IP Law Daily, PATENT—E.D.N.Y.: Personal liability claims against owner of corporate infringer survive motion to dismiss, (Aug 8, 2024)

By Kevin M. Finson

Claims for patent and trademark infringement were properly stated against the owner of a company because they alleged his personal activities and knowledge and did not claim liability only on account of his corporate role.

A manufacturer of fiber optic cable stated patent and trademark infringement claims against the owner of a competing company, the U.S. District Court in Central Islip has held. The owner was potentially personally liable because he was alleged to have individually directed the infringing activity (Certicable LLC v. Point 2 Point Communications Corp., No. 2:23-cv-05322-NJC-SIL (E.D.N.Y. Aug. 7, 2024)).

Certicable, LLC (Certicable) was the owner of U.S. Patent No. 10,444,454 (the ’454 patent) which claimed the design and assembly of an armored fiber optic cable which Certicable sold under its registered TINIFIBER mark. Certicable alleged that a competitor in the fiber optic cable industry, Point 2 Point Communications Corporation (P2P), and its owner Roman Krawczyk, infringed the ’454 patent and its trademark rights by selling P2P’s NANOFIBER fiber optic product. P2P filed several counterclaims and moved to dismiss Certicable’s second amended complaint. Certicable moved to dismiss the counterclaims.

Second amended complaint. P2P argued that the claims should be dismissed against Krawczyk in his personal capacity because they failed to state a claim and that the second amended complaint should be dismissed in its entirety because it differed from the proposed second amended complaint filed alongside Certicable’s request for leave to amend. The central difference between the proposed amendment (which was proposed primarily to fix an issue of misnomer) and the actual amendment was the addition of Krawczyk as a defendant.

The court found that the allegations in the complaint addressed Krawczyk’s individual actions and personal knowledge for which he was conceivably liable under both federal and state law, and did not attempt to claim that he was personally liable only because of his corporate role at P2P. As to the issue of the different amendment, the court found that there was no prejudice due to the ample time left to respond and that the addition of a new party, especially when the facts underlying the claim would not cause any sort of surprise, and the court therefore exercised its discretion to allow the addition.

Counterclaims. The court found that a counterclaim for correction of inventorship was essentially moot because the person claiming to be an inventor had assigned his interest and therefore lacked standing. Counterclaims for tortious interference with business relations and unjust enrichment were based on the same facts as the federal claims and therefore preempted, and counterclaims for declaratory judgments of non-infringement and invalidity/unenforceability of the ’454 patent and trademark registration were duplicative of the claims and defenses already raised in the action.

The court denied the motion to dismiss the second amended complaint and granted the motion to dismiss the counterclaims with prejudice.

The Case is No. 2:23-cv-05322-NJC-SIL.

Judge: Choudhury, N.

Attorneys: Sandra Adele Hudak (Tarter Krinsky & Drogin LLP) for Certicable LLC. Celia Cohen (Ballard Spahr LLP) for Point 2 Point Communications Corp.

Companies: Certicable LLC; Point 2 Point Communications Corp.

Cases: Patent Trademark NewYorkNews