1

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF OHIO

WESTERN DIVISION

COPPERHEAD INDUSTRIAL Case No. 1:17-cv-609

INC. and JEC DISTRIBUTORS

INC.,

Plaintiffs, Dlott, J.

Bowman, M.J

v.

G.E. SCHMIDT, INC. and

KYOKUTOK CO., LTD.,

Defendants.

REPORT AND RECOMMENDATIONS

This civil action is before the Court on the Motions to Dismiss for Lack of SubjectMatter Jurisdiction filed by Defendant G.E. Schmidt, Inc. (Doc. 7) and Defendant 

Kyokutoh Co., Ltd. (Doc. 15) and the parties’ responsive memoranda (Docs. 14, 21, 22), 

including Plaintiffs’ Notice of Supplemental Authority (Doc. 25) and the briefs that 

followed (Docs. 28, 29). Upon careful review, the undersigned finds that Defendants’

Motions1 are not well-taken.

I. OVERVIEW

Plaintiff Copperhead Industrial Inc. (“Copperhead”) is a Canadian corporation 

with its principal place of business at 1416 Rebecca Street, Oakville, Ontario, Canada. 

(Doc. 1 at PageID 1 (¶ 1).) Copperhead alleges that it owns U.S. Patent Numbers

8,742,281; 9,168,609; 9,393,639; and 9,757,814 (collectively, the “patents-in-suit”). (Id.

at PageID 4 (¶¶ 14–18).) Specifically, Copperhead alleges that it is the “owner of the 

 1 The Motions filed by Defendants are substantively identical and will be discussed as one.
2

entire right, title, and interest in and to each of the patents-in-suit with the right to sue for 

past, present, and future infringement.” (Id. (¶ 18).) Plaintiff JEC Distributors Inc. 

(“JEC”) also is a Canadian corporation with its principal place of business at the same 

address. (Id. at PageID 1 (¶ 2).) JEC claims to be a nonexclusive licensee of each of 

the patents-in-suit. (Id. at PageID 4 (¶ 19).) Plaintiffs accuse Defendants G.E. Schmidt, 

Inc. and Kyokutoh Co., Ltd. of patent infringement in violation of 35 U.S.C. § 271. (Id. at 

PageID 4–14 (¶¶ 20–74).)

Defendants move to dismiss the Complaint for lack of subject matter jurisdiction 

pursuant to Rule 12(b)(1). They assert that Plaintiffs lack Article III standing because 

they do not have any rights or interests in the patents-in-suit and therefore cannot suffer 

the requisite injury. See Lujan v. Defenders of Wildlife, 504 U.S. 555 (1992). Moreover, 

because neither Plaintiff is the inventor, the successor-in-interest to the inventor, or an 

exclusive licensee with all substantial rights in the patents-in-suit, they are not patentees 

with standing to sue under 35 U.S.C. § 281. Plaintiffs respond that Copperhead does

have standing, and submit the Declaration of Giuseppe (Joseph) Ruggiero—and its 

attached exhibits—in support. Plaintiffs also submit as supplemental authority a

favorable judgment recently issued by a Canadian federal court relating to ownership of 

Canadian patents that are counterparts to the patents-in-suit.

II. STANDARD OF LAW

Federal Rule of Civil Procedure 12(b)(1) provides for the dismissal of an action 

for lack of subject matter jurisdiction. There are two types of challenges pursuant to 

Rule 12(b)(1), facial and factual. A facial attack “goes to the question of whether the 

plaintiff has alleged a basis for subject matter jurisdiction,” and in this instance, the court 
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“takes the allegations of the complaint as true for purposes of [its] analysis.” Cartwright

v. Garner, 751 F.3d 752, 759 (6th Cir. 2014). A factual attack, on the other hand, 

“challenges the factual existence of subject matter jurisdiction.” Id. Here, “a court has 

broad discretion with respect to what evidence to consider in deciding whether subject 

matter jurisdiction exists, including evidence outside of the pleadings, and has the 

power to weigh the evidence and determine the effect of that evidence on the court’s 

authority to hear the case. Id. at 759–60. In the pending Motions, Defendants 

challenge the factual existence of this Court’s subject matter jurisdiction over Plaintiffs’ 

claims. Thus, the undersigned properly may consider evidence outside the pleadings, 

mindful that Plaintiffs bear the burden of proving that subject matter jurisdiction exists. 

Id. at 760 (citing DLX, Inc. v. Commonwealth of Ky., 381 F.3d 511, 516 (6th Cir. 2004).)

III. BACKGROUND

A. The Patent Purchase Agreement, and the Original and Corrective 

Assignments

 

Copperhead is a corporation provincially incorporated under the laws of Ontario, 

Canada, and is in the business of distributing automotive manufacturing industry 

products, including spot welding cap changers that are the subject of the patents-in-suit. 

