The opinion of the court was delivered by: JOHN SPRIZZO, District Judge
MEMORANDUM OPINION AND ORDER
The present controversy involves the question of whether
judgment creditor Pentagen Technologies International Ltd.
("Pentagen" or "creditor") may obtain by motion in the
above-captioned action an Order of Turnover for computer software
allegedly in the possession of third-party transferee United
States of America ("Government" or "transferee") pursuant to
Article 52 of the New York Civil Practice Law and Rules. Because
this motion is the improper vehicle for seeking this relief, and
because Pentagen is barred, for a variety of reasons, from
seeking this relief from the Government, this Court denies
This action, which was commenced in 1991, involved a dispute
about the ownership of the MENTIX software program. That dispute
was settled by a 1993 Stipulation and Order in which plaintiff
Runaway Development Group, S.A. and its affiliates consented to
entry of judgment against them and agreed to deliver to Pentagen
all copies of MENTIX and its documentation. See Stipulation and
Orders for Amendment of Pleadings and Judgments, dated Aug. 2,
Emboldened by its success in this action, Pentagen proceeded to
bring a number of suits against, inter alios, CACI
International, Inc. ("CACI"), Pentagen's former business
associate, alleging copyright infringement, conversion, and
violations of the False Claims Act, see, e.g., United States
ex rel. Pentagen Techs. Int'l, Ltd. v. CACI Int'l Inc., No.
96-7827, 1997 U.S. Dist. LEXIS 12244, 1997 WL 473549 (S.D.N.Y.
Aug. 18, 1997); Pentagen Techs. Int'l, Ltd. v. CACI Int'l Inc., Nos. 93-8512, 94-441, 94-8164, 1996 U.S.
Dist. LEXIS 9903, 1996 WL 435157, at *1-7 (S.D.N.Y. Aug. 2,
1996); United States ex rel. Pentagen Techs. Int'l Ltd. v. CACI
Int'l Inc., No. 94-2925, 1995 U.S. Dist. LEXIS 17512, 1996 WL
11299 (S.D.N.Y. Jan. 4, 1996); CACI Int'l Inc. v. Pentagen
Techs. Int'l, Ltd., No. 93-1631-A, 1994 WL 1752376, 1994 U.S.
Dist. LEXIS 21457, at *1-11 (E.D. Va. June 16, 1994), and the
Government, alleging abuse of process, conversion, and copyright
infringement, see, e.g., Pentagen Techs. Int'l Ltd. v.
United States, 175 F. 3d 1003 (Fed. Cir. 1999); Pentagen Techs.
Int'l Ltd. v. United States, No. 01-3078, 2002 WL 465308,
2002 U.S. Dist. LEXIS 5030 (S.D.N.Y. Mar. 26, 2002); Pentagen Techs.
Int'l Ltd. v. United States, 103 F. Supp. 2d 232 (S.D.N.Y.
Despite bringing "a seemingly endless series of lawsuits,"
Pentagen, No. 01-3078, 2002 U.S. Dist. LEXIS 5030, at *4,
before no less than seven federal judges, Pentagen failed in each
of its attempts to show that CACI or the Government infringed or
converted the MENTIX software. See, e.g., id. at *4-8;
Pentagen Techs. Int'l Ltd. v. United States,
172 F. Supp. 2d 464, 468-70 (S.D.N.Y. 2001). Finally, by Memorandum Opinion and
Order dated November 5, 2001, this Court, faced with Pentagen's
"vexatious litigation strategy and needless occupation of
judicial resources," enjoined Pentagen from filing further
litigation without permission of the Court. Pentagen,
172 F. Supp. 2d at 474.
Faced with an inability to bring another suit, and armed with
allegedly new evidence that purports to show that the Government
received an alternative version of MENTIX which it has failed to
return, see Mem. in Supp. at 2-9, Pentagen breathed new life
into this action by filing a motion, dated April 29, 2005, in
which it seeks to force the Government to return "all versions of
software known as MENTIX in the possession of the United States,"
id. at 1. The Government submitted a response dated June 7,
2005, and the Court heard Oral Argument on creditor's Motion on
July 18, 2005.
Pursuant to Federal Rule of Civil Procedure 69(a) "[t]he procedure on execution, in proceedings supplementary to and in
aid of a judgment, and in proceedings on and in aid of execution
shall be in accordance with the practice and procedure of the
state in which the district court is held." Fed.R.Civ.P.
69(a). Article 52 of the New York Civil Practice Law and Rules
governs the enforcement of judgments in New York, and therefore
is applicable here. See N.Y.C.P.L.R. art. 52; Alliance Bond
Fund, Inc. v. Grupo Mexicano De Desarrollo, S.A., 190 F. 3d 16,
20, 21 n. 4 (2d Cir. 1999).
Section 5225 sets forth the procedures for the return of
property. Under section 5225(a), a judgment creditor can seek
turnover of property held by the judgment debtor "[u]pon motion"
in the original action. N.Y.C.P.L.R. 5225(a). However, when the
property sought is in the possession of someone other than the
judgment debtor, the judgment creditor must follow the procedure
set forth in section 5225(b), which requires that the creditor
"commence an action against the person in possession," Alliance
Bond Fund, Inc., 190 F.3d at 21, instead of merely filing a
motion in the original action, see N.Y.C.P.L.R. 5225(b); David
D. Siegel, Practice Commentaries, N.Y.C.P.L.R. 5225, at 264-65
(McKinney 1997) (explaining that subsection (b) requires a
special proceeding "bearing its own caption").
In this case, the Government contends that "Pentagen cannot
proceed by mere motion against the Government to enforce its
judgment against Runaway" and therefore "Pentagen's motion should
be denied. Mem. in Opp'n at 15.
This Court agrees. Pentagen now seeks the turnover of the
MENTIX software from the Government, a non-party to this action.
Because Rule 69(a) of the Federal Rules of Civil Procedure
dictates that state procedures be followed, and because section
5225(b) is applicable to this situation, Pentagen is required to
commence a new action against the Government in order to attain
the sought-after relief. Therefore the present motion is an
improper vehicle for seeking this relief and must be denied.
In addition to this procedural defect, the Government asserts that a number of additional bars preclude the relief that
Pentagen seeks. The Government argues that any suit based on this
subject matter would be barred by sovereign immunity and by the
doctrines of claim and issue preclusion.
Under the doctrine of sovereign immunity, the "United States,
as sovereign, is immune from suit save as it consents to be
sued." United States v. Sherwood, 312 U.S. 584, 586 (1941). The
United States has consented to suit pursuant to the
Administrative Procedure Act ("APA"), 5 U.S.C. § 702, which
provides for "final agency actions to be reviewed by federal
courts if there is a claim `that an agency or an officer or
employee thereof acted or failed to act in an official capacity
or under color of legal authority,' and the relief ...