United States District Court, N.D. Alabama, Eastern Division
002152706 ONTARIO LIMITED and JEC DISTRIBUTORS, INC., Plaintiffs,
CHANGER & DRESSER, INC., Defendant.
MEMORANDUM OPINION AND ORDER
ANNEMARIE CARNEY AXON UNITED STATES DISTRICT JUDGE.
002152706 Ontario Limited and JEC Distributors, Inc.
(“JEC”) initiated this lawsuit against Defendant
Changer & Dresser, Inc. (“Changer &
Dresser”). Plaintiffs allege infringement by Changer
& Dresser of four patents, U.S. Patent Numbers 8, 742,
281; 9, 168, 609; 9, 393, 639; and 9, 757, 814 (the
“patents-in-suit”). This matter is before the
court on Changer & Dresser's motion to dismiss the
fifth amended complaint for lack of standing (doc. 101) and
Plaintiffs' motion to substitute Copperhead Industrial,
Inc. (“Copperhead”) as a party plaintiff in place
of 002152706 Ontario Limited (doc. 103).
reasons explained below, the court GRANTS
Plaintiffs' motion to substitute and GRANTS IN
PART and DENIES IN PART Changer
& Dresser's motion to dismiss.
is a Canadian corporation that distributes automotive
manufacturing industry products, including cap changers, tip
dressers, sensors, weld gun covers, cutter blades and
holders, and force gauges. (Doc. 100 at ¶¶ 1, 6;
Doc. 104 at ¶ 3). Copperhead is incorporated under the
laws of Ontario, Canada. (Doc. 104-3 at 4; Doc. 136-1 at 6).
Ontario law, to come into existence and be considered a valid
legal entity, a domestic Ontario corporation is required to
file articles under the Business Corporations Act (Ontario),
R.S.O. 1990, c. B.16 (the “Act”) and register
with the Ontario Ministry of Government and Consumer Services
(the “Ministry”). (Doc. 136-1 at ¶ 2; Doc.
137-2 at 28). At the time of registration, the Ministry
assigns an Ontario Corporation Number to every corporation
incorporated under the Act. (Doc. 136-1 at ¶¶ 6-7;
Doc. 137-2 at 30). The Ontario Corporation Number must be
specified in the corporation's certificate of
incorporation. (Doc. 136-1 at ¶ 7; Doc. 137-2 at 24). If
an incorporator does not specify a corporation name in the
articles of incorporation, the Ministry assigns a number name
comprised of the Ontario Corporation Number, the word
“Ontario, ” and a business designation or
abbreviation. (Doc. 136-1 at ¶ 6; Doc. 137-2 at 24).
Ontario Corporation Number is a unique identifier. No two
corporations may be assigned the same Ontario Corporation
Number. (Doc. 136-1 at ¶ 7). A corporation may not
transfer or change its Ontario Corporation Number, and if a
company merges with another corporation, the new corporation
receives a new Ontario Corporation Number. (Doc. 136-1 at
Ruggiero incorporated Copperhead in 2007. (Doc. 136-1 at
7-14). When Copperhead was incorporated, Copperhead was
issued Ontario Corporation Number 002152706. (Doc. 104 at
¶ 2; Doc. 136-1 at ¶ 6; Doc. 136-1 at 6). The
number appears on Copperhead's certificate of
incorporation and on its articles of incorporation. (Doc.
136-1 at 6-7).
Ruggiero has been the sole director and president of
Copperhead since it was incorporated in 2007, and he has been
the sole owner of Copperhead since 2011. (Doc. 104 at
¶¶ 1, 12(e)). Between November 2012 and February
2013, Mr. Ruggiero and Werner Kaeseler had discussions about
Copperhead's potential purchase of Mr. Kaeseler's
intellectual property rights to certain spot welding cap
changers. (Doc. 100 at ¶ 4). On February 16, 2013, Mr.
Kaeseler and Mr. Ruggiero signed a Patent Purchase Agreement
which listed Mr. Kaeseler as the “Vendor, ” and
002152706 Ontario Limited as the “Purchaser.”
(Doc. 104-1). The Patent Purchase Agreement incorporates a
Patent Assignment (the “original assignment”).
(Doc. 103-1 at 1; Doc. 104-2). Pursuant to the original
assignment, Mr. Kaesler assigned and transferred his rights
to the patents-in-suit to 002152706 Ontario Limited. (Doc.
104-2). Mr. Ruggiero, on behalf of 002152706 Ontario Limited,
signed the original assignment. (Doc. 104-2 at 2). Bank
statements reflect that all required payments due Mr.
Kaeseler under the Patent Purchase Agreement were drawn from
an account owned in the name of Copperhead. (Doc. 104 at
¶¶ 16-18; Doc. 104-5; Doc. 104-6).
December 14, 2016, an attorney representing Mr. Ruggiero
submitted proposed corrective assignments to the United
States Patent and Trademark Office (“USPTO”).
(Doc. 104 at 2; see Doc. 104-7; Doc. 104-8; Doc.
104-9; Doc. 104-10). The December 2016 corrective assignments
are identical to the original assignment except the name
“002152706 Ontario Ltd.” is crossed out by hand
and replaced with “Copperhead Industrial Inc.”
(Doc. 104-7 at 3-4; Doc. 104-8 at 3-4; Doc. 104-9 at 3-4;
Doc. 104-10 at 5-6). Mr. Ruggiero initialed and dated each
Ruggiero submitted identical declarations in support of the
corrective assignments. (Doc. 104-7 at 6-7; Doc. 104-8 at
6-7; Doc. 104-9 at 6-7; Doc. 104-10 at 8-9). According to the
declarations, the reference to “002152706 Ontario
Ltd.” in the original assignment “was due to an
inadvertent mistake of identifying Copperhead by its Ontario
corporation number (2152706) rather than by its corporate
name (Copperhead Industrial Inc.).” (See e.g.,
Doc. 104-7, p. 6 at ¶ 2). In the declarations, Mr.
Ruggiero claimed that when he signed the original assignment
“and until only recently, ” he mistakenly
believed that 002152706 Ontario Limited was the legal
corporate name for Copperhead and that the corporation was
“doing business as” Copperhead. (See
e.g., Doc. 104-7, p. 6 at ¶ 3). Mr. Ruggiero also
asserted that “inclusion of ‘002152706 Ontario
Ltd.' as a party to the [original a]ssignment was due to
an error that did not accurately reflect my,
Copperhead's, or Mr. Kaeseler's intentions. The
[original a]ssignment was always intended to be between Mr.
Kaeseler and Copperhead.” (See e.g., Doc.
104-7 at 7, ¶ 4).
April 14, 2017, the USPTO accepted the corrective assignments
and issued Notices of Recordation that correspond to each of
the patents-in-suit. (Doc. 104 at 21; see Doc.
Relevant Procedural History
002152706 Ontario Limited and JEC filed this lawsuit in the
Western District of New York on January 6, 2015. (Doc. 1).
002152706 Ontario Limited and JEC amended their complaint of
right on February 10, 2015. (Doc. 5). With Changer &
Dresser's consent or the court's leave, 002152706
Ontario Limited and JEC filed three more amended complaints
between December 7, 2015 and November 11, 2016. (Docs. 12,
first moved to substitute Copperhead for 002152706 Ontario
Limited on December 22, 2016 in response to Changer &
Dresser's motion to dismiss the fourth amended complaint.
(Doc. 65). While the original motion to substitute was
pending, Plaintiffs moved to amend their complaint again to
add another patent-in-suit. (Doc. 91). A magistrate judge
granted the motion to amend without addressing