(Ruggiero Decl., Doc. 14-1 at PageID 309 (¶¶ 2, 3).) According to Plaintiffs, all Ontario 

provincial corporations are assigned a corporation number that is unique to that 

corporation, cannot be transferred to another corporation, and cannot be changed.2 

Copperhead’s Ontario corporation number is “2152706.” (Id. at PageID 311 (¶ 12(b)); 

 2 See Ontario.ca (official website of the Ontario Government) at 

https://www.ontario.ca/page/incorporating-business-corporation Ontario corporation number (OCN): 

“Upon incorporation, the [Central Production and Verification Services] Branch assigns every corporation 

a number, which is unique to that corporation (last visited May 25, 2018). It cannot be transferred to 

another corporation, nor can a corporation ever change its corporation number. When corporations 

amalgamate, the amalgamated corporation is assigned a new number.”
4

Corporation Profile Report, Province of Ontario Ministry of Government Services, Doc. 

14-4 at PageID 322–29.) 

Giuseppe (Joseph) Ruggiero is the sole owner, sole director, and president of 

Copperhead. (Doc. 14-1 at PageID 308 (¶ 1).) Between November 2012 and February 

2013, Ruggiero engaged in discussions with Werner Kaeseler, the inventor named in 

the patents-in-suit, regarding Copperhead’s purchase of Kaeseler’s intellectual property 

rights. (Id. at PageID 309 (¶ 4).) These negotiations concluded when Ruggiero and 

Kaeseler finalized the terms for purchase of Kaeseler’s issued patent in the United 

States relating to spot welding cap changers, as well as pending patent applications in 

the United States and Canada (collectively, the “Patent and Patent Applications”). (Id.

at PageID 309–10 (¶¶ 5, 6).) The terms were reduced to writing in the “Patent 

Purchase Agreement” signed by both Kaeseler and Ruggiero on February 16, 2013. 

(Id. at PageID 310 (¶¶ 7, 8).) Kaeseler was listed as “Vendor” and “002152706 Ontario 

Ltd.”—with an address of “1416 Rebecca Street, Oakville, Ontario, Canada”—was listed 

as “Purchaser.” (Doc. 14-2 at PageID 315.) On the same date and in connection with 

the Patent Purchase Agreement, Kaeseler assigned his rights as “inventor and sole 

owner of the patent and patent applications” to “002152706 Ontario Ltd.” (Id. at PageID 

310 (¶ 8); Doc. 14-3.) As with the Patent Purchase Agreement, the address listed for 

002152706 Ontario Ltd. is “1416 Rebecca Street, Oakville, Ontario, Canada.” (Doc. 14-

3 at PageID 319.) Both Kaeseler and Ruggiero signed this document also. (Doc. 14-1 

at PageID 310 (¶ 8); Doc. 14-3 at PageID 320.) These assignments were later filed with 

the United States Patent and Trademark Office (“USPTO”). (Dolive Decl., Doc. 7-1 at 
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PageID 172–73 (¶¶ 3–7); Docs. 7-2, 7-3, 7-4, 7-5 (collectively, the “original” 

assignment).)

On December 14, 2016, Copperhead filed four “corrective” assignments with the 

USPTO, which were identical to the original assignments except that the name 

“002152706 Ontario Ltd.” was crossed out by hand and replaced with “Copperhead 

Industrial Inc.” (Dolive Decl., Doc. 7-1 at PageID 172–74 (¶¶ 3, 8–11); Doc. 7-6 at 

PageID 202–03, Doc. 7-7 at PageID 225–26, Doc. 7-8 at PageID 245–46, Doc. 7-9 at 

PageID 267–68) (collectively, the “corrective” assignment).) Ruggiero initialed and 

dated each change on behalf of Copperhead. Ruggiero included a declaration in 

support of each corrective assignment. (Doc. 7-6 at PageID 205–06, Doc. 7-7 at 

PageID 228–29, Doc. 7-8 at PageID 248–49, Doc. 7-9 at PageID 270–71.) In it, he 

asserted that he is Copperhead’s sole owner and sole director, as well as its president. 

(See, e.g., Doc. 7-6 at PageID 205 (¶ 1).) He further asserted that it was an 

“inadvertent mistake” to identify Copperhead by its “Ontario corporation number 

(2152706)” rather than by its corporate name, Copperhead Industrial Inc., in the original 

assignment. (Id. (¶ 2).) Ruggiero explained that, when he executed the original 

assignment, he “mistakenly believed that 002152706 Ontario Ltd. was the legal 

corporate name for Copperhead, and that Copperhead was ‘doing business as’ 

Copperhead. I now know and understand that 2152706 is, in fact, merely Copperhead’s 

Ontario corporation number, rather than its legal corporate name, ‘Copperhead 

Industrial Inc.’” (Id. (¶ 3).) Ruggiero stated that “inclusion of ‘002152706 Ontario Ltd.’ 

as a party to the [original a]ssignment was due to an error that did not accurately reflect

my, Copperhead’s, or Mr. Kaeseler’s intentions. The [original a]ssignment was always 
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intended to be between Mr. Kaeseler and Copperhead.” (Id. at PageID 206 (¶ 4).) 

