MPEG LA, L.L.C. v. Toshiba America Information Systems, Inc.
OPINION AND ORDER re: 11 MOTION to Remand to State Court filed by MPEG LA, L.L.C., 24 MOTION to Dismiss TOSHIBA AMERICA CONSUMER PRODUCTS, L.L.C., with Prejudice filed by Toshiba America Information Systems, Inc.: The Court has considered MPEG's remaining arguments, both in favor of remand and in opposition to dismissal of its claims against TACP, and finds them to be without merit. Accordingly, and for the reasons stated above, MPEG's motion to re mand is DENIED, and TAIS's motion to dismiss all claims against TACP is GRANTED. Further, in accordance with the directions set forth above, MPEG is ordered to show cause why its complaint should not be dismissed for failure to join a necessary party or parties - namely, the underlying patent owner or owners. The Clerk of Court is directed to terminate TACP as a party and to terminate Docket Nos. 11 and 24. (Signed by Judge Jesse M. Furman on 10/29/2015) (tn)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
MPEG LA, L.L.C,
TOSHIBA AMERICA INFORMATION SYSTEMS,
INC., et al.,
OPINION AND ORDER
JESSE M. FURMAN, United States District Judge:
Plaintiff MPEG LA, L.L.C. (“MPEG”) filed this case in New York Supreme Court,
asserting breach of contract and unjust enrichment claims against Toshiba America Information
Systems, Inc. (“TAIS”) and Toshiba America Consumer Products, L.L.C (“TACP”), subsidiaries
of the electronics manufacturer Toshiba Corporation. MPEG is the administrator of “patent
pools,” arrangements through which companies can pay royalties in exchange for licenses to use
a large number of patents rather than having to obtain separate licenses from each individual
patent holder. MPEG alleges that TACP breached their patent pool licensing contract by failing
to pay royalties, and that TAIS — which later merged with TACP — was unjustly enriched by
manufacturing products using the patents in the pool without compensating MPEG. TAIS
removed the case to this Court, and MPEG now moves to remand it back to state court. In
addition, TAIS moves to dismiss all claims against TACP on the ground that it is a non-existent
entity lacking the capacity to be sued. For the reasons that follow, MPEG’s motion to remand is
DENIED and TAIS’s motion to dismiss the claims against TACP is GRANTED.
The following facts are taken from the Complaint and assumed to be true for the purposes
of this motion. See, e.g., LaFaro v. N.Y. Cardiothoracic Grp., PLLC, 570 F.3d 471, 475 (2d Cir.
2009); Kernan v. Kurz-Hastings, Inc., 175 F.3d 236, 240 (2d Cir. 1999); Ball v. Metallurgie
Hoboken-Overpelt, S.A., 902 F.2d 194, 197 (2d Cir. 1990).
MPEG, a limited liability company based in Colorado, “administers license agreements
for pools of patents essential to the manufacture of products incorporating certain standards and
technologies.” (Notice of Removal (Docket No. 1), Ex. A (“Compl.”) ¶¶ 2, 6; Mem. L. Supp.
Pl.’s Mot. To Remand (Docket No. 14) (“Pl.’s Mem.”) 2-3). Through a pool, MPEG receives
nonexclusive, worldwide licenses from patent holders and, in turn, sublicenses the patents to
others. (Compl. ¶ 10). The Complaint explains the arrangements as follows:
By entering into a license agreement with MPEG LA for a particular patent pool,
a licensee can manufacture and sell products using any or all of the pooled patents
in exchange for the payment of royalties. MPEG LA collects the royalties for the
benefit of the various patent holders contributing to the patent pool as licensors to
MPEG LA. While any licensee is free to enter into separate license agreements
with the individual patent holders, the licensee may avail itself of the convenience
of the single pooled license and substantially reduce its transaction costs by
entering into the portfolio license with MPEG LA for the entire patent pool.
