The opinion of the court was delivered by: HOWARD MUNSON, Senior District Judge
MEMORANDUM DECISION AND ORDER
This diversity action was commenced by plaintiffs Sears Petroleum &
Transport Corp. and Sears Oil Co., Inc. ("Sears") against Ice Ban
America, Inc., Ice Ban USA, Inc., and George Janke, the primary
shareholders in the Ice Ban companies, to recover for fraud, breach of
contract, patent infringement, breach of fiduciary duty and violations of
the Lanham Act, 15 U.S.C. § 1121. The case was originally instituted in
New York State Supreme Court (County of Oneida), and removed to federal
court by the defendants. Plaintiffs assert that the late George Janke
fraudulently induced them into creating a Limited Liability Company ("the
L.L.C.") named Sears Environmental Applications Company, ("SEACO") for
the purpose of selling and distributing a revolutionary de-icing product
trade named "Ice Ban" by representing that Ice Ban USA, Inc. ("USA") was
either a licensee or owner of the pertinent patent (collectively
the"Toth/918 patents") for the de-icing agent.
Plaintiffs allege that neither USA nor Janke owned or controlled these
patents, and further maintain that based on this fraudulent
representation, plaintiffs loaned SEACO over $300,000 and expended
$100,000 on "management services." Plaintiffs also maintain that even
though the SEACO creation agreement provided that SEACO would have an
exclusive license to sell "Ice Ban" within the New England states,
defendants violated this agreement by permitting other parties to market
"Ice Ban" within these States.
On September 28, 1999, defendants moved to dismiss the amended
complaint on the grounds that the court lacked jurisdiction over
defendants George Janke and USA and Ice Ban America, Inc., and that
plaintiffs failed to plead fraud as to each of the defendants with the amount of particularity required by Fed.R.Civ.P. 9(b). Additionally,
although not included in their formal motion, but in their Memorandum of
Law defendants, requested the court to stay this action pending the
outcome of a second action between the parties hereto in Florida state
In his decision of May 15, 2000, on that motion, The Honorable
Frederick J. Scullin, Jr. denied defendants' request to stay this action
as well as the motion to dismiss the amended complaint against George
Janke for lack of personal jurisdiction; and the motion to dismiss the
amended complaint for failure to plead fraud with the specificity as to
George Janke and Ice Ban America, Inc.
Defendants' motions to dismiss the amended complaint for lack of
personal jurisdiction as to USA and for failure to plead with the
particularity required by Fed.R.Civ.P. 9(b) were denied without prejudice
and plaintiffs were given 60 days of limited discovery, and then 30 days
from the close of discovery to file a second amended complaint.
Defendants would thereupon have 30 days to make application by letter
brief to dismiss this claim.
By order dated March 27, 2002, Chief Judge F.J. Scullin, Jr.,
reassigned this action to the Honorable Howard G. Munson.
Plaintiffs filed a second amended complaint on August 10, 2000,
however, defendants did not make an application by letter brief to
dismiss the two claims pending against Ice Ban, USA, Inc., within 30 days
after this complaint was filed.
While it is true that an amended complaint ordinarily supersedes a
prior complaint, and renders it of no legal effect, International
Controls Corp. v. Vesco, 556 F.2d 665, 668 (2d Cir. 1977), cert.
denied, 434 U.S. 1014, 98 S.Ct. 730, 54 L.Ed.2d 758 (1978). It is
also true that if the amended complaint also contains new matter, the defendant may bring a
second motion under Rule 12 to object to the new allegations only. FBN
Food Services. Inc. v. Derounian, 6 F.R.D. 11, 13-14 (N.D. Ill. 1946).
Nevertheless, the amended complaint does not automatically revive all the
defenses and objections the defendant may have waived in a first motion
to dismiss or to challenge the sufficiency of the amended complaint with
arguments that were previously considered and decided by the court in the
first motion to dismiss. Nor may defendant advance arguments that could
have been made in the first motion to dismiss but neglected to do so.
Id.; Gilmore v. Searson/American Express, 811 F.2d 108, 112 (2d Cir.
After obtaining various documents relating to USA, from counsel in
Florida, plaintiffs' counsel decided that limited discovery would be
unnecessary and so notified defendants' counsel. (5/22/01 Affidavit of
Ted H. Williams, Esq. p., 2, Dock. # 84).
Plaintiffs' second amended complaint merely sought to correct
insufficient allegations in the targeted issues of jurisdiction and fraud
regarding defendant USA. It did not revive defendants' right to challenge
the sufficiency of the prior complaint or defenses already denied.
Defendants answered the second amended complaint on September 5, 2000,
and an amended answer on September 21, 2000.
On May 8, 2001, defendants filed a motion seeking dismissal of the
Second Amended Complaint as against USA., pursuant to Federal Rules of
Civil Procedure 12(2) judgment on the pleadings, and 12(b)(2) lack of
jurisdiction over USA. However, the Rule 12(b)(2) portion of the motion
was untimely and could not be considered because defendants served their
answer to the amended complaint prior to making their motion. Tyco.
Instruments Limited v. Walsh, 2003 WL 553580, at *2 (S.D.N.Y Feb. 27,
2003). Plaintiffs opposed defendants' motion. Federal Rule of Civil Procedure 12(2) provides that, after the
pleadings are closed, any party may move for judgment on the pleadings
provided the trial of the action is not delayed.
Because a judgment on the pleadings focuses on the pleadings
themselves, and not on matters outside of the pleadings such as
affidavits, a motion for judgment on the pleadings is not well-suited for
the determination of whether the court lacks personal jurisdiction over
defendant Ice Ban USA, Inc. in this action. Matters relating to personal
jurisdiction often are not apparent on the face of the pleadings, and a
court considering a challenge to its jurisdiction with respect to a
defendant may well need to receive affidavits and other relevant matters
outside the pleadings in determining the jurisdictional facts of a case.
Rule 12(2) further provides that "[i]f, on motion for judgment on the
pleadings, matters outside of the pleadings are presented to and not
excluded by the court, the motion will be treated as one for summary
judgment and disposed of as provided in Rule 56, and all parties shall be
given reasonable opportunity to present all material made pertinent to
such a motion by Rule 56.
Since the parties hereto had presented matters outside the pleadings
to, and not excluded by the court, it was decided that defendants'
motions would be treated as one for summary judgment and disposed of as
provided in Rule 56. The parties were then provided with appropriate time
periods to submit materials they considered pertinent to deciding the
summary judgment motion.
Having converted defendants' motion for judgment on the pleadings, and
having provided the parties with an opportunity to submit additional
material, the court will now consider the merits of the motion for
summary judgment. DISCUSSION
Summary judgment is proper if, viewing all the facts of record in a
light most favorable to the non-moving party, no genuine issue of
material fact remains for adjudication. Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 247-50, 106 S.Ct. 2505, 2509-11, 91 L.Ed.2d 202 (1986).
"[T]he mere existence of some alleged factual dispute between the parties
will not defeat an otherwise properly supported motion for summary
judgment; the ...