Kenall Mfg. Co. v. Cooper Lighting, LLC

Opinion

REDACTED Memorandum Opinion and Order

Kenall Manufacturing Company brought this suit against Cooper Lighting, LLC and Eaton Corporation (together, "Cooper"), alleging patent infringement and breach of contract in connection with certain of Cooper's lighting products. Doc. 1. The background of this suit is set forth in the court's prior opinions, familiarity with which is assumed. Doc. 87 (reported at 338 F. Supp. 3d 841 (N.D. Ill. 2018)); Doc. 124 (reported at 354 F. Supp. 3d 877 (N.D. Ill. 2018)); Doc. 189 (reported at 2019 U.S. Dist. LEXIS 64731, 2019 WL 1620019 (N.D. Ill. Apr. 16, 2019)).

Based on Kenall's Stock Purchase Agreement with Legrand Holding, Inc. (the "Legrand Agreement"), which Kenall recently produced in discovery, Cooper moves to dismiss the suit under [*2]  Civil Rule 12(b)(1) on the ground that Kenall lacks standing and, alternatively, under Civil Rule 12(b)(6) on the ground that it is not a real party in interest under Rule 17(a) and, as to its patent infringement claim, that Kenall is not a proper plaintiff under 35 U.S.C. § 281. Doc. 305. Cooper's motion is denied.

Background

In resolving a Rule 12(b)(6) motion, the court assumes the truth of the operative complaint's well-pleaded factual allegations, though not its legal conclusions. See Zahn v. N. Am. Power & Gas, LLC, 815 F.3d 1082, 1087 (7th Cir. 2016). The court must also consider "documents attached to the complaint, documents that are critical to the complaint and referred to in it, and information that is subject to proper judicial notice," along with additional facts set forth in Kenall's brief opposing dismissal, so long as those additional facts "are consistent with the pleadings." Phillips v. Prudential Ins. Co. of Am., 714 F.3d 1017, 1020 (7th Cir. 2013) (internal quotation marks omitted). The facts are set forth as favorably to Kenall as those materials allow. See Pierce v. Zoetis, Inc., 818 F.3d 274, 277 (7th Cir. 2016). In considering a factual challenge to subject matter jurisdiction under Rule 12(b)(1), the court "may properly look beyond the jurisdictional allegations of the complaint and view whatever evidence has been submitted on the issue to determine whether in fact subject matter jurisdiction exists." Apex Digital, Inc. v. Sears, Roebuck & Co., 572 F.3d 440, 444 (7th Cir. 2009) (internal quotation marks omitted). [*3] 

The Legrand Agreement was executed in 2018. Doc. 307-2. After conducting an in camera review, the court ordered Kenall to disclose to Cooper the portions of the Agreement pertinent to Kenall's continued right to pursue this suit, including provisions addressing ownership of the patents-in-suit and control over the suit. Docs. 236, 250, 299. Kenall does not object to the court's consideration of the Agreement in resolving all aspects of Cooper's motion.

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