Regarding Kaeseler, Ruggiero understood him to be “suffering from a chronic illness in 

Germany and may not be available to correct the [original a]ssignment or execute a new 

assignment.” (Id. (¶ 5).)

B. Ruggiero Declaration Filed in this Civil Action

Ruggiero’s declaration filed in support of Copperhead’s memorandum in 

opposition in this civil action largely reprises his declaration included in support of the 

corrective assignment filed with the USPTO. He states again that it was an “inadvertent 

mistake” to identify Copperhead by its “Ontario corporation number (2152706)” rather 

than by its corporate name—Copperhead Industrial Inc.—in the original assignment. 

(Doc. 14-1 at PageID 310 (¶ 9).) He also reiterates his “mistaken belief” that 

“002152706 Ontario Ltd.” was the “legal corporate name” for Copperhead, and his now 

corrected understanding “that 2152706 is, in fact, merely Copperhead’s Ontario 

corporation number, rather than its legal corporate name, “‘Copperhead Industrial Inc.’” 

(Id. at PageID 311 (¶¶ 10, 11, 12).) To further corroborate his “mistaken belief” that 

“002152706 Ontario Ltd.” was the “legal corporate name” for Copperhead, Ruggiero 

attaches a “Sales Agreement” on Copperhead stationery dated April 30, 2011. (Doc. 

14-5.) That agreement reads as follows:

Glen Keleher agrees to transfer ownership of his 50% share of 

002152706 Ontario Limited, operating as Copperhead Industrial 

Inc., to Joseph Ruggiero for the amount of (REDACTED)[.]

The funds will be paid out of the Canadian bank account of 

Copperhead Industrial Inc. to Glen Keleher by either certified 

cheque or money order.
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Once funds have been received by Glen Keleher, he withdraws all 

legal rights and holds no responsibilities to Copperhead Industrial 

Inc.

(Id.)

Ruggiero devotes several paragraphs in his declaration to what he describes as 

the “common intention” of the parties to the Patent Purchase Agreement. (Id. at PageID 

312–13 (¶¶ 14–19).) He states that he intended “for Copperhead to be a party to the 

Patent Purchase Agreement and for Copperhead to be the assignee in respect of the 

Patent and Patent Applications that were assigned under the agreement[,]” and, based 

on his discussions with Kaeseler “at the time we entered into the Patent Purchase 

Agreement,” he believes Kaeseler “intended to contract with, and transfer the Patent 

and Patent Applications to, Copperhead.” (Id. at PageID 312 (¶¶ 14, 15).) To this end, 

Ruggiero notes that Copperhead “made all required payments to Mr. Kaeseler due 

under the Patent Purchase Agreement, including the first payment made on February 

20, 2013 and the second, final payment made on or around May 23, 2013.” (Id. (¶ 16).) 

As proof he attaches a receipt dated February 20, 2013 confirming a $15,000.00 

transfer from the Royal Bank of Canada—ordering customer Copperhead Industrial 

Inc.—to REU Schweibtechnik GmbH, which Ruggiero identifies as “Mr. Kaeseler’s 

company.” (Id. (¶ 17) & Doc. 14-6.) He also attaches Copperhead’s Royal Bank of 

Canada monthly statement for the period May 6, 2013 to June 6, 2013 that lists a 

$10,578.00 transfer to “REU Schweibtech” on “23 May.” (Doc. 14-1 at PageID 312–13 

(¶ 18) & Doc. 14-7.) These amounts and payment dates correspond to the payment 

terms set forth in the Patent Purchase Agreement. (Doc. 14-2 at PageID 316.)
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Regarding the corrective assignment, Ruggiero explains that he “was unable to 

communicate with or secure a declaration from Mr. Kaeseler” because Kaeseler was 

“gravely ill between at least December 2016 and the date of his death,” which was 

September 15, 2017. (Doc. 14-1 at PageID 313 (¶ 20).)

C. Canadian Federal Court Judgment Issued March 19, 2018

On March 19, 2018, a Canadian federal court issued a judgment granting 

Copperhead’s application to list “Copperhead Industrial Inc.”—instead of “002152706 

Ontario Ltd.” or “002152706 Ontario Limited”—as owner of two Canadian patents (533 

patent and 266 patent) that are counterparts of the patents-in-suit. (See Doc. 25-1.) 