(Id. ¶ 6). The pool relevant to this case, for standards and technologies related to the
manufacturing of televisions, is memorialized in the Advanced Television Systems Committee
Patent Portfolio License (the “ATSC Contract”). (Id. ¶ 8). On November 6, 2008, MPEG and
TACP entered into the ATSC Contract, through which TACP agreed to pay royalties in
exchange for a worldwide, nonexclusive sublicense to make and sell any “ATSC Receiver
Product,” defined as “a product, device, converter or thing or portion thereof in whatever form
capable of demodulating and decoding an over-the-air, R[adio] F[requency] terrestrial broadcast
signal in compliance with” certain standards. (Id. ¶¶ 8, 11-18).
The Complaint alleges that TACP submitted royalty statements and paid royalties to
MPEG through the end of 2010, but “underreported and underpaid . . . millions in royalties” for
television units manufactured and sold in Mexico. (Id. ¶¶ 26-29). TAIS submitted the last
royalty statement to MPEG, for the final quarter of 2010, in February 2011. (Id. ¶¶ 27, 30). That
same month, TACP “merged with and into” TAIS, leaving TAIS as the sole “surviving entity.”
(Id. ¶ 4; see id. ¶¶ 23-25). “Pursuant to the Merger Agreement and by operation of law,” the
Complaint alleges, “TAIS succeeded to the debts, liabilities, and duties of TACP under the
ATSC Contract. Section 13 of the Merger Agreement expressly provides that ‘all debts,
liabilities, and duties of [TACP AND TAIS] shall [after the effective date] attach to TAIS . . . .”
(Id. ¶ 24 (alterations in original)). Since the merger, neither TAIS nor TACP has submitted
royalty statements or made royalty payments to MPEG pursuant to the ATSC Contract. (Id.
¶¶ 30-31). TAIS, however, “continued and continues” to manufacture and sell “substantial
quantities” of products falling under the ATSC Contract, “for which millions in royalties are
owed to MPEG LA under the ATSC Contract.” (Id. ¶ 31).
On or about April 20, 2015, MPEG filed this case in New York Supreme Court, alleging
breach of the ATSC Contract and unjust enrichment. (Id. ¶¶ 34-45). On May 26, 2015, TAIS
removed the case to this Court, contending that the Court has federal question and patent
jurisdiction over MPEG’s unjust enrichment claim, pursuant to Title 28, United States Code,
Sections 1331 and 1338, and supplemental jurisdiction over MPEG’s contract claim, pursuant to
Title 28, United States Code, Section 1367. (Notice of Removal ¶¶ 5-11). (In its Notice of
Removal, TAIS also suggested that there “may” be diversity jurisdiction (id. ¶¶ 12-13), but it has
since abandoned that suggestion as the parties are apparently not diverse. (Mem. L. Supp. Def.’s
Mot. To Dismiss Toshiba America Consumer Products, L.L.C., Prejudice (“Def.’s Mem.”)
(Docket No. 25) 1, 4).) As noted, MPEG moves to remand the case back to state court; it also
seeks fees and costs, contending that TAIS had no colorable basis to remove the case to federal
court. (Pl.’s Mem. 13-14). TAIS moves to dismiss all claims against TACP, on ground that
TACP is a non-existent entity and thus lacks the legal capacity to be sued. (Def.’s Mem. 2-3).
MPEG’S MOTION TO REMAND
The Court begins, as it must, with MPEG’s motion to remand, which turns on whether
any claims in the case “arise under the Constitution, laws, or treaties of the United States,” 28
U.S.C. § 1331, or, more particularly, “under any Act of Congress relating to patents,” id.
§ 1338(a). 1 As a general matter, such jurisdiction extends “only [to] those cases in which a wellpleaded complaint establishes either that federal [or patent] law creates the cause of action or that
the plaintiff’s right to relief necessarily depends on resolution of a substantial question of federal
[or patent] law.” Franchise Tax Bd. v. Constr. Laborers Vacation Trust for S. Cal., 463 U.S. 1,
27-28 (1983); see also Gunn v. Minton, — U.S. —, 133 S.Ct. 1059, 1064 (2013) (noting that the
Court has “interpreted the phrase ‘arising under’ in [Sections 1331 and 1338] identically,” and
has applied its “§ 1331 and § 1338(a) precedents interchangeably”). At the same time, a
“plaintiff cannot avoid removal by declining to plead ‘necessary federal questions.’” Romano v.
