context). All the
well-pleaded factual assertions in the non-movant's
pleadings are accepted as true and all contrary allegations
in the movant's pleadings are disregarded. Zimmerman
v. Corbett, 873 F.3d 414, 417-18 (3d Cir. 2017). To
prevail, the movant must clearly establish that there are no
material issues of fact and that it is entitled to judgment
as a matter of law. Bedoya v. Am. Eagle Express
Inc., 914 F.3d 812, 816 (3d Cir. 2019).
standing to assert patent infringement under 35 U.S.C. §
271, a plaintiff must demonstrate that it held enforceable
title to the patent at the inception of the lawsuit.
Abraxis Bioscience, Inc. v. Navinta LLC, 625 F.3d
1359, 1364 (Fed. Cir. 2010); Paradise Creations, Inc. v.
UV Sales, Inc., 315 F.3d 1304, 1309 (Fed. Cir. 2003). If
the plaintiff did not hold enforceable title, the suit must
be dismissed. The jurisdictional defect cannot be cured by
the purchase of an interest in the patent after the suit was
initiated. Schreiber Foods, Inc. v. Beatrice Cheese,
Inc., 402 F.3d 1198, 1203 (Fed. Cir. 2005) (citing
Gaia Techs., Inc. v. Reconversion Techs., Inc., 93
F.3d 774, 780 (Fed. Cir. 1996)).
enforce a patent subject to a terminal disclaimer filed to
obviate a double patenting rejection, the plaintiff must also
own the disclaimer patent. 37 C.F.R. § 1.321(c)(3);
see also In re Hubbell, 709 F.3d 1140, 1148 (Fed.
Cir. 2013) (citing In re Fallaux, 564 F.3d 1313,
1319 (Fed. Cir. 2009)). A plaintiff who does not also own the
terminal disclaimer patent lacks standing to bring an
infringement claim. In re Certain Digital Cable &
Satellite Prods., Set-Top Boxes, Gateways & Components
Thereof, Inv. No. 337-TA-1049, 2017 WL 6350230, at *9
(USITC Oct. 19, 2017); see also LG Philips LCD Co., Ltd.
v. Tatung Co. of Am., No. 02-6775, at 10, 11 n.4 (C.D.
Cal. Sept. 19, 2005) (fifty-percent ownership in terminal
disclaimer patent insufficient) (Doc. No. 99-11). The
plaintiff may not cure this defect by acquiring the terminal
disclaimer patent and amending its ...