J & J Mfg., Inc. v. Logan

• Decision Date: 18 September 1998
• Docket Number: No. 1:98CV1689(TH).,1:98CV1689(TH).
• Citation: 24 F.Supp.2d 692
• Court: U.S. District Court — Eastern District of Texas
• Parties: J & J MANUFACTURING, INC., Plaintiff, v. James P. LOGAN, Defendant.

24 F.Supp.2d 692

J & J MANUFACTURING, INC., Plaintiff, v. James P. LOGAN, Defendant.

No. 1:98CV1689(TH).

United States District Court, E.D. Texas, Beaumont Division.

September 18, 1998.

COPYRIGHT MATERIAL OMITTED

Kip Kevin Lamb, Beaumont, TX, William D. Raman, Austin, TX, John C. Cain, Houston, TX, for Plaintiff.

Joseph L. Lemoine, Jr., Lafayette, LA, Timothy Dillard Lambert Lafayette, LA, Timothy John McNamara, Lafayette, LA, for Defendant.

MEMORANDUM AND OPINION ORDER

HEARTFIELD, District Judge.

Currently before this Court is Defendant's Motions Under Rule 12 [5]. The Court, having considered the motions and responses, hereby DENIES all of Defendant's Motions Under Rule 12 [5].

1. Procedural History

On June 19, 1998 the Plaintiff brought this action for correction of inventorship and patent infringement arising under the patent laws of the United States, 35 U.S.C. § 1 et seq., false designation of origin and false description under the Trademark Laws of the United States, 15 U.S.C. § 1501 et seq., fraud, and conversion. On August 3, 1998, Defendant made several Motions Under Rule 12 [5]. Such Rule 12 motions included: (1) a motion under Fed.R.Civ.P. 12(b)(6) for failure to state a claim upon which relief can be granted as to Plaintiff's patent and trademark-related claims; (2) a motion under Fed. R.Civ.P. 12(b)(1) for dismissal for lack of subject matter jurisdiction as to the remaining claims (fraud and conversion) of the Plaintiff; (3) and, alternatively, that Plaintiff be required to make a more definite statement regarding its patent and trademark-related claims. This Court hereby DENIES all of Defendant's Motions Under Rule 12 [5].

2. Facts

For the past several years Plaintiff J & J Manufacturing Company, Inc. ("J & J") has been designing and manufacturing a variety of machines having electrical, mechanical, pneumatic, and hydraulic components. In early 1985, James P. Logan, Jr. ("Logan") approached J & J in search of a spiral meat slicer that incorporated hydraulic components.¹ According to Plaintiff J & J, J & J designers and owners James R. Hayes, Jerry Junot, and Lionel Stewart, "conceived, designed, developed, and manufactured a new spiral meat slicing device ... [and] assigned all rights of ownership associated with the spiral meat slicing device to J & J." Plaintiff's Original Complaint and Request for Preliminary and Permanent Injunction ("Plaintiff's Original Complaint") 2.

Logan bought four of the meat slicing machines from J & J; and J & J's designer Lionel Stewart visited Logan in 1985 to ensure that the first machine was operating properly. According to Plaintiff J & J, Logan led J & J to believe they would be entering a partnership whereby J & J would manufacture the meat slicers and Logan would market them to the public. In anticipation of that partnership, J & J provided Logan with technical engineering drawings that detailed the mechanical and electrical components of the meat slicing device. In November 1985, J & J gave Logan a seven-page document entitled "Ham Slicer Model 1358." Apparently, all drawings and brochures were, according to J & J, provided to Logan in connection with Logan's purchase of the four meat slicing machines and the contemplated partnership between the parties. In early 1986, Logan ceased all communication with J & J; consequently, J & J assumed Logan simply lost interest in the project and discontinued marketing the meat slicing machine. Quite the contrary.

On April 18, 1989, Logan was granted United States Patent No. 4,821,635 ("the '635 patent") for a device entitled a "Meat Slicing Apparatus." Even though J & J designers and employees allegedly designed the apparatus and assigned all rights to J & J, Logan named himself as sole inventor. Furthermore, Plaintiff J & J avers that Logan used its drawings and brochures substituting the name "Logan Farms, Inc." in place of "J & J Manufacturing Co., Beaumont, Texas," and distributed them to third parties without J & J's permission. Slicing through it all, Plaintiff J & J's allegations boil down to this: Logan stole J & J's meat slicer and its designs.

Specifically, Plaintiff J & J sued Defendant Logan under the following causes of action: (1) change of inventorship; (2) wrongful appropriation; (3) patent infringement; (4) false designation of origin, false description; (5) fraud; and (6) conversion. Shortly thereafter, Defendant Logan moved this Court to dismiss this suit in its entirety pursuant to several Rule 12 motions. This Court will now address each of those motions.