The application arose within the context of separate actions filed in the Canadian 

federal court alleging that the intervener in the application, Changer & Dresser Inc.,

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had infringed both patents. (Id. at PageID 474 (¶ 11).) The Canadian Patents 

Database originally reflected “002152706 Ontario Ltd.” as owner of the 533 patent, 

which was expressly assigned to it by inventor Werner Kaeseler under a February 16, 

2013 Patent Purchase Agreement, the very same Agreement at issue here in the 

Southern District of Ohio. (See id. (¶ 9).) Patent 266 is a divisional of patent 533, and 

the Canadian Patents Database likewise reflected “002152706 Ontario Limited” as 

owner of the 266 patent. (Id. (¶ 10).) The intervenor and accused patent infringer 

asserted that “002152706 Ontario Ltd.” was not a legal corporate entity, and “thus all 

intellectual property rights in the patents remain[ed] with Mr. Kaeseler.” (Id. (¶ 11).)

 3 Changer & Dresser, Inc.—an Alabama corporation that is a partially-owned subsidiary of co-Defendant 

Kyukotoh Co., Ltd.—is a party to litigation regarding the patents-in-suit in the Western District of New 

York (002152706 Ontario Limited, et al. v. Changer & Dresser, Inc., Case No. 1:15-cv-00020-WMS-LGF)

(“the New York litigation”) and in the Northern District of Alabama (Changer & Dresser, Inc. v. Joe 

Ruggiero, et al., Case No. 1:16-cv-01924-VEH). (Doc. 7 at PageID 163 n.5; Doc. 15 at PageID 415 n.5.)
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As explained by the presiding Canadian judge, once a patent is issued in 

Canada, the Commissioner of Patents “has no discretion to amend or address their 

errors.” (Id. ¶ 16).) Rather, by statute, jurisdiction to vary or expunge the title to a 

patent lies with the federal court. (Id.) The Canadian federal court noted it would be 

“without jurisdiction” under the statute if the proceedings were to require it “to determine 

proper ownership of a patent through the application and interpretation of contract law 

principles.” (Id. at PageID 477 (¶ 19).) But the existence of a related dispute or 

contested application does not undermine jurisdiction so long as the court “is satisfied 

the issues relate primarily to patent law and parties having a potential interest have had 

notice.” (Id.) Satisfied that there was “no question of contested ownership” or that the 

questions presented did not “involve an interpretation of the assignment agreement,” 

the court determined it had jurisdiction and characterized the issue to be whether there 

was “sufficient evidence to conclude that as the result of mistake or inadvertence the 

owner of the 533 and 266 patents has not been correctly identified in the Patent Office 

records.” (Id. at PageID 478 (¶ 21).) 

The intervenor and accused patent infringer submitted that “non-hearsay 

evidence from relevant inventors and assignors” was required, and noted that the only 

evidence in favor of the application was from Ruggiero, Copperhead’s sole director. (Id.

(¶ 22).) Kaeseler, the inventor and assignor of the patent, did not provide evidence

with respect to the application, although his affidavit was requested. (Id. at PageID 475 

(¶ 12).) Ruggiero reported initially that Kaeseler was unable to swear an affidavit 

because he was “quite ill.” (Id.) Then, to a second affidavit Ruggiero attached 

correspondence from Kaeseler’s legal counsel who advised that Kaeseler was 
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“seriously ill and on a ventilator.” (Id.) Finally, before judgment was rendered, 

Kaeseler’s death certificate was filed with the Canadian federal court, confirming that he 

died on September 15, 2017. (Id.) Although acknowledging that “affidavit evidence 

from all interested parties is commonly provided,” the court refused to set this absolute 

as an evidentiary standard and concluded that affidavit evidence would not be required

from all inventors and assignors in the proceeding at bar. (Id. at PageID 479 (¶¶ 23–

26).) 

Regarding Ruggiero’s evidence, the court observed that the applicant’s 

“Corporation Profile Report produced by Ontario’s Ministry of Government Services 

clearly establishes the link between the corporate number and Copperhead.” (Id. at 

PageID 480 (¶ 28).) The court acknowledged evidence of other contractual 

documentation provided by Ruggiero “where Copperhead has been described by its 

corporation number and not its legal name due to his misunderstanding.” (Id.) His 

misunderstanding is identical to the one alleged now in the Southern District of Ohio, 

namely “that until December 2016 [Ruggiero] mistakenly believed that the applicant’s 

legal corporate name was 002152706 Ontario Ltd., and that Copperhead was the 

applicant’s trade name.” (Id. at PageID 474 (¶ 8).) Evidence of payment from 

Copperhead to REU Schweibtechnik GmbH “in amounts that accord with the terms of

the purchase agreement” corroborates Ruggiero’s evidence “in respect of his 

misunderstanding and that the patents in issue were assigned to Copperhead.” (Id. at 

PageID 480 (¶ 29).) Given all this evidence, evidence of intent, “such as that provided 

by Mr. Ruggiero or sought from Mr. Kaeselar,” was not required. (Id. at PageID 481 (¶ 

31).) The court then rendered its judgment that the “mistaken” entry in the records of 
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the Canadian Patent Office regarding the 533 patent and the 266 patent be varied to 

show Copperhead as owner. (Id. (¶ 33); see id. at PageID 484.)