Kazacos, 609 F.3d 512, 518-19 (2d Cir. 2010) (quoting Rivet v. Regions Bank, 522 U.S. 470, 475
TAIS does not contend that MPEG’s contract claim raises a federal question, and for
good reason. See, e.g., Deats v. Joseph Swantak, Inc., 619 F. Supp. 973, 981 (N.D.N.Y. 1985)
(noting that contract claims to collect patent royalties arise under state, not federal, law and
citing cases). Nevertheless, there is no dispute that, if the Court has jurisdiction over the unjust
enrichment claim, it may exercise supplemental jurisdiction over the contract claim pursuant to
Section 1367, as the claim involves the same products, the same patents, and the same parties.
(See Pl.’s Mem. 10-11; Def’s. Mem. Law Resp. Pl.’s Mot. To Remand (Docket No. 22) (“Def.’s
Resp.”); 14; Mem. L. Further Supp. Pl.’s Mot. To Remand Opp’n Def. Toshiba Am. Information
Sys., Inc.’s Mot. To Dismiss Toshiba Am.Consumer Prods., L.L.C. Prejudice (Docket No. 29)
(“Pl.’s Reply”) 5-12). Accordingly, the Court limits its discussion to whether it has jurisdiction
over the unjust enrichment claim.
(1998)); see Sullivan v. Am. Airlines, Inc., 424 F.3d 267, 271 (2d Cir. 2005) (“[A] plaintiff may
not defeat federal subject-matter jurisdiction by ‘artfully pleading’ his complaint as if it arises
under state law where the plaintiff’s suit is, in essence, based on federal law.”). Applying that
principle, the Supreme Court has held that, “in certain cases federal-question jurisdiction will lie
over state-law claims that implicate significant federal issues.” Grable & Sons Metal Prods.,
Inc. v. Darue Eng’g & Mfg., 545 U.S. 308, 312 (2005). The doctrine — known as the
“substantial federal-question doctrine” — “captures the commonsense notion that a federal court
ought to be able to hear claims recognized under state law that nonetheless turn on substantial
questions of federal law, and thus justify resort to the experience, solicitude, and hope of
uniformity that a federal forum offers on federal issues.” Id.; see generally In re Standard &
Poor’s Rating Agency Litig., 23 F. Supp. 3d 378, 392-94 (S.D.N.Y. 2014).
Pursuant to the substantial federal-question doctrine, “federal jurisdiction over a state law
claim will lie if a federal issue is: (1) necessarily raised, (2) actually disputed, (3) substantial, and
(4) capable of resolution in federal court without disrupting the federal-state balance approved by
Congress.” Gunn, 133 S. Ct. at 1065. In Grable, the leading modern case on the doctrine, the
Supreme Court found federal jurisdiction proper in part because the federal issue in dispute —
whether a plaintiff in a quiet title action had received proper notice from the Internal Revenue
Service of the sale of his seized property — “appear[ed] to be the only legal or factual issue
contested in the case.” 545 U.S. at 315. Further, and importantly, the Court found that
“jurisdiction over actions like Grable’s would not materially affect, or threaten to affect, the
normal currents of litigation” because “it is the rare state quiet title action that involves contested
issues of federal law.” Id. at 319. Since Grable, the Supreme Court has emphasized that the
doctrine confers federal jurisdiction in only a “special and small category” of cases, Empire
Healthchoice Assurance, Inc. v. McVeigh, 547 U.S. 677, 699 (2006), and that if the federal issue
presented is not “a nearly pure issue of law,” but rather “is fact-bound and situation-specific,”
federal jurisdiction is not appropriate, id. at 700-01 (internal quotation marks omitted).
