Filed: Oct. 06, 2021
Latest Update: Oct. 06, 2021
Case: 21-1702 Document: 22 Page: 1 Filed: 10/06/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
PETER SGROMO, AKA PIETRO PASQUALE-
ANTONIO SGROMO,
Plaintiff-Appellant
v.
TARGET BRANDS INC.,
Defendant-Appellee
______________________
2021-1702
______________________
Appeal from the United States District Court for the
District of Minnesota in No. 0:20-cv-01030-JRT-LIB, Judge
John R. Tunheim.
______________________
Decided: October 6, 2021
______________________
PETER SGROMO, Thunder Bay, Ontario, Canada, pro se.
JOHN S. ARTZ, Dickinson Wright PLLC, Ann Arbor, MI,
for defendant-appellee. Also represented by STEVEN A.
CALOIARO, Reno, NV; JAMES J. LUKAS, JR., Greenberg Trau-
rig, P.A, Chicago, IL.
______________________
Before LOURIE, O’MALLEY, and CHEN, Circuit Judges.
Case: 21-1702 Document: 22 Page: 2 Filed: 10/06/2021
2 SGROMO v. TARGET BRANDS INC.
PER CURIAM.
Pietro Pasquale Antonio Sgromo appeals from a deci-
sion of the United States District Court for the District of
Minnesota granting Target Brands, Inc.’s (“Target”) mo-
tion to dismiss for lack of jurisdiction and denying Sgromo’s
motion for a preliminary injunction. See Sgromo v. Target
Brands, Inc., No. CV 20-1030, 2021 WL 632496 (D. Minn.
Feb. 18, 2021). We affirm.
BACKGROUND
Sgromo alleges that he owns U.S. Patents 7,046,440
(“the ’440 patent”), 8,654,422 (“the ’422 patent”), and
9,511,298 (“the ’298 patent”), and the H2O-GO! trade-
marks. These patents and trademarks relate to pool deco-
rations and structures, but their subject matter is not
relevant here. The present action is not Sgromo’s first at-
tempt at asserting infringement of these patents and
trademarks, and other courts have found that Sgromo does
not own any of these patents or trademarks. For context
regarding the present action, we briefly summarize the
prior court decisions.
In April 2019, the District Court for the Northern Dis-
trict of California, in a suit brought in that court, found
that Leonard Scott, not Sgromo, was the rightful owner of
the ’440 patent and enjoined Sgromo from filing any claim
in federal or state court pertaining to royalty payments
arising from use of this patent. See Bestway (USA), Inc. et
al. v. Sgromo et al., No. 17-CV-205, Dkt. No. 148 (N.D. Cal.
Apr. 18, 2019); S.A. 53–54. 1 In September 2019, the Dis-
trict Court for the Eastern District of Texas dismissed
Sgromo’s complaint in that court for infringement of the
’440 patent for lack of standing because Sgromo had not
shown a written transfer of all substantial rights of the ’440
1 “S.A.” refers to the Supplemental Appendix filed
with Target’s brief.
Case: 21-1702 Document: 22 Page: 3 Filed: 10/06/2021
SGROMO v. TARGET BRANDS INC. 3
patent to himself and because other district court proceed-
ings had already concluded that he was not the owner of
the ’440 patent. See Sgromo v. Bestway Enter. Co. Ltd., No.
19-CV-60, 2019 WL 4686719, at *3 (E.D. Tex. Aug. 29,
2019), R. & R. adopted,
2019 WL 4673756, at *1 (E.D. Tex.
Sept. 25, 2019).
In 2019, the Northern District of California and East-
ern District of Texas courts found that Sgromo failed to
demonstrate ownership of the ’298 patent. See Sgromo,
2019 WL 4686719, at *4–5; J.A. 7.
In September 2019, the Eastern District of Texas court
dismissed Sgromo’s complaint for infringement of the ’422
patent for lack of standing because Imperial Toy, LLC (“Im-
perial Toy”) was assigned the rights to the ’422 patent. See
Sgromo v. Imperial Toy LLC, 2019 WL 4394565, at *2 (E.D.
Tex. Sept. 13, 2019). In November 2019, Imperial Toy filed
for bankruptcy, and despite Sgromo asserting that he was
the rightful owner of the ’422 patent, the bankruptcy court
overruled Sgromo’s objection and approved the sale of the
’422 patent free and clear of any claim by Sgromo. J.A. 21–
22; S.A. 76, 101.
Finally, the Eastern District of Texas court found that
Sgromo did not show that he was the owner of the H2O-
GO! trademarks. See Sgromo, 2019 WL 4686719, at *5–6.
Thus, other tribunals had determined that Sgromo
lacked ownership of the patents and trademark sufficient
to bring suit on them.
In the present case Sgromo sued Target in the United
States District Court for the District of Minnesota for in-
fringement of the ’440, ’422, and ’298 patents, and the H2O-
GO! trademarks. J.A. 3–4. Sgromo alleged that Wide Eyes
Marketing, Ltd. (“WEM”), a company owned and operated
by Sgromo, acquired ownership of the ’440 patent on De-
cember 10, 2010. J.A. 4. In May 2013, WEM granted a
non-exclusive license to Bestway (Hong Kong)
Case: 21-1702 Document: 22 Page: 4 Filed: 10/06/2021
4 SGROMO v. TARGET BRANDS INC.
International Ltd. and Bestway (USA), Inc. (collectively,
“Bestway”). Id. Bestway then terminated the license in
March 2017.
