United States District Court, N.D. Alabama, Eastern Division
MEMORANDUM OPINION AND ORDER
ANNEMARIE CARNEY AXON UNITED STATES DISTRICT JUDGE.
This
matter is before the court on Plaintiff Copperhead
Industrial, Inc.'s (“Copperhead”) motion for
leave to file a sixth amended complaint to rejoin JEC
Distributors, Inc. (“JEC”) as a party plaintiff.
(Doc. 149).
Defendant
Changer & Dresser (“C&D”) opposes
amendment, arguing that amendment would be futile because the
proposed allegations do not establish that JEC has standing;
that Copperhead unduly delayed requesting leave to amend; and
that Copperhead's proposed amendment is prejudicial.
(Doc. 162).
As
explained below, amendment would be futile. Therefore, the
court DENIES Copperhead's motion to
amend.
I.
RELEVANT PROCEDURAL HISTORY
Copperhead
and JEC filed this patent infringement action in January
2015. (Doc. 1). Between February 2015 and November 2017,
Copperhead and JEC filed five amended complaints, all before
this case was transferred to this district from the Western
District of New York. (Docs. 5, 12, 27-1, 54, 100). In each
of the six complaints, Copperhead and JEC alleged that JEC
was the “non-exclusive” licensee of the
patents-in-suit. (Doc. 1 at ¶ 15; Doc. 5 at ¶ 15;
Doc. 12 at ¶ 16; Doc. 27-1at ¶ 19; Doc. 54 at
¶ 18; Doc. 100 at ¶ 24).
In
January 2019, the court dismissed JEC's claims without
prejudice for lack of standing because the fifth amended (and
operative) complaint did not allege that JEC was an exclusive
licensee, or facts from which the court could make such an
inference. (Doc. 139 at 15-16).
Eight
months later, Copperhead filed a motion for leave to amend to
rejoin JEC as a party plaintiff. (Doc. 149). Copperhead
supports it motion with a declaration from Joseph Ruggerio,
dated August 15, 2019. (Doc. 149-2). In his declaration, Mr.
Ruggerio states that he is the sole owner, director, and
president of both Copperhead and JEC. (Doc. 149-2 at
¶¶ 2-3). According to Mr. Ruggerio, the two
companies share the same physical location and other
resources, including office supplies and labor. (Doc. 149-2
at ¶ 4). Copperhead distributes automotive manufacturing
products, including spot welding cap changers. (Doc. 149-2 at
¶ 5). Copperhead owns the patents-in-suit, which relate
to its cap changers. (Id.). JEC distributes
Copperhead's cap changers that make use of the
patents-in-suit. (Doc. 149-2 at ¶ 6). Copperhead profits
from each cap changer that JEC sells. (Doc. 149-2 at ¶
8).
According
to Mr. Ruggerio, as owner of both Copperhead and JEC, he
formed an unwritten licensing agreement pursuant to which JEC
licenses from Copperhead the patents-in-suit. (Doc. 149-2 at
¶ 7). JEC has licensed the patents-in-suit continuously
since 2013. (Doc. 149-2 at ¶ 9). Mr. Ruggerio states
that it has always been his “intention to grant to JEC,
on behalf of Copperhead, all rights needed to make, use and
sell the patented spot welding cap changers in the United
States, to control prosecution of the patents-in-suit, and to
control the enforcement of the patents-in-suit, while
reserving Copperhead's patent ownership.” (Doc.
149-2 at ¶ 9). Mr. Ruggerio also states that JEC has
always been Copperhead's “sole licensee for all of
the patents-in-suit, ” and “no other party has
been authorized to practice the patents-in-suit, and no other
party has ever enforced or been authorized to enforce the
patents-in-suit.” (Doc. 149-2 at ¶ 10).
In
2014, Mr. Ruggerio, as President of JEC, communicated with
C&D relating to C&D's alleged infringement of the
patents-in-suit. (Doc. 149-2 at ¶ 11). And JEC, on
behalf of Copperhead, negotiated a potential license
arrangement with C&D. (Doc. 149-2 at ¶ 12). Although
no agreement was reached, Mr. Ruggerio claims that JEC's
negotiations “evidence its broad rights to the patents-
in-suit and demonstrate its extremely close relationship with
Copperhead.” (Doc. 149-2 at ¶ 12).
Based
on Mr. Ruggerio's declaration, Copperhead wishes to
remove from the complaint the reference to JEC as a
“non-exclusive” licensee and more fully describe
the licensing relationship between Copperhead and JEC through
the following six specific allegations:
• The licensing agreement between the parties was not in
writing;
• A single person, Mr. Ruggerio, owns, controls and is
President of both companies, and the relationship between
Copperhead and JEC is an extremely close one;
• Copperhead profits from each sale of a cap changer
made by JEC;
• JEC is the only party authorized to practice the
patented invention in the United States, and has always been
the sole ...