IV. ANALYSIS

A. Synopsis of the Parties’ Arguments

“The irreducible constitutional minimum of standing” consists of three elements: 

an “injury in fact,” a “causal connection” between the injury and the conduct complained 

of, and a likelihood that the injury will be “redressed by a favorable decision.” Lujan, 

supra, 504 U.S. at 560–61. Defendants maintain that Copperhead and JEC cannot 

establish the first Lujan element, an “injury in fact.” (Doc. 7 at PageID 164–66.) The 

original assignment of the patents-in-suit was from the inventor, Werner Kaeseler, to 

“002152706 Ontario Ltd.,” and not to Copperhead Industrial Inc. (See id. at PageID 

161–62.) “002152706” is the Ontario corporation number (“OCN”) assigned to 

Copperhead, but “002152706 Ontario Ltd.” is not otherwise “a legally-existing entity.” 

(Id. at PageID 162, 165.) Thus, according to Defendants, Kaeseler’s original 

assignment to 002152706 Ontario Ltd. was then, and remains, a legal nullity. (Id. at 

PageID 165 (citing In re Devore, No. 09-3372, 2011 WL 2580117, at *3 (Bankr. N.D. 

Ohio June 27, 2011) (“The transfer of property to a non-existent grantee ‘is a mere 

nullity.’”).) The corrective assignment—in which the name “002152706 Ontario Ltd.” is

crossed out by hand and replaced with “Copperhead Industrial Inc.”—also is a legal 

nullity, because only the representative of Copperhead initialed and dated the changes.

(Id. at PageID 162–63, 166–67.) The other party to the original assignment, Kaeseler, 

did not. (Id. at PageID 162, 166.) Without evidence of mutual assent for the 

modification, it is unenforceable. See Expeditors Int’l of Wash., Inc. v. Crowley Amer. 
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Transp., Inc., 117 F. Supp. 2d 663, 668 (S.D. Ohio 2000) (“The general rule is that a 

modification of a contract requires the same elements of mutual assent and 

consideration that are necessary for the formation of contracts.”) (quotation and citation 

omitted). And the mere formality of filing the corrective assignment with the USPTO 

does not render it legally effective. See 37 C.F.R. § 3.54 (“The recording of a document 

pursuant to § 3.11 is not a determination by the Office of the validity of the document or 

the effect that document has on the title to an application, a patent, or a registration.”); 

see generally In re CTP Innovations, LLC, MDL No. 14-MD-2581, 2016 WL 6996738, at 

*3–5 (D. Md. Nov. 30, 2016) (finding assignments recorded at the USPTO 

unenforceable because the assignor had no rights in the patents to assign and “one 

cannot give what one does not have.”) Regarding JEC, a nonexclusive licensee, its 

rights to the patents-in-suit are contingent upon Copperhead’s rights to the patents-insuit. Thus, if the assignment to Copperhead was ineffective, the license from 

Copperhead to JEC is similarly ineffective, such that JEC has no rights to the patentsin-suit. (Doc. 7 at PageID 165 n.7.)

Defendants contend the Plaintiffs fail to establish statutory standing, too. (Id. at 

PageID 168.) Under 35 U.S.C. § 281, only a “patentee” may bring a civil action for 

infringement of a patent. “Patentees” include “not only the patentee to whom the patent 

was issued but also the successors in title to the patentee.” Id. § 100(d). An “exclusive 

licensee also has standing to sue in its own name, without joining the patent holder 

where ‘all substantial rights’ in the patent are transferred.” Alps South, LLC v. Ohio 

Willow Wood Co., 787 F.3d 1379, 1382 (Fed. Cir. 2015) (quotation and citation omitted). 

Neither Plaintiff is a named inventor. Copperhead is not a successor in title to the 
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inventor because the corrective assignment is unenforceable. And even presuming any 

license granted to JEC was effective, the Complaint describes JEC as a nonexclusive 

licensee, precluding it, under Federal Circuit case law, from having standing to file suit 

on its own. 

