Case 1:11-cv-00797-RGA Document 94-7 Filed 12/19/11 Page 1 of 4 PageID #: 584
`Case 1:11—cv—OO797—RGA Document 94-7
`Filed 12/19/11 Page 1 of 4 Page|D #: 584
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`TAB 7
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`TAB 7
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`Case 1:11-cv-00797-RGA Document 94-7 Filed 12/19/11 Page 2 of 4 PageID #: 585
`
`Not Reported in F.Supp., 1991 WL 340196 (D.N.J.), 21 U.S.P.Q.2d 2033
`(Cite as: 1991 WL 340196 (D.N.J.))
`
`Page 1
`
`United States District Court, D. New Jersey.
`NEW JERSEY MACHINE INC., Plaintiff,
`v.
`ALFORD INDUSTRIES INC., Defendants.
`
`Civ. A. No. 89–1879(JCL).
`Oct. 7, 1991.
`
`Charles E. Baxley, Hart, Baxley, Daniels & Horn,
`New York City, for plaintiff.
`
`John J. Mulderig, Brown & Connery, Westmont,
`N.J., for defendant, Engraph, Inc.
`
`David R. Simon, Whitman & Ransom, Newark, N.J.,
`for defendant, Alford Industries, Inc.
`
`MEMORANDUM AND ORDER
`WOLFSON, District Judge.
`*1 Presently before the Court is the plaintiff's
`motion to add Thomas R. Pituch, Sancoa Interna-
`tional, and Weiler Engineering, Inc., as defendants,
`pursuant to Fed.R.Civ.P. 20, and to amend the com-
`plaint, pursuant to Fed.R.Civ.P. 15(a), to add the reis-
`sue patents. This matter is being considered pursuant
`to Fed.R.Civ.P. 78, and having considered the mov-
`ing papers and the opposition thereto, the Court, for
`the reasons discussed below, grants in part and denies
`in part the plaintiff's motion.
`
`Plaintiff's Motion to Add Party Defendants.
`The plaintiff seeks to name three additional de-
`fendants. This application for permissive joinder is
`governed by Fed.R.Civ.P. 20(a), which reads in per-
`tinent part:
`
`“All persons ... may be joined in one action as
`defendant if there is asserted against them jointly,
`severally, or in the alternative any right to relief in
`respect of or arising out of the same transaction, oc-
`currence, or series of transactions or occurrences and
`if any question of law or fact common to all defen-
`dants will arise in the action.”
`
`Thus, Fed.R.Civ.P. 20(a) sets forth a two part
`test for joinder of parties which requires that (1) a
`right to relief must be asserted against the parties
`which is predicated upon or arises out of a single
`transaction or occurrence or series of transactions and
`occurrences, and (2) there must exist some question
`of law or fact common to all parties which will arise
`in the action. Both tests must be satisfied if joinder is
`to be permitted. See Paine, Webber v. Merrill Lynch,
`Pierce, 564 F.Supp. 1358, 1370 (D.Del.1983), citing
`Mesa Computer Utilities, Inc. v. Western Union
`Computer Utilities, Inc., 67 F.R.D. 634, 636
`(D.Del.1975); King v. Pepsi–Cola Metropolitan Bot-
`tling Co., 86 F.R.D. 4, 5 (E.D.Pa.1979).
`
`Permissive joinder rests within the sound discre-
`tion of the court, who must determine whether the
`proposed joinder “comport[s] with the principles of
`fundamental fairness.” Shaw v. Munford, 526 F.Supp.
`1209, 1213 (S.D.N.Y.1981), citing Desert Empire
`Bank v. Insurance Company of North America, 623
`F.2d 1371, 1375 (9th Cir.1980). Fed.R.Civ.P. 20 was
`designed “to promote trial convenience and expedite
`the final resolution of disputes”. Horton Co. v. Inter-
`national Telephone & Telegraph Corp., 85 F.R.D.
`369, 371 (W.D.Pa.1980). The discretionary, but pro-
`tective, nature of Fed.R.Civ.P. 20 is further under-
`scored in subsection (b) thereof, which provides that
`
`“The court may make such orders as will prevent
`a party from being embarrassed, delayed, or put to
`expense by the inclusion of a party against whom the
`party asserts no claim and who asserts no claim
`against the party, and may order separate trials or
`make orders to prevent delay or prejudice.”
`
`See also Allied Chemical Corp. v. Strauss Inc.,
`53 F.R.D. 588, 589 (E.D.Pa.1971).
`
`New Jersey Machine does not satisfy the two
`part test of Fed.R.Civ.P. 20(a). Specifically, the
`claims against the proposed defendants do not arise
`out of the same transaction, occurrence or series of
`transactions or occurrences as set forth in plaintiff's
`earlier action against the defendants, Alford Indus-
`tries and Engraph. Despite plaintiff's lengthy dis-
`
`© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

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`Case 1:11-cv-00797-RGA Document 94-7 Filed 12/19/11 Page 3 of 4 PageID #: 586
`Page 2
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`Not Reported in F.Supp., 1991 WL 340196 (D.N.J.), 21 U.S.P.Q.2d 2033
`(Cite as: 1991 WL 340196 (D.N.J.))
`
`course concerning the facts of the alleged infringe-
`ment by the proposed defendants, it is clear that the
`allegedly infringing machines are separate and dis-
`tinct from those machines at issue in the infringement
`claim against defendants Alford Industries and En-
`graph. Infringement of the same patent by different
`machines and parties does not constitute the same
`transaction or occurrence to justify joinder of the new
`defendants. See Paine, Weber, supra, 564 F.Supp. at
`1371.