Applying those standards here, the Court concludes that MPEG’s unjust enrichment
claim raises a substantial federal question and, thus, that TAIS’s removal was proper. Under
New York law (which the parties agree applies, see Pl.’s Mem. 8; Def.’s Resp. 5), a claim for
unjust enrichment requires a showing “that (1) defendant was enriched, (2) at plaintiff’s expense,
and (3) equity and good conscience militate against permitting defendant to retain what plaintiff
is seeking to recover.” Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc., 373 F.3d 296, 306 (2d
Cir. 2004); see also, e.g., Georgia Malone & Co. v. Rieder, 19 N.Y.3d 511, 516 (2012). Here,
MPEG alleges that TAIS “benefited by acting as if it had a patent pool license with MPEG LA,
i.e., that it was ‘under the umbrella of the protection of the ATSC Contract’” and “it [did] so at
the expense of MPEG LA which had nonetheless provided this umbrella of protection but was
not adequately compensated for doing so.” (Pl.’s Mem. 8 (citing Compl. ¶¶ 41-44)). Despite
MPEG’s assertions to the contrary, to prevail on that claim, it must necessarily prove
infringement of one or more of the patents in the patent pool; after all, the value or resource
MPEG contends that TAIS has exploited is nothing more than the collection of the relevant
patents. (See Compl. ¶¶ 1, 40-45). That is, the only way MPEG can prove that TAIS benefited
at its expense is by showing that it used (and therefore infringed) a patent in the pool.
That fact distinguishes MPEG’s claim from breach of contract cases found not to raise
federal patent questions because the claims turned on interpretation or application of a term in
the contract, and infringement or non-infringement was not the determining factor. See, e.g.,
Nanomedicon, LLC v. Research Found. of N.Y., 784 F. Supp. 2d 153, 158 (E.D.N.Y. 2011)
(remanding where resolution of the breach of contract and tortious interference claims did “not
require a court to determine any issue of patent construction or validity,” but only the scope of
the parties’ agreement); Discovision Assocs. v. Fuji Photo Film Co., No. 07-CV-6348 (PAC),
2007 WL 5161825, at *5-6 (S.D.N.Y. Oct. 29, 2007) (remanding where one possible
construction of the parties’ contract meant that a breach had occurred when the defendant
produced certain products, whether or not that implicated the relevant patents); Design Sci. Toys,
Inc. v. McCann, 931 F. Supp. 282, 283 (S.D.N.Y. 1996) (remanding where a patent was the
property in dispute but determination of the plaintiff’s claims turned on contract law rather than
infringement). As one court put it in similar circumstances, if TAIS benefited unjustly from sale
of the relevant products, “it is because that enrichment infringed one of [MPEG’s] rights, and
such a right could derive only from the contract — in which case the unjust enrichment claim
cannot stand — or from the patent laws — in which case the unjust enrichment claim is really
just a patent infringement claim.” Crye Precision LLC v. Duro Textiles, LLC, No. 15-CV-1681
(DLC), — F. Supp. 3d —, 2015 WL 3751658, at *8 (S.D.N.Y. June 16, 2015) (citation omitted).
Indeed, if it were otherwise, “plaintiffs bringing patent infringement claims could simply style
them as claims for unjust enrichment to avoid” federal jurisdiction. Id.
Thus, MPEG’s unjust enrichment claim “necessarily raise[s]” a question of patent law.