Plaintiffs portray the corrective assignment as a much more basic event. It was, 

simply, a correction of “an obvious technical error” in the original assignment by listing 

“002152706 Ontario Ltd.” as assignee rather than “Copperhead Industrial Inc.” (Doc. 14 

at PageID 299.) Relying on the Ruggiero declaration for factual support, Plaintiffs insist 

that it was an “inadvertent mistake” to identify Copperhead by its OCN in both the 

Patent Purchase Agreement and in the Patent Assignment rather than by its corporate 

name. (Id. at PageID 300 (citing Doc. 14-1 at PageID 310 (¶¶ 8, 9).) When Ruggiero 

recognized his mistake, Kaeseler, the assignor, was not available because of illness 

and later died. (Id. at PageID 302 (citing Doc. 14-1 at PageID 313 (¶ 20).) Hence, 

Copperhead rectified the error in accord with the appropriate USPTO procedure set 

forth Section 323.01(b) of the Manual of Patent Examining Procedure, “Typographical 

Errors in Recorded Assignment Document” (permitting errors in assignment documents 

to be corrected “[i]f an assignor is not available to correct an original document or 

execute a new one” through an assignee “affidavit or declaration in which the assignee 

identifies the error and requests correction”). (Id. at PageID 302.) To allow Defendants 

to escape liability for patent infringement based on “technical error” would be inequitable

in Plaintiffs’ view. They consequently urge the Court to reject the notion that they lack 

standing to bring this civil action. See Hilgraeve Corp. v. Symantec Corp., 212 F.R.D. 

345, 348 (E.D. Mich. 2003).
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B. The Court Will Take Notice of the Canadian Judgment

The March 19, 2018 Canadian federal court judgment regarding the Canadian 

patents that are counterparts of the patents-in-suit is a public record of which the 

undersigned may—and does—take judicial notice. See Rodic v. Thistledown Racing 

Club, Inc., 615 F.2d 736, 738 (6th Cir. 1980); see also Jackson v. City of Columbus, 194 

F.3d 737, 745 (6th Cir. 1999), abrogated on other grounds, Swierkiewicz v. Sorema 

N.A., 534 U.S. 506 (2002). The Canadian Judgment does not bind this Court, but, 

where helpful, may inform its reasoning.

C. Plaintiff Copperhead Has Established Standing 

The undersigned concludes that Copperhead has established standing pursuant 

to Article III and 35 U.S.C. § 281, see Alps South, 787 F.3d at 1382, thus allowing the 

Court to exercise jurisdiction over its claims of patent infringement against Defendants. 

To this end, the undersigned finds that Copperhead Industrial Inc. was always the 

intended party to the February 16, 2013 Patent Purchase Agreement and the intended 

assignee of the Patent Assignment executed in connection therewith. The undersigned 

finds further that the corrective assignment filed on December 14, 2016 corrects the 

inadvertent mistake of identifying Copperhead by its Ontario corporation number rather 

than by its corporate name.

 Defendants offer no real challenge to Ruggiero’s testimony about his mistaken 

belief that “002152706 Ontario Ltd.” was Copperhead’s legal corporate name, which is 

why 002152706 Ontario Ltd. was listed as the purchaser of Kaeseler’s intellectual 

property rights. Ruggiero was under the same mistaken belief in 2011—nearly two 

years prior—when he acquired 100% ownership of Copperhead. (Doc. 14-5 at PageID 
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330 (“Glen Keleher agrees to transfer ownership of his 50% share of 002152706 

Ontario Limited, operating as Copperhead Industrial Inc., to Joseph Ruggiero . . . .”)

(emphasis added).) A Corporation Profile Report for Copperhead (dated December 1, 

2016) obtained by Ruggiero from the Ontario Ministry of Government Services confirms 

that Copperhead’s OCN is “2152706” and that its registered business address is 

identical to the one listed for “002152706 Ontario Ltd.” in the Patent Purchase 

Agreement and the Patent Assignment. (Cf. Doc. 14-4 at PageID 322, 325 with Doc. 

14-2 at PageID 315 and Doc. 14-3 at PageID 319.) As noted in the Canadian 

Judgment, this report serves to establish a “clear[ ] link between the corporate number 

and Copperhead[.]” (Doc. 25-1 at PageID 480 (¶ 28).) That link is reinforced by

evidence of payments from Copperhead to Kaeseler as specified in the Patent 

Purchase Agreement. (See Docs. 14-6, 14-7.)

Defendants downplay the “significance” of corporation numbers in Ontario, and 

Plaintiffs citation to the official website of the Ontario Government in support. (Doc. 22 

at PageID 444 n.7.) But the Canadian Judgment confirms the premise that Copperhead 

is uniquely 2152706 and vice versa. Some party must possess the substantive right to 

sue for patent infringement, and, in this particular and unusual circumstance—owing to 

the exclusivity of the OCN—that party is Copperhead. See Hilgraeve, 212 F.R.D. at 

348. 

