Affirmative Defenses and Counterclaim, Moushegian accuses Sim Kar and specifically its counsel, Jeffrey A. Schwab and Michael Aschen of the law firm of Ableman, Frayne & Schwab, of harassment, misrepresentation, deception, suborning perjury and other wrongdoings in connection with their dealings with Moushegian to attempt to have him accept Sim Kar's contention regarding Trowbridge's inventorship. See Para. 113-116.
Moushegian has recently filed an Amended Answer, Affirmative Defenses and Counterclaim. Specifically, Moushegian seeks: 1) a declaratory judgment that he is the sole or a co-inventor and the sole or a co-owner of the '132 patent; 2) to judicially estop Sim Kar and its counsel from denying that Moushegian is an inventor of the '132 patent; 3) to recover damages for Sim Kar's unjust enrichment from exploiting the '132 patent invented and owned by Moushegian; 4) to recover damages for wrongful termination of his employment; 5) to recover damages against Sim Kar, Schwab, Aschen and the Schwab firm for conspiring to terminate his employment wrongfully; and 6) to recover damages for Sim Kar's wrongful termination effectuated through its officers, employees or agents.
Sim Kar now moves to have Moushegian's counterclaim dismissed.
Also, Genlyte seeks to have Ableman, Frayne & Schwab dismissed as counsel for Sim Kar, on the grounds that 1) Moushegian's Counterclaims allege wrongdoing on the part of Ableman, Frayne & Schwab thereby necessarily involving them in the action as witnesses, or 2) even if Moushegian's Counterclaims are dismissed, the conduct of Ableman, Frayne & Schwab with respect to Moushegian goes directly to the issue of who the actual inventor of the patent at issue is, which would also require members of the firm to testify at trial.
I. SIM KAR'S MOTION TO DISMISS MOUSHEGIAN'S COUNTERCLAIM STANDARDS
Under 12(b)(6) a plaintiff's complaint must be dismissed for failure to state a claim if a defendant demonstrates "beyond a doubt that plaintiff can prove no set of facts in support of his claim which would entitle him to relief." Conley v. Gibson, 355 U.S. 41, 45-46, 2 L. Ed. 2d 80, 78 S. Ct. 99 (1957). All allegations set forth in the complaint must be accepted as true, see Cruz v. Beto, 405 U.S. 319, 322, 31 L. Ed. 2d 263, 92 S. Ct. 1079 (1972), and all reasonable inferences must be drawn in the plaintiff's favor. Schrob v. Catterson, 948 F.2d 1402, 1405 (3d Cir. 1991. "Courts must be cautious in assessing motions to dismiss, particularly where granting such a motion would terminate the litigation before the parties have had their day in court." Kiser v. General Electric Corp., 831 F.2d 423, 427 (3d Cir. 1987).
B. Summary Judgment
Summary judgment may be granted only when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56; Celotex Corporation v. Catrett, 477 U.S. 317, 322, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986). An issue of material fact is 'genuine' "if the evidence is such that a reasonable jury could return a verdict for the non-moving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986).
A. Claim for Declaration of Inventorship
Sim Kar moves for summary judgment on Moushegian's claim for a declaration, pursuant to 35 U.S.C. § 256, that he was the sole or at least the co-inventor of the '132 patent.
25 U.S.C. § 256 provides:
Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Commissioner may, on application of the parties and assignees, with proof of the facts and such other requirements may be imposed, issue a certificate correcting such error.