Gunn, 133 S. Ct. at 1065; see, e.g., Deats, 619 F. Supp. at 981-82 (“Since the unjust enrichment
question would have to be answered in the context of a federal patent law claim . . . this claim
must be viewed as arising under federal law.”); cf. Briarpatch, 373 F.3d at 306 (“Under
plaintiffs’ theory of the case, the act that allegedly satisfies the second and third elements of
unjust enrichment is the act of turning Jones’ novel and Malick’s screenplay into a motion
picture. This act would, in and of itself, infringe the adaptation rights protected by [federal
copyright law] (assuming these rights belong to plaintiffs).”). In addition, the question appears
to be “actually disputed,” as TAIS denies that it has manufactured and sold products (that is,
infringed patents) within the scope of the ATSC Contract, (compare Compl. ¶¶ 31, 42-43, with
Def.’s Ans. Compl. Affirmative Defenses (Docket No. 21) (“Ans.”) ¶¶ 31, 42-43), and
“substantial,” as it is the gravamen of MPEG’s unjust enrichment claim. Gunn, 133 S. Ct. at
1065. Finally, there is no reason to believe that resolution of the unjust enrichment claim would
disturb the congressionally approved balance between federal and state courts. In fact, ensuring
that patent claims masquerading as unjust enrichment claims are litigated in federal court would
be consistent with, rather than undermine, Congress’s jurisdictional design. See 28 U.S.C.
§ 1338. And it would be the rare bona fide unjust enrichment claim that would, like MPEG’s
claim here, turn on a determination of infringement, as the plaintiff would have to be able to
show its standing to sue independent of patent ownership. See Grable, 545 U.S. at 315.
On the subject of standing, and despite MPEG’s argument to the contrary (see Pl.’s Mem.
1, 9), the fact that it would not have standing to bring a pure patent infringement claim as a
purportedly non-exclusive licensee, see Propat Int’l Corp. v. Rpost, Inc., 473 F.3d 1187, 1193
(Fed. Cir. 2007); Princeton Dig. Image Corp. v. Hewlett-Packard, No 12-CV-6973 (RJS), 2013
WL 1454945, at *5 (S.D.N.Y. Mar. 21, 2013), does not call for a different result. To be sure,
MPEG’s standing (which is undisputed) derives not from the Patent Act directly, but from its
administration of the patent pool — a service that provides value to patent holders and
manufacturers alike by reducing the transaction costs associated with the use of multiple patents
and for which the administrator deserves to be compensated. Cf. Minden Pictures, Inc. v. John
Wiley & Sons, Inc., 795 F.3d 997 (9th Cir. 2015) (holding that an exclusive licensing agent for
distribution of copyrighted material — a position much like a patent pool administrator — had
standing to bring claims of direct infringement under the Copyright Act). But the mere fact that
MPEG’s standing is derived from something other than the Patent Act does not mean that it
could prove its unjust enrichment claim without “necessarily” proving patent infringement.
One wrinkle remains: whether the owners of the underlying patents are necessary parties
under the terms of Rule 19 of the Federal Rules of Civil Procedure. 2 As a general rule, where an
exclusive licensee brings suit to enforce a patent right, the patent holder must generally be joined
in the suit as a necessary party (unless the party bringing the suit is vested with “all substantial
rights,” including the right to sue for infringement). See IpVenture, Inc. v. Prostar Computer,
Inc., 503 F.3d 1324, 1325 (Fed Cir. 2007); Intellectual Prop. Dev., Inc. v. TCI Cablevision of
Cal., Inc., 248 F.3d 1333, 1347 (Fed. Cir. 2001); Vaupel Textilmaschinen KG v. Meccanica Euro
Italia S.P.A., 944 F.2d 870, 876 (Fed. Cir. 1991); Tele-Guia Talking Yellow Pages,Inc. v.
Cablevision Sys. Corp., No. 07-CV-3948 (DLC), 2007 WL 3224573, at *3 (S.D.N.Y. Oct. 31,
2007). Here, of course, MPEG alleges that it is merely a “non-exclusive licensee” and it sues for
unjust enrichment, not patent infringement. (Pl.’s Mem. 9, 11 (emphasis added)). Nevertheless,
the patent holders presumably share an interest in seeing their patents adjudicated (as
determining the unjust enrichment claim would necessarily require), and TAIS ought to be
spared the prospect of “multiple suits and duplicate liability.” IpVenture, 503 F.3d at 1325.