A number of cases are instructive. For example, summary judgment based on a 

lack of standing was denied in LP Matthews LLC v. Bath & Body Works, Inc., where the 

patent assignment to the plaintiff was executed by Greenspan Company, an entity that 

did not exist, instead of Greenspan Corporation. 458 F. Supp. 2d 211, 213 (D. Del. 
16

2006). The court found persuasive the fact that the original assignee, who was not an 

attorney, “did not understand the distinctions between the designations ‘Company’ and 

‘Corporation’” and used them “interchangeably.” Id. at 215. Other examples that did 

not defeat standing include Thermolife Int’l, LLC v. Vitamin Shoppe, Inc., No. 0:16-cv60693-UU, 2016 WL 6678525, at *3 (S.D. Fla. June 8, 2016) (assignment made to 

“VERTEX Closed Joint Stock Company” instead of “WERTEKS Closed Joint Stock 

Company” because of a transliteration/transcription issue of “w” pronounced as “v”); 

Shower Enclosures Am., Inc. v. BBC Distrib. Corp., No. 3:15cv627, 2016 WL 3031081, 

at *1–2 (N.D. Ind. May 27, 2016) (“inadvertent error” explained assignment made to 

“Shower Enclosures, Inc.” instead of “Shower Enclosures America, Inc.”); Imperium (IP) 

Holdings, Inc. v. Apple Inc., No. 4:11-CV-163, 2012 WL 2995997, at *4 (E.D. Tex. June 

4, 2012) (typographical error explained assignment to “ESS Technologies International, 

Inc.”—an entity that did not exist—instead of “ESS Technology International, Inc.”).

Abraxis Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359 (Fed. Cir. 2010), relied 

upon by Defendants, is distinguishable. In Abraxis, two related corporate entities 

owned the asserted pharmaceutical patents, and they intended to convey them to a 

third related entity, which, in turn, would assign them to the plaintiff. See id. at 1360–61. 

But at the time the third related entity purported to assign the patents to the plaintiff, the 

two owners of the patents had not transferred them to the third entity, breaking the 

chain of title. Id. at 1361. The issue presented related to “[w]hether an assignment of 

patent rights in an agreement is automatic or merely a promise to assign” and the 

Federal Circuit held that “contracts that obligate the owner to grant rights in the future 

do not vest legal title to the patents in the assignee. Id. at 1364–65. The actual transfer 
17

of the asserted patents was to occur in the future, and thus the transferor had no rights 

to assign to the plaintiff. Id. at 1365. Despite the “intent” of the various related entities, 

“[c]ommon corporate structure does not overcome the requirement that even between a 

parent and a subsidiary, an appropriate written assignment is necessary to transfer 

legal title from one to the other.” Id. at 1366.

The present case is exponentially less complex. There is no suggestion that 

Kaeseler as transferor lacked any rights in the patents-in-suit, or that the assignment 

was not automatic. And Plaintiffs have offered more than sufficient evidence that the 

parties intended that Kaeseler’s patent rights be transferred to Ruggiero’s company, 

Copperhead, which paid Kaeseler for them. That Copperhead was identified by its 

corporate number rather than by its corporate name falls within the ambit of mistake, 

made “obvious” by the clear link the Province of Ontario established between them.

Finally, Defendants bring to the Court’s attention a second assignment made by 

Kaeseler of his U.S. patent relating to spot welding cap changers. (Doc. 22 at PageID 

442–44.) This one, to Joe Ruggiero individually, was made on March 8, 2013 and filed 

with the USPTO on May 28, 2013, in contrast to the original assignment that was 

executed on February 16, 2013 but not recorded until November 25, 2013. (Doc. 22-1 

at PageID 453–54 (¶¶ 4, 5), Doc. 22-2.) In Defendants’ view, “Kaeseler’s execution of 

this other assignment refutes Plaintiffs’ argument in this Court that the now-deceased 

Mr. Kaeseler somehow always intended to assign the U.S. patents to Plaintiff 

Copperhead Industrial[] Inc. (Doc. 28 at PageID 489.) Not necessarily so. The 

assignment was to Copperhead’s sole owner, sole director, and president as opposed 

to someone with no connection to Copperhead. Nonetheless, a cursory examination 
18

indicates that the Ruggiero assignment would be declared invalid, because Kaeseler—

despite his blanket covenant to the contrary4—already had assigned his intellectual 

property rights to Copperhead some three weeks earlier and had received the first of 

two payments therefor. Indeed, Defendants expressly state in their reply papers that 

they “are not conceding that the purported assignment to Mr. Ruggiero is valid, and they 

reserve all rights to contest [its] validity.” (Doc. 22 at PageID 443 n.5.) An apparent red 

herring, the Ruggiero assignment does not dictate a different result.5

V. CONCLUSION

Consistent with the foregoing analysis, IT IS RECOMMENDED THAT on the 

Motions to Dismiss for Lack of Subject-Matter Jurisdiction filed by Defendant G.E. 

