The opinion of the court was delivered by: Gabriel Gorenstein, Magistrate Judge
To the Honorable Laura T. Swain
United States District Judge
Defendant Professional Product Research Co., Inc. ("PPR") moves this Court pursuant to Fed.R.Civ.P. 12(b)(7) to dismiss the complaint filed by plaintiff E-Z Bowz, LLC ("E-Z Bowz") for failure to join an indispensable party under Fed.R.Civ.P. 19. The Court has issued separate Report and Recommendations today addressing the parties' various motions for summary judgment or partial summary judgment (the "Summary Judgment R&R") and the third party defendants' motion to dismiss PPR's third party complaint for lack of personal jurisdiction. The Summary Judgment R&R contains a complete description of the allegations in this case and its procedural history. Familiarity with that Report is assumed. This Report will provide only the background necessary for an understanding of the instant motion. Page 2
As reflected in the Summary Judgment R&R, E-Z Bowz brought this action against PPR asserting patent infringement and related trade dress and unfair competition claims alleging infringement by PPR of two patents: U.S. Patent No. 5,617,979 (the "`979 Patent") and U.S. Patent Design No. 389,998 (the "`998 Patent"). Both the original and amended complaint — as well as the motion being considered in this Report and Recommendation — were filed in the United States District Court for the Eastern District of Tennessee. The action was thereafter transferred to this Court on motion by PPR.
A. The `979 and `998 Patents
During the course of the application for the `979 Patent, Deborah L. Cavender included Tina Lucille Benton Slater as a co-inventor. See Affidavit of Deborah L. Cavender, dated February 13, 1997 (reproduced in Memorandum in Support of Defendant's Motion to Dismiss Under Rule 12(b)(7) for Failure to Join an Indispensable Party Under Rule 19, F.R.C.P., filed March 21, 2000 ("PPR Mem."), Ex. C), ¶¶ 1, 6-7. When the `979 Patent was issued to Deborah L. Cavender on April 8, 1997, however, Cavender was listed as the sole inventor. See United States Patent, dated April 8, 1997 (PPR Mem., Ex. B). After suit was filed, the United States Patent and Trademark Office ("USPTO") granted Cavender's petition to add Slater as a co-inventor on the `979 Patent. See Decision on Petition under 37 C.F.R. § 1.324, undated (reproduced in E-Z Bowz' Response to PPR's Statement of Material Undisputed Facts, filed February 6, 2003, Ex. C).
On August 1, 1997, Slater signed a document in which she transferred to Cavender "her entire right, title, and interest in [the `979 Patent], including the right to sue for past, present or Page 3 future infringements thereof." See Transfer of Rights to Patent, dated August 1, 1997 ("`979 Transfer") (reproduced in Plaintiff's Memorandum in Response to Defendant's Motion to Dismiss Under Rule 12(b)(7) for Failure to Join an Indispensable Party Under Rule 19, filed April 7, 2000 ("E-Z Bowz Mem."), Ex. B). Thereafter, on January 25, 1999, Cavender assigned "all of her right, title and interest throughout the world in and to [the `979 Patent], the subject matter disclosed in the patent, and any and all prior, current, or pending rights of action therein" to E-Z Bowz. See Assignment, dated January 25, 1999 (reproduced in E-Z Bowz Mem., Ex. D).
The `998 Patent was issued on February 3, 1998 to both Cavender and Slater. See United States Patent, dated February 3, 1998 (reproduced in PPR Mem., Ex. A). On January 25, 1999, Cavender assigned "all of her right, title and interest throughout the world in and to [the `998 Patent], the subject matter disclosed in the patent, and any and all prior, current, or pending rights of action therein" to E-Z Bowz. See Assignment, dated January 25, 1999 (reproduced in E-Z Bowz Mem., Ex. J).
On October 14, 1999 — after E-Z Bowz commenced the action against PPR — Slater entered into an agreement by which she assigned to E-Z Bowz her "entire right, title and interest" in the `979 and `998 Patents and "any and all prior, current, or pending rights of action therein." See Assignment, dated October 14, 1999 ("Oct. 14 Assignment") (reproduced in E-Z Bowz Mem., Ex. H). This assignment was recorded in the USPTO on October 25, 1999. See United States Patent and Trademark Office Notice of Recordation of Assignment Document, dated January 24, 2000 (reproduced in E-Z Bowz Mem., Ex. I).
On March 21, 2000, PPR moved to dismiss the complaint for failure to join an Page 4 indispensable party. PPR argues that E-Z Bowz "was not `the owner' of the entire right, title and interest to the patents in suit when the Complaint was brought." PPR Mem. at 1. According to PPR, the `979 and`998 Patents were in fact owned by both E-Z Bowz and Slater at the time E-Z Bowz filed the complaint in this action. PPR Mem. at 1-2. PPR appears to concede, however, that Slater assigned her interest in both patents to E-Z Bowz after the infringement action was filed. See PPR Mem. at 2-3.
E-Z Bowz argues in response that i) it did possess the `979 and`998 Patents at the time this action was commenced and ii) even if it was not in possession of both patents at that time, Slater is not an indispensable party under Rule 19 given that she assigned her "entire right, title and interest" in both patents in October 1999. See E-Z Bowz Mem. at 1-9. Because the latter argument disposes of the motion, it is unnecessary to consider the first argument.
"Fed.R.Civ.P. 19 sets forth a two-step test for determining whether the court must dismiss an action for failure to join an indispensable party." Viacom Int'l, Inc. v. Kearney, 212 F.3d 721, 724 (2d Cir.), cert. denied, 531 U.S. 1051 (2000). At the first step, the court must determine if the party sought to be joined "belongs in the suit, i.e., whether the party qualifies as a `necessary' party under Rule 19(a)." Id. (citing Provident Tradesmens Bank ...