Accordingly, MPEG is directed to show cause in writing, in a memorandum of law to be filed
within three weeks of this Opinion and Order and not to exceed twenty pages, why its unjust
enrichment claim should not be dismissed, pursuant to Rule 19, for failure to join a necessary
party. (Further, with its memorandum of law, MPEG shall submit the original licensing
The Minden Court did not address the issue of joinder, perhaps because, under the terms
of the relevant contracts, the licensing agent had been granted authority to pursue litigation
against unauthorized use of the copyrighted material. See 795 F.3d at 1000.
agreement or agreements between or among itself and the patent owners in the patent pool.) 3
Should MPEG file such a memorandum, TAIS may respond, in a memorandum of law not to
exceed twenty pages, within two weeks; any reply, not to exceed eight pages, shall be filed
within one week.
THE MOTION TO DISMISS MPEG’S CLAIMS AGAINST TACP
The Court turns, then, to TAIS’s motion, pursuant to Rules 12(b)(2) and 12(b)(6) of the
Federal Rules of Civil Procedure, to dismiss all claims against TACP on the ground that it no
longer exists and lacks the capacity to be sued. Pursuant to Rule 17(b)(3), a limited liability
company’s capacity to sue or to be sued is governed by the law of the forum state — here, New
York. There is some question as to whether Rule 17(b) incorporates choice of law rules, see
Museum Boutique Intercontinental, Ltd. v. Picasso, 886 F. Supp. 1155, 1161 (S.D.N.Y. 1995)
(citing cases), in which case the law of New Jersey, where TACP was organized and based
(Compl. ¶ 4), might apply. But the Court need not decide that question, as the law of New York
and New Jersey with respect to the effects of a merger on a limited liability company are
identical. Compare N.Y. Ltd. Liab. Co. Law § 1004(a), with N.J. Stat. Ann. § 42:2B-20(g). 4 In
each case, in the event of a merger, all rights and property are vested in the surviving entity, and
“all debts, liabilities and duties of each of those domestic limited liability companies and other
Alternatively, by the same date, MPEG may amend the Complaint to include the relevant
patent holders as Plaintiffs.
N.J. Stat. Ann. § 42:2B-20, the statute that governed mergers at the time TACP merged
into TAIS, has since been repealed and replaced by Section 42:2C-77. (See Pl.’s Reply 12-13).
The later statute explicitly states that, upon merger, “each constituent organization that merges
into the surviving organization ceases to exist as a separate entity.” N.J. Stat. Ann. § 42:2C77(a)(2). To the extent relevant here, the amendment does not appear to have substantively
changed the statute. See generally N.J. Assem., 215th Leg., Reg. Oversight & Gaming Comm.
Statement, A.B. 1543 (Jan. 30, 2012).
business entities that have merged or consolidated shall attach to the surviving or resulting
domestic limited liability company or other business entity, and may be enforced against it to the
same extent as if the debts, liabilities and duties had been incurred or contracted by it.” Id. It
follows, as courts have consistently held (many under analogous Delaware law, see Del. Code
Ann. tit. 6, § 18-209(g)), that a limited liability company that merges into another one ceases to
exist and that claims brought against that company should be dismissed. See, e.g., Integrated
Voting Sols., Inc. v. Election Sys. & Software, LLC, No. 14-CV-35 (GSA), 2014 WL 3563363, at
*1-2 (E.D. Cal. July 17, 2014) (acknowledging that “under Delaware law, when LLCs merge, the
disappearing company . . . ceases to exist and the surviving company . . . succeeds to the
disappearing company’s rights and liabilities”); Parker v. Dean Transp. Inc., No. 13-CV-2621
(BRO) (VBKX), 2013 WL 7083269, at *12 (C.D. Cal. Oct. 15, 2013) (noting that “[a]ccording
to governing Delaware law,” a merged entity “lacks the capacity to be sued”); Damon Alarm
Corp. v. Am. Dist. Tel. Co., 304 F. Supp. 83, 84 (S.D.N.Y. 1969) (“The Delaware law provides
that when a merger becomes effective the separate existence of all corporations except the
survivor shall cease to exist. Consequently, the moving defendant no longer exists and the action
cannot be maintained against it.” (citations omitted)); State ex rel. Richman v. Nat’l Power &
Light Co., 16 N.J. 486, 490-91 (1954) (“[T]here is no necessity for the continuance of the
existence of the merged corporation for purposes of suit.”); see also Frontiers Unlimited, LLC v.
