Ohio Cellular Products Corp. v. Adams USA, Inc.

• Decision Date: 26 April 1999
• Docket Number: No. 98-1448,98-1448
• Citation: 175 F.3d 1343
• Parties: OHIO CELLULAR PRODUCTS CORPORATION, Plaintiff/Third Party Plaintiff-Appellant, and Donald E. Nelson, Third Party Defendant-Appellant, v. ADAMS USA, INC. and Apehead Manufacturing, Inc., Defendants/Third Party Plaintiffs-Appellees, v. All American Sports Corporation, Third Party Defendant. Federal Circuit
• Court: U.S. Court of Appeals — Federal Circuit

Page 1343

175 F.3d 1343

50 U.S.P.Q.2d 1481

OHIO CELLULAR PRODUCTS CORPORATION, Plaintiff/Third Party Plaintiff-Appellant, and Donald E. Nelson, Third Party Defendant-Appellant, v. ADAMS USA, INC. and Apehead Manufacturing, Inc., Defendants/Third Party Plaintiffs-Appellees, v. All American Sports Corporation, Third Party Defendant.

No. 98-1448 United States Court of Appeals,

Federal Circuit.

April 26, 1999.

Rehearing and Suggestion for Rehearing

En Banc Denied June 3, 1999.

Ernest R. Bazzana, Plunkett & Cooney, P.C., of Detroit, Michigan, argued for plaintiff/third party plaintiff-appellant and third party defendant.

Joel T. Beres, Wheat, Camoriano Smith & Beres, PLC, of Louisville, Kentucky, argued for defendant/third party plaintiff-appellees. With him on the brief were Jack A. Wheat, and Vance A. Smith. Of counsel was David W. Nagle, Jr.

Before NEWMAN, MICHEL, and PLAGER, Circuit Judges.

Opinion for the court filed by Circuit Judge MICHEL. Dissenting opinion filed by Circuit Judge PAULINE NEWMAN.

MICHEL, Circuit Judge.

Ohio Cellular Products Corporation ("Ohio Cellular") and Donald Nelson ("Nelson") ¹ appeal from the decision of the United States District Court for the Northern District of Ohio, granting Adams USA, Inc. and Apehead Manufacturing, Inc.'s ("Defendants' ") post-judgment motion for leave to amend their third-party complaint to add Nelson in his individual

                capacity as a third-party defendant.  See Ohio Cellular Prods.  Corp. v. Adams USA, Inc., No. 3:94-CV-7251 (N.D.Ohio Mar. 25, 1998).  The court further granted Defendants' motion to amend a January 20, 1998 judgment awarding attorney fees to include Nelson as an additional party.  This amended judgment made Nelson individually liable to pay the judgment along with Ohio Cellular, his corporate entity, the plaintiff in this infringement suit which was dismissed after the asserted patents were held invalid.  See id.   Nelson is the president and sole stockholder of Ohio Cellular.  The January 20, 1998 judgment awarded a specific amount as attorney fees and costs to Defendants.  A September 1997 reconsideration order had retained liability for fees in this case, found exceptional on February 12, 1997, based on inequitable conduct committed during prosecution of the application by Nelson himself.  After the district court granted Defendants' motion to amend on March 25, 1998, Nelson moved to alter or amend that judgment, but his motion was denied on May 18, 1998.  Thereafter, this appeal was timely filed.  It was submitted for our decision following oral argument on February 3, 1999.  Because we conclude that under the particular circumstances of this case the district court did not abuse its discretion in adding Nelson as a third-party defendant and amending the judgment quantifying the fee award to obligate Nelson individually after post-trial proceedings were concluded, we affirm
                

BACKGROUND

In May 1994, Ohio Cellular sued Defendants for infringement of U.S. Patent Nos. 5,273,702 ("the '702 patent") and 4,980,110 ("the '110 patent"). ² In October 1995, the asserted patents were found invalid for anticipation under 35 U.S.C. § 102(b) (1994). The infringement complaint was therefore dismissed. When Ohio Cellular appealed, we affirmed. See Ohio Cellular Prods. v. Adams USA, Inc., 104 F.3d 376, 41 USPQ2d 1538 (Fed.Cir.1996) (table).

After the judgment of invalidity was affirmed, on February 12, 1997 the district court granted the Defendants' motion for attorney fees and costs on the basis that the applicant had engaged in inequitable conduct. Ohio Cellular's motion for reconsideration was denied on September 25, 1997, after an evidentiary hearing was held. The district court concluded that, during the prosecution of the '702 patent, Nelson, who denied it at the evidentiary hearing on the issue, had withheld material prior art from the United States Patent and Trademark Office with the intent to deceive. ³ The judgment that Ohio Cellular committed inequitable conduct is not here disputed. After judgment on liability for fees was entered, Defendants and Ohio Cellular attempted to negotiate the amount of the attorney fees. On October 13, 1997, three weeks after the fee liability decision was confirmed, in connection with the fee negotiations, Ohio Cellular's counsel sent a letter to Defendants' counsel, stating:

I am writing to potentially save you some time. The fact is that if the attorney fee award exceeds a very limited amount, you will not collect it because the company will be liquidated. If you wish to discuss a resolution on a nominal basis, please let me know.