3. Rule 12(b)6 Motion to Dismiss Standard

A Rule 12(b)6 motion to dismiss for failure to state a claim "is viewed with disfavor and is rarely granted." Sosa v. Coleman, 646 F.2d 991, 993 (5th Cir.1981). "In considering a motion to dismiss for failure to state a claim under Rule 12(b)(6), the district court must accept all well-pleaded facts as true and view them in the light most favorable to the plaintiff." Albright v. Oliver, 510 U.S. 266, 114 S.Ct. 807, 127 L.Ed.2d 114 (1994); Baker v. Putnal, 75 F.3d 190, 196 (5th Cir.1996); Partridge v. Two Unknown Police Officers of the City of Houston, Texas, 791 F.2d 1182, 1185-86 (5th Cir.1986); Conley v. Gibson, 355 U.S. 41, 45-46, 78 S.Ct. 99, 2 L.Ed.2d 80 (1957). In this case, Defendant Logan's Rule 12(b)6 motion to dismiss as to the patent and trademark claims, if granted, would deprive this Court of jurisdiction.

When a motion to dismiss challenges both the Court's jurisdiction, 12(b)(1), and the existence of a federal cause of action, 12(b)(6), the Bell v. Hood standard is applied and the motion is treated as a direct attack on the plaintiff's case. In reviewing such a 12(b)(6) motion, [the court accepts] as true, all well-pled allegations, resolving all doubts in favor of the complainants.

Tanglewood East Homeowners v. Charles-Thomas, Inc., 849 F.2d 1568, 1572 (5th Cir. 1988). This Court must accept as true all of Plaintiff J & J's well-pled allegations, resolving all doubt in favor of Plaintiff J & J. This Court may dismiss Plaintiff J & J's lawsuit only if it finds Plaintiff J & J is not entitled to recover under any state of facts which could be mustered to support its claim.

Over and over and over — but apparently not enough — [the Fifth Circuit] has stated, explained, reiterated, stressed, rephrased, and emphasized one simple, long-established, well-publicized Rule of Federal Practice: a motion to dismiss for failure to state a claim should not be granted unless it appears to a certainty that the plaintiff would not be entitled to recover under any state of facts which could be proved in support of his claim.

Rios v. Dillman, 499 F.2d 329, 330 (5th Cir.1974).

In support of its Rule 12(b)(6) motion to dismiss, Defendant Logan has provided several attachments including a signed "Agreement" between Plaintiff J & J and Defendant Logan.² However, "the court may not look beyond the pleadings in ruling on the [12(b)(6)] motion." Baker, 75 F.3d at 196. Were this court to look beyond the pleadings in deciding a Rule 12b(6) motion, its decision would be akin to an order granting a summary judgment. Baker, 75 F.3d at 197; Partridge, 791 F.2d at 1189; Estate of Smith v. Tarrant County Hosp. Dist., 691 F.2d 207, 208 (5th Cir.1982). Moreover, if this Court considered the evidence presented by Defendant Logan outside of its pleadings, then Plaintiff J & J would need a reasonable opportunity to present material it believes pertinent to the "summary judgment" motion.

If, on a motion asserting the defense numbered (6) to dismiss for failure to state a claim upon which relief can be granted, matters outside the pleading are presented to and not excluded by the court, the motion shall 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.

Fed.R.Civ.P. 12(b) (emphasis added). Therefore, in ruling on the Rule 12(b)(6) motion before this Court, the matters presented that are outside the well-pled allegations of the parties shall be ignored.³ This Court bases its decision on the well-pleaded allegations of the parties viewed in the light most favorable to Plaintiff J & J.

4. Rule 12(b)(6) Motion to Dismiss Patent Claims

Count I of Plaintiff J & J's Complaint seeks relief under 35 U.S.C. § 256 which 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 error.

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 or all parties concerned and the Commissioner shall issue a certificate accordingly.

Defendant's Rule 12(b)(6) motion to dismiss Count I of Plaintiff's Complaint can be readily disposed by the Federal Circuit's decision in MCV, Inc. v. King-Seeley Thermos Co.:

[Section 256] prescribes only one prerequisite to judicial action: all parties must be given notice and an opportunity to be heard. If that is done, there is subject-matter jurisdiction in the district court over a dispute raising solely a joint inventorship issue among contending co-inventors.⁴ 870 F.2d 1568, 1570, 10 U.S.P.Q.2d 1287, 1289 (Fed.Cir.1989); Stark v. Advanced Magnetics, Inc., 119 F.3d 1551, 43 U.S.P.Q.2d 1321 (Fed.Cir.1997). The district court in Stark faced claims similar to the ones currently before this Court. There, the plaintiff sued a corporation alleging fraud and seeking correction...