Heinz Kettler GMBH & Co. v. RAZOR USA, LLC
750 F. Supp. 2d 660
E.D. Va.2010Background
- Heinz Kettler GMBH & Co., KG and Kettler International, Inc. filed a patent infringement suit in the Eastern District of Virginia against Razor USA, LLC.
- Heinz Kettler owned the patents; Kettler International was the exclusive US distributor of Heinz Kettler's products.
- Razor moved to dismiss for lack of standing and to transfer venue to the Central District of California.
- On September 1, 2010, Heinz Kettler assigned the patents to Kettler International; the amended complaint (filed September 9, 2010) alleged ownership by assignment and sought to substitute Kettler International as party plaintiff.
- Razor argued the amended complaint was a improper supplement under Rule 15(d) and that standing could not be retroactively conferred.
- The court held that the supplemental complaint was not futile, that Kettler International has standing to continue the action, and that transfer to California is not warranted.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Standing of Kettler International post-assignment | Mas-Hamilton supports standing for the assignee. | Post-suit assignment cannot cure initial lack of standing; retroactive effect denied. | Kettler International has standing; supplemental complaint allowed. |
| Properness of the amended/supplemental pleading | Rule 15(d) permits supplementation for post-transaction events. | Amendment is a futile supplement lacking standing; improperly filed. | Supplemental complaint granted; not futile. |
| Transfer under 28 U.S.C. § 1404(a) | Transfer to California is proper if convenience favors Razor. | Facts favor transfer due to forum convenience and center of activity. | Transfer denied; venue remains in ED Va. |
| Strike of amended complaint | Strike unnecessary because the pleading is a proper supplement. | Strike appropriate if amended pleading was improper supplementation. | Motion to strike moot; supplemental pleading properly authorized. |
Key Cases Cited
- Mas-Hamilton Group v. LaGard Inc., 156 F.3d 1206 (Fed. Cir. 1998) (proper plaintiff may assign rights and sustain suit; standing to prosecute past infringement)
- Enzo APA & Son, Inc. v. Geapag AG, 134 F.3d 1090 (Fed. Cir. 1998) (post-suit assignment and standing considerations)
- Gaia Techs., Inc. v. Reconversion Techs., Inc., 93 F.3d 774 (Fed. Cir. 1996) (standing; assignment not retroactive when no original plaintiff had standing)
- Arachnid, Inc. v. Merit Industries, Inc., 939 F.2d 1574 (Fed. Cir. 1991) (assignment of patent rights and standing limits for past infringement)
- Schreiber Foods, Inc. v. Beatrice Cheese, Inc., 402 F.3d 1198 (Fed. Cir. 2005) (ownership requirement to commence patent action)
- Insituform Techs., Inc. v. CAT Contracting, Inc., 385 F.3d 1360 (Fed. Cir. 2004) (initial owner suing; post-transfer of rights to non-party allowed to proceed)
- Koh v. Microtek Int'l Inc., 250 F. Supp.2d 627 (E.D. Va. 2003) (forum-choices and transfer factors in § 1404(a) analysis)
- JTH Tax, Inc. v. Lee, 482 F. Supp.2d 731 (E.D. Va. 2007) (transfer analysis considerations)