Opinion
Civil No. 00-1677-AS
July 19, 2001
FINDINGS AND RECOMMENDATION
Defendant William Hammond ("Hammond") seeks to dismiss this patent infringement action on the ground that plaintiff Supergard Canada, Ltd. ("Supergard"), failed to join an indispensable party under Fed.R.Civ.P. 19. For the reasons set forth below, the court recommends denying Hammond's motion to dismiss.
BACKGROUND
Charles R. Nixon was the inventor and original holder of the patent at issue in this litigation (the "Patent"). In 1998, Nixon assigned all of his interest in the Patent to Supergard. Hammond claims an interest in the Patent based upon his relationship and course of conduct with Nixon since August 1, 1991.
LEGAL STANDARD
Fed.R.Civ.P. 12(b)(7) permits a defendant to present a defense based on a plaintiff's failure to join a party. Rule 19(a) defines those persons who should be joined as parties to the action, and Rule 19(b) supplies the result when joinder of such a party is not feasible. C. Wright, A. Miller M. Kane, Federal Practice and Procedure, § 1604 at 40. The party raising the defense has the burden of showing that the absent party is needed for a just adjudication. Sierra Club v. Watt, 608 F. Supp. 305, 321 (E.D.Cal. 1985). When confronted with the issue of whether a party is necessary to an action, a court must initially determine whether:
(1) in the person's absence complete relief cannot be accorded among those already parties, or (2) the person claims an interest relating to the subject of the action and is so situated that the disposition of the action in the person's absence may (i) as a practical matter impair or impede the person's ability to protect that interest or (ii) leave any of the persons already parties subject to a substantial risk of incurring double, multiple, or otherwise inconsistent obligations by reason of the claimed interest.
If one of these tests is satisfied, the court must order the joinder of the absent party. Fed.R.Civ.P. 19(a). However, should the court determine that joinder of the absent party is not feasible, Rule 19(b) provides a nonexhaustive list of factors to consider in determining whether "in equity and good conscience" the court should regard the absent party as indispensable and dismiss the action, or should proceed without the absent party. Specifically, Rule 19 provides that:
The factors to be considered by the court include: first, to what extent a judgment rendered in the person's absence might be prejudicial to the person or those already parties; second, the extent to which, by protective provisions in the judgment, by the shaping of relief, or other measures, the prejudice can be lessened or avoided; third, whether a judgment rendered in the person's absence will be adequate; fourth, whether the plaintiff will have an adequate remedy if the action is dismissed for nonjoinder.
Under Rule 19, pragmatic concerns, especially the effect on the parties and on the litigation, control a court's decision on joinder. Provident Tradesmens Bank Trust Co. v. Patterson, 390 U.S. 102, 119. "Rule 19 does not prevent the assertion of compelling substantive interests; it merely commands the courts to examine each controversy to make certain that the interests really exist." Id.
DISCUSSION
The pleadings, and the attached exhibits, clearly establish that Supergard is the exclusive owner of the Patent and has the right to bring this action to enforce the Patent in its own name. Hammond may assert any defense that he may have had against Nixon against Supergard in this action.
Nixon retained no interest in the Patent. Accordingly, Nixon does not have any interests that will be affected by this litigation. The fact that Nixon may be an important witness in this action and that obtaining discovery material from Nixon may be easier if he was a party to the action does not make Nixon an indispensable party to the action.
CONCLUSION
Hammond's motion (#17) to dismiss for failure to add an indispensable party should be DENIED.
SCHEDULING ORDER
Objections to these Findings and Recommendation(s), if any, are due August 3, 2001. If no objections are filed, the Findings and Recommendation(s) will be referred to a district court judge and go under advisement on that date.
If objections are filed, the response is due no later than August 17, 2001. When the response is due or filed, whichever date is earlier, the Findings and Recommendation(s) will be referred to a district court judge and go under advisement.