`
`*2 Contrary to plaintiff's argument that permis-
`sive joinders are common place in intellectual prop-
`erty actions, the defendants have more accurately
`stated the law applicable under these facts. In short,
`claims of infringement against unrelated defendants,
`involving different machines, should be tried sepa-
`rately against each defendant. “Allegations of in-
`fringement against two unrelated parties based on
`different acts do not arise from the same transaction.”
`Paine, Weber, supra, 564 F.Supp. at 1371, citing
`Siemens Aktiengesellschaft v. Sonotone Corp., 370
`F.Supp. 970 (N.D.Ill.1973). See also Magnavox Co.
`v. APS Electronics,
`Inc., 496 F.Supp. 29
`(N.D.Ill.1980) (joinder denied where the alleged in-
`fringement involved the same patent, but there was
`no indication that the development, marketing or
`sales efforts concerning the different infringing prod-
`ucts were related in any way).
`
`In the present case, the plaintiff has not demon-
`strated that the proposed parties are connected to
`New Jersey Machine's 1989 infringement action nor
`that the machines involved in the present action are
`similar to those machines against which plaintiff now
`alleges infringement. First, the parties are unre-
`lated,FN1 and in fact, compete in the same market
`place. Additionally, marketing and sales efforts con-
`cerning the allegedly infringing machines are not
`common between the parties. More significantly,
`however, the plaintiff fails to adequately allege or
`support any connection or substantial similarity be-
`tween the machines of the proposed defendants and
`those of the defendants Alford and Engraph. In fact,
`the defendants provide a detailed description of the
`key features and elements of the allegedly infringing
`machines which demonstrate that the machines are
`different and distinct from each other. Therefore,
`since the claims of infringement against these unre-
`lated defendants involve different machines, joinder
`of these new and unrelated parties would be inappro-
`
`priate at this late stage of the litigation.
`
`Plaintiff's Motion to Amend Complaint to Add Reis-
`sue Patents.
`Contrary to Fed.R.Civ.P. 20(a), the more liberal
`standard of Fed.R.Civ.P. 15(a), provides that leave to
`amend a pleading “shall be freely given when justice
`so requires.” The decision as to whether to grant or
`deny such a request rests within the court's discretion,
`which is guided by the policy that a party ought to be
`afforded an opportunity to test its claim on the merits.
`See Foman v. Davis, 371 U.S. 178, 182 Id. at 182
`(1982).
`
`Here, the plaintiff seeks to amend its complaint
`to add its reissue patents which now supplant the
`original patents sued upon in plaintiff's original com-
`plaint. The defendants merely oppose the form of
`plaintiff's amendment, contending that, pursuant to
`35 U.S.C. § 252, the reissue patents should be substi-
`tuted for the original patent, and not be included as
`additional patents.
`
`The statute and case law provide that original
`patents are superseded by reissue patents: “An origi-
`nal patent cannot be infringed once a reissue patent
`has issued, for the original patent is surrendered.”
`Seattle Box Co. v. Indus. Crating & Packing, 731
`F.2d 818, 827 (Fed.Cir.1984). An exception to this
`rule has been established by Congress whereby origi-
`nal claims receive continuing effect if the claims of
`the original and reissued patents are identical. Spe-
`cifically, “in so far as the claims of the original and
`reissued patents are identical, such surrender shall not
`affect any action then pending nor abate any cause of
`action then existing, and the reissued patent, to the
`extent that its claim are identical with the original
`patent, shall constitute a continuation thereof and
`have affect continuously from the date of the original
`patent.” 35 U.S.C. § 252. Consequently, the plaintiff
`cannot amend his complaint seeking relief for in-
`fringement of both the reissue patents and their corre-
`sponding original patents. Consistent with the above-
`stated law, the plaintiff may amend its complaint to
`add the reissue patent in substitution only for the
`original patents named in plaintiff's complaint. Those
`original patents have now been supplanted and super-
`seded by the reissue patents.
`
`ORDER
`*3 IT IS on this 7th day of October, 1991,
`
`© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

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`Case 1:11-cv-00797-RGA Document 94-7 Filed 12/19/11 Page 4 of 4 PageID #: 587
`Page 3
`
`Not Reported in F.Supp., 1991 WL 340196 (D.N.J.), 21 U.S.P.Q.2d 2033
`(Cite as: 1991 WL 340196 (D.N.J.))
`
`ORDERED that the plaintiff's motion to join the
`proposed defendants, Thomas R. Pituch, Sancoa In-
`ternational, and Weiler Engineering, Inc., pursuant to
`Fed.R.Civ.P. 20(a) is hereby denied; and it is further
`
`ORDERED that the plaintiff's motion to amend
`its complaint adding the reissue patents in substitu-
`tion for the original patents named in plaintiff's com-
`plaint consistent with 35 U.S.C. § 252 is hereby
`granted; and it is further
`
`ORDERED that the plaintiff file its amended
`complaint within 10 days from the date of this Order.
`
`FN1. Plaintiff attempts to connect these
`separate infringement claims by pointing to
`the “continuing predatory conduct of puta-
`tive defendant Pituch” (plaintiff, NJM's
`Memorandum at page 21) who was formerly
`employed by defendant Engraph for ap-
`proximately 14 years. However, plaintiff
`fails to sufficiently demonstrate any connec-
`tion between Pituch's activities at Engraph
`and at Sancoa International, where he is cur-
`rently employed as General Manager. With-
`out more, Pituch's prior relationship with
`Engraph is inadequate to support joinder.
`
`D.N.J.,1991.
`New Jersey Mach. Inc. v. Alford Industries, Inc.
`Not Reported in F.Supp., 1991 WL 340196 (D.N.J.),
`21 U.S.P.Q.2d 2033
`
`END OF DOCUMENT
`
`© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.