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October 7, 1991


The opinion of the court was delivered by: Lowe, Senior District Judge.


Before this Court are (1) defendants' motions to dismiss and (2) plaintiff's motion for a preliminary injunction. For the reasons set forth below, plaintiff's motion is denied and defendants' motions are granted.*fn1


Plaintiff, the Rawlplug Company, Inc. ("Rawlplug"), is a New York corporation engaged in the manufacture and worldwide sale of fastener devices.*fn2 Defendant Hilti Aktiengesellschaft ("HAG") is a Liechtenstein corporation, also engaged in the manufacture and sale of fastener devices. Defendant Hilti, Inc. ("HUS") is a New York corporation which sells fastener devices in the United States. HUS has its principle place of business in Tulsa, Oklahoma.

Rawlplug instituted the above-captioned action on January 6, 1987, alleging a single cause of action against defendants, under 35 U.S.C. § 256, for correction of error in the named inventor of U.S. Patent No. 4,289,062 ("Patent 062"). This claim revolves around Rawlplug's relationship with Thomas W. McSherry ("McSherry") who, according to plaintiff's pleadings, acted as a consultant for Die Cast & Forge Corporation ("Die Cast"), a wholly owned subsidiary of Rawlplug, for the purpose of developing fastener devices. Pursuant to an agreement dated December 9, 1975, McSherry agreed to disclose to Die Cast any and all inventions developed by him during the term of his contract and to grant to Die Cast the "exclusive rights and licenses to manufacture, use and sell products and/or methods incorporating such inventions." Agreement at ¶ 4. By a separate letter agreement, Rawlplug agreed to guarantee the performance of Die Cast under the consultancy agreement. Exhibit 4.

During the course of this agreement, McSherry purportedly developed a fastener called the "C-6 anchor," which invention McSherry, in breach of his alleged duty of confidentiality under the agreement, disclosed to one of Rawlplug's competitors, Mechanical Plastics Corporation ("MPC"). Amended Complaint at ¶¶ 6-8. MPC, in turn, purportedly disclosed the C-6 anchor to personnel at "HAG and/or HUS." In 1981, Erwin Schiefer ("Schiefer") who, according to plaintiff, works for an affiliate of HAG in Germany, was granted Patent 062 which, plaintiff claims, incorporates the C-6 anchor developed by McSherry during the course of McSherry's consultancy agreement with Die Cast. Schiefer continues to be named as the sole inventor of Patent 062, the rights to which were assigned, simultaneously with the patent application, to HAG. Shortly thereafter, HAG allegedly began manufacturing and exporting, and HUS began selling in the U.S., the patented device under the commercial name "Kwik Tog." Since that time, however, the Kwik Tog has been both manufactured and sold in the U.S. by HUS.

Claiming its purported rights under the patented invention, plaintiff seeks from this Court a judgment declaring McSherry to be sole and true inventor of Patent 062 and holding Rawlplug to be the exclusive licensee. Plaintiff also seeks an order "finding and declaring that HAG and HUS hold profits from the sale of all goods manufactured and sold under [Patent 062] in constructive trust for plaintiff [and] granting an accounting of profits from the sale of all goods imported, manufactured, used, and/or sold by HUS and HAG" under the patent.

Subsequent to the filing of its original complaint, the defendant moved for dismissal of the action on virtually every conceivable ground available under Fed.R.Civ.P. 12. Prior to the disposition of these motions, however, plaintiff amended its complaint under Fed.R.Civ.P. 15(a) to include a second cause of action against defendants for infringement of an entirely different patent, U.S. Patent No. 4,330,230 ("Patent 230"). Almost one year later, in February of 1989, plaintiff moved for a preliminary injunction on the basis of this second cause of action.

A hearing on plaintiff's motion for a preliminary injunction was tentatively scheduled in March of 1989. However, given the pendency of defendants' earlier motions which, it was claimed, bore relevance to the injunctive request, this Court adjourned the hearing for a future date. In the interim, we sought further briefing on a number of issues raised by the parties' motions.


Motions to Dismiss

HAG has moved to dismiss on several grounds. Their initial claim is that plaintiff is not entitled to use 35 U.S.C. § 256 to justify an action against HAG. Section 256, as amended in 1982, provides:

    Whenever through error a person is named in an
  issued patent as the inventor, or through error
  an inventor is not named in an issued patent and
  such error arose without any deceptive intention
  on his part, the Commissioner may, on application
  of all the parties and assignees, with proof of
  the facts and such other requirements as may be
  imposed, issue a certificate correcting such
    The error of omitting inventors or naming
  persons who are not inventors shall not
  invalidate the patent in which such error
  occurred if it can be corrected as provided in
  this section. The court before which such matter
  is called in question may order correction of the
  patent on notice and hearing of all ...

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