Greenstein, 977 N.Y.S.2d 666, 2013 WL 4822898, at *2 (Sup. Ct. Sept. 9, 2013) (noting that
while a merged entity may not have had standing to sue, the surviving entity acquired the
capacity to sue to enforce a contract under New York law); accord Brach v. Levine, 957
N.Y.S.2d 263, 2012 WL 2899021, at *3 (Sup. Ct. July 16, 2012). 5
Here, there can be no dispute that TACP merged into TAIS on or about February 14,
2011, and thus ceased to exist as an entity that could sue or be sued. Indeed, the Complaint itself
alleges that TACP “was a limited liability company” until that date, when it “merged with and
into TAIS with TAIS as the surviving entity.” (Compl. ¶ 4 (emphasis added); see also id. ¶¶ 2325; Ans. ¶ 4). Inexplicably, MPEG all but denies those allegations in its memoranda of law.
(See, e.g., Pl.’s Reply 12-13 (arguing that TAIS presented no proof of the merger or the terms,
conditions, and effects of the merger and that “nowhere” does the Complaint “allege that TACP
ceased to exist”)). A plaintiff, however, may not amend its complaint “by asserting new facts or
theories for the first time in opposition to Defendants’ motion to dismiss.” See, e.g., K.D. ex rel.
Duncan v. White Plains Sch. Dist., 921 F. Supp. 2d 197, 209 n. 8 (S.D.N.Y. 2013). Moreover,
and in any event, TAIS has provided printouts from the public records of both New Jersey and
New York — of which this Court may take judicial notice — indicating that TACP is a merged,
defunct company. See, e.g., Vasquez v. City of N.Y., No. 99-CV-4606 (DC), 2000 WL 869492,
at *1 n. 1 (S.D.N.Y. June 29, 2000) (stating that, in deciding a motion to dismiss, courts may
take judicial notice of matters of public record); see also, e.g., Williams v. City of N.Y., No. 07–
CV-3764 (RJS), 2008 WL 3247813, at *2 n. 3 (S.D.N.Y. Aug.7, 2008) (taking judicial notice of
Dep’t of Envtl. Prot. v. Ventron Corp., 468 A.2d 150 (N.J. 1983), the only case upon
which MPEG relies that actually involved a merger (as opposed to dissolution of a limited
liability company) does not suggest, let alone hold, otherwise. (See Pl.’s Reply 13). In that case,
the lower courts had “found that the [surviving corporation] assumed all of [the merged
corporation’s] liabilities in their merger,” and no party appears to have challenged the merged
corporation’s status as a named defendant. Ventron Corp., 468 A.2d at 156. Moreover, on
appeal, the New Jersey Supreme Court observed that “[o]nly Ventron” and another entity
“remain[ed] in existence” and therefore “affirm[ed] that portion of the . . . judgment that holds
them . . . liable.” Id. at 166 (emphasis added).
the plaintiff’s incarceration based on the inmate lookup website of the New York State
Department of Corrections and Community Supervision). Accordingly, MPEG’s claims against
TACP must be and are dismissed on the ground that TACP is not an entity that can be sued.
The Court has considered MPEG’s remaining arguments, both in favor of remand and in
opposition to dismissal of its claims against TACP, and finds them to be without merit.
Accordingly, and for the reasons stated above, MPEG’s motion to remand is DENIED, and
TAIS’s motion to dismiss all claims against TACP is GRANTED. Further, in accordance with
the directions set forth above, MPEG is ordered to show cause why its complaint should not be
dismissed for failure to join a necessary party or parties — namely, the underlying patent owner
The Clerk of Court is directed to terminate TACP as a party and to terminate Docket Nos.
11 and 24.
Date: October 29, 2015
New York, New York
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