Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

ROPAK CORPORATION v. PLASTICAN

September 30, 2005.

ROPAK CORPORATION, a Delaware corporation, JOHN W. VON HOLDT, JR., an individual, JANICE ANDERSON, an individual, and PLAS-TOOL CO., an Illinois corporation, Plaintiff,
v.
PLASTICAN, INC., a Massachusetts corporation, Defendants.



The opinion of the court was delivered by: DAVID COAR, District Judge

MEMORANDUM OPINION AND ORDER

Before this court is the motion by Defendant Plastican, Inc. ("Plastican") to dismiss Ropak Corporation ("Ropak") and Plas-Tool Co. ("Plas-Tool") as plaintiffs for lack of standing. Defendant does not challenge the standing of Plaintiffs John W. von Holdt, Jr. and Janice Anderson. For the reasons set forth below, Defendant's motion to dismiss Ropak as plaintiff is DENIED. Defendant's motion to dismiss Plas-Tool as plaintiff is GRANTED.

I. FACTUAL BACKGROUND

  For the purposes of this motion, the following facts alleged in Plaintiffs' complaint are taken as true. John W. von Holdt, Jr. and Janice Anderson own United States Letters Patent No. 4,735,337 (the "`337 patent"), a valid and enforceable patent. (Am. Compl. ¶ 9, 11). Plas-Tool is a licensee of the `337 patent by virtue of a license that includes the right to join as plaintiff in any action for infringement of the `337 patent by others. (Am. Compl. ¶ 10).

  Plas-Tool and the original patent owner, John W. von Holdt, Sr., successfully enforced the `337 patent against Ropak Corporation in 1995. The dispute yielded a Settlement and License Agreement entered into on June 15, 1995 ("the 1995 Agreement"). (Am. Compl. ¶ 11). By virtue of that Agreement, Ropak is now a sublicensee of claims 9-12 of the `337 patent. The Agreement affords Ropak the right to join as plaintiff in any action for infringement of the `337 patent by others. (Am. Compl. ¶ 10).

  At all times since issuance of the `337 patent, Plas-Tool, under its license, has been engaged in the business of marketing, selling, and distributing molds used to make the plastic lids protected by the `337 patent. Since entering into its sublicense, Ropak has been engaged in the business of making, selling and distributing molded plastic lids covered by the `337 patent. (Am. Compl. ¶ 12).

  Plaintiffs Ropak, von Holdt, Jr., Anderson, and Plas-Tool have filed suit against Defendant for making, advertising, selling and/or offering for sale molded plastic lids that infringe the `337 patent. (Am. Compl. ¶¶ 14-20).

  II. STANDARD OF REVIEW

  In ruling on motion to dismiss for lack of standing, the court must accept as true all material allegations of the complaint and draw all reasonable inferences in the plaintiff's favor. Reid L. v. Illinois State Board of Education, 358 F.3d 511, 515 (7th Cir. 2004). Whether a licensee of a patent has co-plaintiff standing depends upon the rights the licensee holds: To have co-plaintiff standing in an infringement suit, a licensee must hold some of the proprietary sticks from the bundle of patent rights, albeit a lesser share of rights in the patent than for an assignment and standing to sue alone. The proprietary rights granted by any patent are the rights to exclude others from making, using or selling the invention in the United States.

 Ortho Pharmaceutical Corp. v. Genetics Institute, Inc., 52 F.3d 1026, 1031-32 (Fed Cir. 1995) (internal citation omitted). The standard, stated alternatively, requires a party to "have received, not only the right to practice the invention within a given territory, but also the patentee's express or implied promise that others shall be excluded from practicing the invention within that territory as well. Rite-Hite Corp. v. Kelley Co., Inc. 56 F.3d 1538, 1552 (Fed. Cir. 1995). A licensee with such proprietary rights is generally called an "exclusive" licensee. Ortho Pharmaceutical, 52 F.3d at 1032. Thus, exclusive licensees have standing to sue, whereas bare licensees — those who hold nothing more than the patent owner's covenant not to sue the licensee for infringement — do not. Id. "But it is the licensee's beneficial ownership of a right to prevent others from making, using or selling the patented technology that provides the foundation for co-plaintiff standing, not simply that the word `exclusive' may or may not appear in the license. Id.

  III. ANALYSIS

  Defendant argues that neither Ropak nor Plas-Tool is an exclusive licensee of the `337 patent; therefore, they have no standing to sue. Plaintiffs argue that Ropak and Plas-Tool have exclusive rights under the `337 patent that no other licensee has been granted, and it is these exclusive rights that Defendant has infringed. A. ROPAK'S STANDING

  To determine whether Ropak has standing as a co-plaintiff, the Court looks to Ropak's agreement with the patentee. See Ortho Pharmaceutical, 52 F.3d at 1032 (stating that "co-plaintiff standing is determined by whether or not the licensee acquired proprietary rights in the patent under the contract with the patentee"). The 1995 Agreement between Von Holdt, Sr., Plas-Tool, and Ropak grants Ropak the right to make, use, and sell plastic lids covered by claims 9-12 of the `337 patent.*fn1 The Agreement states that this license "shall be exclusive with respect to plastic lids . . . within the following size and thickness parameters," which the Agreement then lists. (Von Holdt Decl. Ex. G § 3B) (emphasis added). The Agreement also states that, "[w]ith respect to the plastic lids for round containers which do not fall within the [specified] size and thickness parameters, ROPAK shall have a non-exclusive license." (Von Holdt Decl. Ex. G § 3C). Thus, the Agreement's terms grant Ropak an exclusive license to lids of a certain size under claims 9-12 of the `337 patent. Still, the presence of the word "exclusive" in the license, without more, does not mean that Ropak is an exclusive licensee. Ortho Pharmaceutical, 52 F.3d at 1032.

  Nor is the right to sue clause in the Agreement dispositive. The Agreement states that, with respect to infringement claims, the "parties agree to cooperate and assist each other . . . at no cost to the other party, regardless of the party which prosecutes the proceedings." (Von Holdt Decl. Ex. G § 11B). The Agreement provides an example: "[I]n the event of prosecution by ROPAK and if necessary in order for such prosecution to occur, VON HOLDT and PLAS-TOOL will agree to be joined in the prosecution as nominal parties and/or to assign ROPAK their rights to prosecute the matter." Id. (emphasis added). This provision, however, does not automatically grant Ropak co-plaintiff standing. As explained in Ortho Pharmaceutical, 52 F.3d at 1034, "a right to sue clause cannot negate the requirement that, for ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.