United States District Court, E.D. Texas, Marshall Division
PAYNE UNITED STATES MAGISTRATE JUDGE.
the Court are (1) Defendant Imperial Toy LLC's
(“Imperial”) Motion to Dismiss (Dkt. No. 24); and
(2) Plaintiff Pietro Pasquale Antoni Sgromo's
(“Sgromo”) Motion for Temporary Injunction (Dkt.
No. 18). After consideration, the Court grants Imperial's
Motion to Dismiss. The Court concludes that Plaintiff lacks
standing to assert claims of patent infringement against
Imperial. Accordingly, Plaintiff's patent infringement
claims against Imperial are dismissed with prejudice. The
Court concludes that it lacks subject matter jurisdiction
over the state law claims against Imperial, so those claims
are dismissed without prejudice. Because Defendant HEB
Grocery Company, LP has not appeared in the case, and there
is no evidence in the record that Plaintiff has served
process on HEB, all claims against it are dismissed without
prejudice under Rule 4(m). The Court also denies
Plaintiff's Motion for Temporary Injunction.
First Amended Complaint (Dkt. No. 16), Sgromo asserts various
claims against Imperial:
• Count I -infringement of U.S. Patent No. 8, 654, 422
(“'422 Patent”); (Id. at 4-5)
• Count II -infringement of U.S. Patent No. 9, 069, 243
(“'243 Patent”); (Id. at 5-6)
• Count III - violation of the Texas Uniform Trade
Secrets Act; (Id. at 6-7)
• Count IV - tortious interference; (Id. at 7)
• Count V - unfair competition; (Id. at 8)
• Count VI - unjust enrichment; (Id. at 9)
Court will first address Counts I and II together. Then, the
Court will address the state law claims that are asserted in
Counts III through VI. Lastly, the Court will address the
Motion for Temporary Injunction.
Plaintiff lacks standing for his Count I and Count II claims
of patent infringement.
invoking federal jurisdiction bears the burden of showing
that it has standing to sue. Lujan v. Defs. of
Wildlife, 504 U.S. 555, 561 (1992). “[S]tanding is
to be determined as of the commencement of suit.”
Id. at 571 n.5. “[I]n order to assert standing
for patent infringement, the plaintiff must demonstrate that
it held enforceable title to the patent at the inception
of the lawsuit.” Paradise Creations, Inc. v.
UV Sales, Inc., 315 F.3d 1304, 1309 (Fed. Cir. 2003)
(emphasis in original) (citing Lans v. Digital Equip.
Corp., 252 F.3d 1320, 1328 (Fed. Cir. 2001) (holding
that the appellant did not have standing, because he had
already assigned title to the patent at the inception of the
lawsuit); Enzo APA & Son, Inc. v. Geapag A.G.,
134 F.3d 1090, 1092 (Fed. Cir. 1998) (holding that a licensee
lacked standing where there was no written transfer of rights
under the patent at the time the infringement claims were
brought and stating that, “[a]s a general matter,
parties should possess rights before seeking to have them
vindicated in court”); Jim Arnold Corp. v.
Hydrotech Sys., Inc., 109 F.3d 1567, 1572 (Fed. Cir.
1997) (holding that an assignor lacked standing, because it
had not succeeded in rescinding or canceling its assignment
in state court at the time it filed its complaint in federal
court); Gaia Techs., Inc. v. Reconversion Techs.,
Inc., 93 F.3d 774, 778 (Fed. Cir. 1996) (holding that
the plaintiff's patent and trademark infringement claims
were required to be dismissed for lack of standing, because
of its “inability to prove that it was the owner of the
Intellectual Property at the time the suit was filed”),
as amended on rehearing on different
grounds, 104 F.3d 1296 (Fed. Cir. 1996))).
Federal Circuit's opinion in Jim Arnold is
particularly instructive. In that case, the Federal Circuit
To invoke the jurisdiction of a federal court under §
1338, it is necessary that plaintiff allege facts that
demonstrate that he, and not the defendant, owns the patent
rights on which the infringement suit is premised.
Furthermore, this allegation of ownership must have a
plausible foundation. Federal jurisdiction cannot lie based
on allegations that are frivolous or insubstantial. See
Cervantez v. Bexar County Civil Service Comm'n, 99
F.3d 730, 733 (5th Cir. 1996). Thus, if plaintiff cannot in
good faith allege such facts because, absent judicial
intervention to change the situation, under the terms of a