Schmidt, Inc. (Doc. 7) and Defendant Kyokutoh Co., Ltd. (Doc. 15) be DENIED.

6

 4 Among the recitals in the document signed by Kaeseler was his covenant “that no assignment, sale, 

agreement or encumbrance has been or will be made or entered into which would conflict with this

assignment.” (Doc. 22-2 at PageID 458 (emphasis added).)

5 Nor does the fact that “002152706 Ontario Limited” is a plaintiff in the parallel New York litigation. 

Review of the docket sheet in that civil action indicates that the original complaint was filed on January 6, 

2015 (Doc. 1), with amended complaints being filed on February 10, 2015 (Doc. 5), April 17, 2015 (Doc. 

12), December 7, 2015 (Doc. 28), November 1, 2016 (Doc. 54), and November 27, 2017 (Doc. 101). See

002152706 Ontario Limited, et al. v. Changer & Dresser, Inc., Case No. 1:15-cv-00020-WMS-LGF The 

original complaint and the first four amended complaints were filed prior to December 14, 2016, the date 

on which the corrective assignment was filed with the USPTO. The fifth amended complaint clearly was 

filed after December 14, 2016. However, approximately six weeks later, on January 5, 2018, Plaintiffs 

filed a motion to substitute “Copperhead Industrial Inc.” as plaintiff for “002152706 Ontario Limited” 

pursuant to Fed. R. Civ. P. 17(a) on the basis that Copperhead is the real party in interest. (Docs. 103, 

105 (at pages 12–15), and 110.) That motion is currently pending before the court in the Western District 

of New York.

6 The parties’ briefs focus principally on whether Copperhead has standing to sue for patent infringement, 

which this Report recommends resolve in Copperhead’s favor. The issue of JEC’s standing, however, is 

a discrete question. Defendants are correct in their general observation that “if the assignment to 

Copperhead was ineffective, the purported license to JEC is also ineffective, such that JEC has no rights 

to the patents-in-suit.” (Doc. 7 at PageID 165 n.7.) But whether JEC also has standing has not been fully 

addressed. In their reply, Defendants comment, almost as an afterthought, that as a nonexclusive 

licensee, JEC “lacks standing to participate at all in this case.” (Doc. 22 at PageID 447 n.11 (citing 

Morrow v. Microsoft Corp., 499 F.3d 1332, 1341 (Fed. Cir. 2007) (“A nonexclusive license confers no 

constitutional standing on the licensee to bring suit or even to join a suit with the patentee because a 

nonexclusive licensee suffers no legal injury from infringement.”) (emphasis added by Defendants) 

(quoting Sicom Systems, Ltd. v. Agilent Technologies, Inc., 427 F.3d 971, 976 (Fed. Cir. 2005).) 

However, the undersigned is reluctant to make a recommendation on a matter of jurisdiction based solely 

upon a footnote in a pleading to which Plaintiffs were not entitled to respond. Should the presiding district
19

s/Stephanie K. Bowman

Stephanie K. Bowman

United States Magistrate Judge

 

judge adopt the undersigned’s recommendation regarding the fact of Copperhead’s standing, the parties 

may wish to revisit the question of JEC’s standing at a later point in this litigation.
20

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF OHIO

WESTERN DIVISION

COPPERHEAD INDUSTRIAL Case No. 1:17-cv-609

INC. and JEC DISTRIBUTORS

INC.,

 

Plaintiffs, Dlott, J.

Bowman, M.J.

v.

 

G.E. SCHMIDT, INC. and

KYOKUTOK CO., LTD.,

 

Defendants.

NOTICE

Pursuant to Fed. R. Civ. P. 72(b), any party may serve and file specific, written 

objections to this Report & Recommendations (“R&R”) within FOURTEEN (14) DAYS of 

the filing date of this R&R. That period may be extended further by the Court on timely 

motion by either side for an extension of time. All objections shall specify the portion(s) 

of the R&R objected to, and shall be accompanied by a memorandum of law in support 

of the objections. A party shall respond to an opponent’s objections within FOURTEEN 

(14) DAYS after being served with a copy of those objections. Failure to make 

objections in accordance with this procedure may forfeit rights on appeal. See Thomas 

v. Arn, 474 U.S. 140 (1985); United States v. Walters, 638 F.2d 947 (6th Cir. 1981).