(Emphasis added). The negotiations were not successful. Two weeks after the letter On February 3, 1998, two weeks after the amount of fees was determined by the district court, Defendants filed the motion that is the subject of this appeal. Defendants sought to add Nelson as a third-party defendant to subject him to individual liability for fees because in light of the letter they feared that they would be unable to collect most or all of the fee award if only Ohio Cellular remained liable. Nelson, as an inventor of the '702 patent and president and sole shareholder of Ohio Cellular, ⁴ was intimately involved in the prosecution of the '702 patent and his conduct was the sole basis for the district court's conclusion that Ohio Cellular committed inequitable conduct. See, e.g., Ohio Cellular Prods. Corp. v. Adams USA, Inc., No. 3:94-CV-7251, slip op. at 8 (N.D.Ohio Sept. 25, 1997) ("[T]he Court finds that Donald Nelson knew [of the prior art].... Nelson did not disclose that information to the PTO ..., although he knew the information was material. The Court finds further that Nelson's conduct manifests a sufficiently culpable state of mind to warrant a determination that it resulted from an intent to mislead the PTO.").

was sent, Defendants submitted a fee petition and bill of costs to the district court. The district court finally awarded Defendants $178,888.51 on January 20, 1998.

In its decision allowing Nelson to be added as a party, the district court determined that Nelson failed to establish undue delay or undue prejudice, either or both of which would counsel against adding him as a party after entry of the fee liability judgment. See Foman v. Davis, 371 U.S. 178, 182, 83 S.Ct. 227, 9 L.Ed.2d 222 (1962) (stating that leave to amend should be freely given in the absence of proof by the non-movant of such factors as "undue delay, bad faith or dilatory motive" and "undue prejudice to the opposing party"). The district court noted its understanding that delay alone is an insufficient ground to deny a motion to amend, but that delay may become "undue" if the opposing party is prejudiced by the delay. To determine whether Nelson would suffer undue delay or prejudice if the motion were granted, the district court considered and discussed the facts of the case in view of the factors described in Fromson v. Citiplate, Inc., 886 F.2d 1300, 1303-04, 12 USPQ2d 1299, 1302 (Fed.Cir.1989). These factors include: "(1) whether Defendants' claim against Nelson arises out of the same conduct set forth in the original pleadings; (2) whether Nelson had notice sufficient to avoid prejudice to his defense and should have known that the action could have been brought against him; and (3) whether Nelson could be personally liable because he personally participated in or directed the wrongdoing that led to the corporation's liability." Ohio Cellular, slip op. at 4 (Mar. 25, 1998) (granting motion to amend).

With respect to the first Fromson factor, the district court made the following findings:

In this case, there is no dispute that Defendants' claim against Nelson arises out of the same conduct set forth in the original pleadings--inequitable conduct before the PTO. Indeed, the Court's finding that the Plaintiff corporation [Ohio Cellular] had engaged in inequitable conduct before the PTO was based on a factual determination that Nelson had intentionally failed to disclose a material piece of prior art to the PTO. Nelson personally claimed to be the inventor of the process for which he sought and obtained the patents that were subsequently invalidated by this Court. Nelson is the president and sole shareholder of the Plaintiff corporation. The evidence is clear that Nelson was personally involved in all aspects of the Plaintiff corporation's operations, including Id. Thus, the district court found that the first factor weighed against finding prejudice to Nelson.

the prosecution of the invalid patents and the filing of the instant lawsuit.

With respect to the second factor, the district court concluded that there was not "any dispute that Nelson had notice sufficient to avoid prejudice to his defense and should have known that the action could have been brought against him." Id. at 5. In coming to this conclusion, the district court stated:

The notice requirement is satisfied if there is a sufficient "identity of interest" between the original defendant and the newly added defendant, so that the institution of an action against one serves to provide notice of the litigation to the other. Jacobsen v. Osborne, 133 F.3d 315, 320 (5th Cir.1998); Fromson, 886 F.2d at 1304; Hernandez Jimenez v. Calero Toledo, 604 F.2d 99, 102-03 (1st Cir.1979). Nelson is the president and sole shareholder of the plaintiff corporation; thus, the identity of interest between the two parties is near-complete. Nelson had every reason to believe from the moment that Plaintiff corporation instituted this action that every penny the corporation spent would be a penny out of his own pocket. Further, Nelson has been actually aware of and involved in this litigation from its outset; he was the motivating force behind the institution of the lawsuit. He has diligently--even fiercely--acted to protect his interests at every stage of the proceedings.

Id. The district court therefore found that the second factor...