Summary
In Rohm, the court denied the plaintiff's request for leave to file a supplemental pleading because it believed that granting such leave would permit an "end run" around Southwest. Rohm, 2003 U.S. Dist. LEXIS 22227 at *8.
Summary of this case from Masonite Corporation v. Craftmaster ManufacturingOpinion
CIVIL ACTION NO. 00-6379
November 26, 2003
MEMORANDUM ORDER
Presently before the Court are two related motions: Nichia Corporation and Nichia America Corporation's ("Nichia") Expedited Motion to Declare Rohm Co., Ltd.'s ("Rohm") Certificates of Correction Ineffective for this Action, and Rohm's Motion for Leave to File a Supplemental Pleading. For the following reasons, Nichia's Motion will be granted and Rohm's Motion will be denied.
I. BACKGROUND
On February 1, 2000, Rohm filed its Preliminary Amendment for patent `899, (Rohm's Mot. for Leave to File a Supplemental Pleading [hereinafter Rohm's Mot. for Leave] at Ex. 4.), and on July 4, 2000, the United States Patent and Trademark Office ("PTO") issued patent `899 to Rohm. (Rohm's Mot. for Leave at 6.) On October 3, 2000, Rohm filed a request for Certificate of Correction of PTO mistake, pursuant to 35 U.S.C. § 254, (Rohm's Mot. for Leave at Ex. 5.), which was approved on November 16, 2000. (Nichia's Expedited Mot. to Declare Rohm's Certificates of Correction Ineffective for this Action [hereinafter Nichia's Expedited Mot.] at Ex. A.) On October 26, 2000, Rohm filed a request for Certificate of Correction of applicant mistake under 35 U.S.C. § 255. (Br. in Supp. of Rohm's Mot. at 6.) On November 20, 2000, Rohm requested a Substitute Certificate of Correction, to replace a similar request filed on October 3, 2000. (Nichia's Expedited Mot. at Ex. D.) On December 12, 2000, the PTO issued the First `899 Certificate. (Rohm's Mot. for Leave at Ex. 1.) Rohm filed this Complaint on December 15, 2000. (Doc. No. 1.) Subsequent to filing the Complaint, the PTO issued its Second and Third `899 Certificates on February 6, 2001, and October 23, 2001. (Nichia's Expedited Mot. at Exs. E and F.)
35 U.S.C. § 254 states:
Whenever a mistake in a patent, incurred through the fault of the Patent and Trademark Office, is clearly disclosed by the records of the Office, the Director may issue a certificate of correction stating the fact and nature of such mistake, under seal, without charge, to be recorded in the records of patents. A printed copy thereof shall be attached to each printed copy of the patent, and such certificate shall be considered as part of the original patent. Every such patent, together with such certificate, shall have the same effect and operation in law on the trial of actions for causes thereafter arising as if the same had been originally issued in such corrected form. The Director may issue a corrected patent without charge in lieu of and with like effect as a certificate of correction.35 U.S.C. § 254.
35 U.S.C. § 255 states:
Whenever a mistake of a clerical or typographical nature, or of minor character, which was not the fault of the Patent and Trademark Office, appears in a patent and a showing has been made that such mistake occurred in good faith, the Director may, upon payment of the required fee, issue a certificate of correction, if the correction does not involve such changes in the patent as would constitute new matter or would require re-examination. Such patent, together with the certificate, shall have the same effect and operation in law on the trial of actions for causes thereafter arising as if the same had been originally issued in such corrected form.35 U.S.C. § 255.
On September 5, 2000, the PTO issued its `399 patent to Rohm. (Nichia's Expedited Mot. at 5.) On October 26, 2000, Rohm requested the `399 Certificate of Correction. (Id.) Again, Rohm filed the present Complaint on December 15, 2000. (Doc. No. 1.) On April 2, 2001, Rohm's request for Certificate of Correction was approved by the PTO, (Nichia's Expedited Mot. at 5.), and on November 20, 2001, the PTO issued its `399 Certificate of Correction. (Id. at Ex. G.)
On June 26, 2003, Nichia filed the present Expedited Motion to Declare Rohm's Certificates of Correction Ineffective for this Action. (Doc. No. 53.) On July 10, 2003, Rohm filed the present Motion for Leave to File a Supplemental Pleading. (Doc. No. 58.)
II. DISCUSSION
A. Nichia's Expedited Motion to Declare Rohm's Certificates of Correction Ineffective for this Action
Under the Federal Circuit's holding in Southwest Software, Inc. v. Harlequin Inc., 226 F.3d 1280 (Fed. Cir. 2000), a "Certificate of Correction is not effective as to a cause of action arising before the Certificate was issued." SDS USA, Inc. v. Ken Specialties. Inc., 122 F. Supp.2d 533, 547 (D.N.J. 2000). InSouthwest the court found that:
Southwest's cause of action . . . arose before the certificate of correction was issued [pursuant to 35 U.S.C. § 254]. We hold that the certificate of correction . . . is not to be given effect in this pre-certificate lawsuit. The certificate of correction is only effective for causes of action arising after it was issued. This interpretation of § 254 is based upon the language of the statute.Southwest 226 F.3d at 1294.
Applying Southwest to the instant case, we conclude that only those valid Certificates issued prior to December 15, 2000, are effective for purposes of the present action. Because the `899 Certificate, issued on February 6, 2001, clearly states its intent to supercede the pre-Complaint Certificate issued on December 12, 2000, we conclude that Rohm no longer possesses valid, pre-Complaint Certificates for `899. Regarding patent `399, the relevant Certificate was issued on November 20, 2001, eleven months after the filing of this Complaint. Accordingly, the Certificates for `899 and `399 are ineffective for the current action.
B. Rohm's Motion for Leave to File a Supplemental Pleading
In light of Southwest we shall deny Rohm's request to amend its Complaint in order to establish a new filing date, so that the Certificates may be effective in the current action. Despite the liberal pleadings allowed under Federal Rule of Civil Procedure 15(d), courts need not allow supplemental pleadings if the efforts would be futile.Glaziers v. Glass Workers Union Local No. 252 Annuity Fund v. Janney Montgomery Scott, Inc., 155 F.R.D. 97, 100 (E.D. Pa. 1994). "An amendment is considered futile `if the amendment will not cure [any] deficiency in the original complaint or if the amended complaint cannot withstand a motion to dismiss.'" Id. at 100 (quotingJablonski v. Pan American World Airways. Inc., 863 F.2d 289, 292 (3d Cir. 1988). Granting Rohm the requested leave would permit an end run around the clear language of Southwest. While Rohm is correct in asserting that Southwest did not explicitly foreclose this possibility, we are aware of no case, and Rohm has provided none, that has permitted such a maneuver. Accordingly, we deny Rohm's Motion.
III. CONCLUSION
For these reasons, Nichia's Expedited Motion to Declare Rohm's Certificates of Correction Ineffective for this Action is GRANTED, and Rohm's Motion for Leave to File a Supplemental Pleading is DENIED.
An appropriate Order follows.
ORDER
AND NOW, this 26th day of November, 2003, upon consideration of Nichia's Expedited Motion to Declare Rohm's Certificates of Correction Ineffective for this Action (Doc. No. 53.), and Rohm's Motion for Leave to File a Supplemental Pleading Motion (Doc. No. 58.), and all documents filed in support thereof and opposition thereto, it is ORDERED that:
1. Nichia's Expedited Motion to Declare Rohm's Certificates of Correction Ineffective for this Action is GRANTED; and
2. Rohm's Motion for Leave to File a Supplemental Pleading is DENIED.
IT IS SO ORDERED.