Id. As a result, Sgromo claimed that the ’440
patent exclusively reverted to WEM.
Id. In April 2020,
Sgromo filed a purported assignment from WEM to himself
in the U.S. Patent and Trademark Office (“USPTO”). S.A.
244–48.
Regarding the ’422 patent, Sgromo alleged that he li-
censed this patent to Imperial Toy but that the license ter-
minated due to non-payment of royalties and all rights in
the ’422 patent reverted to him. J.A. 4–5. In March 2020,
Sgromo filed a “corrective assignment” which he claimed
showed that the rights in the ’422 patent reverted to him.
J.A. 30. As for the ’298 patent, Sgromo claimed that he
licensed the patent to Bestway in 2013, Bestway termi-
nated the license in 2017, and all rights reverted to him.
Id. And, regarding the H2O-GO! trademarks, Sgromo al-
leged that he granted a non-exclusive license to the trade-
marks to Bestway, but Bestway terminated the agreement
in March 2017, and the rights exclusively reverted to him.
Id. In April 2020, Sgromo filed documents that he alleged
are assignments of the H2O-GO! trademarks. S.A. 305–10.
Shortly after bringing suit, Sgromo filed a motion for a
preliminary injunction. S.A. 344. Target then moved to
dismiss the case for lack of subject matter jurisdiction.
A magistrate judge issued a report and recommenda-
tion that recommended granting Target’s motion to dismiss
and also recommended denying Sgromo’s motion for a pre-
liminary injunction. J.A. 8. The magistrate judge found
that WEM, not Sgromo, owned the ’440 patent. J.A. 26–29.
WEM then assigned the patent to Scott. Id. This meant
that, Scott, not Sgromo, held all the rights to the ’440 pa-
tent and these rights never reverted to WEM or were later
assigned to Sgromo, as Sgromo claimed.
Id.
With regard to the ’422 patent, the magistrate judge
found that although Sgromo was listed as an inventor,
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SGROMO v. TARGET BRANDS INC. 5
Imperial Toy was the assignee of the patent and held all
ownership rights to the patent. J.A. 29–31. With regard
to the ’298 patent, the magistrate judge found that alt-
hough Sgromo was listed as an inventor, Eureka Inven-
tions was the original assignee of the patent and then
assigned all ownership rights to Bestway. J.A. 31–33.
With regard to the H2O-GO! trademarks, the magistrate
judge found that the trademarks were issued to and owned
by Bestway and that Sgromo failed to demonstrate that he
held any ownership rights over these trademarks. J.A. 33–
35. The magistrate judge also found that Sgromo’s pur-
ported assignments for the ’422 and ’440 patents and the
H2O-GO! trademarks were not actual assignment docu-
ments but instead declarations and a notice of recordation
with no legal effect. J.A. 26–35.
Because Sgromo lacked ownership of any of the as-
serted patents and trademarks, the magistrate judge rec-
ommended granting Target’s motion to dismiss for lack of
subject matter jurisdiction on the ground that Sgromo
lacked standing to assert claims for infringement. J.A. 41.
In addition, because Sgromo also failed to demonstrate
that he had a fair chance of prevailing on any of his claims,
the magistrate judge recommended denying Sgromo’s mo-
tion for a preliminary injunction. J.A. 41–42. Judge John
Tunheim adopted the report and recommendation and dis-
missed the claims. J.A. 2–14.
Sgromo then filed the present notice of appeal to this
court, appealing the district court’s grant of Target’s mo-
tion to dismiss and denial of Sgromo’s motion for a prelim-
inary injunction. S.A. 433. We have jurisdiction under 28
U.S.C. § 1291.
DISCUSSION
We review a grant or denial of a motion to dismiss for
lack of standing de novo, but the underlying facts used to
support the decision are reviewed for clear error. See
Hewlett-Packard Co. v. Acceleron LLC, 587 F.3d 1358, 1361
Case: 21-1702 Document: 22 Page: 6 Filed: 10/06/2021
6 SGROMO v. TARGET BRANDS INC.
(Fed. Cir. 2009). “A finding is ‘clearly erroneous’ when alt-
hough there is evidence to support it, the reviewing court
on the entire evidence is left with the definite and firm con-
viction that a mistake has been committed.” United States
v. Gypsum Co.,
333 U.S. 364, 395 (1948).
Because the grant, denial, or modification of a prelimi-
nary injunction is not unique to patent law, we apply the
regional circuit law when reviewing and interpreting such
decisions. See, e.g., Aevoe Corp. v. AE Tech Co., 727 F.3d
1375, 1381 (Fed. Cir. 2013). The Eighth Circuit reviews a
district court’s decision granting or denying a preliminary
injunction for abuse of discretion. See Barrett v. Claycomb,
705 F.3d 315, 320 (8th Cir. 2013). A district court abuses
its discretion by basing its decision, inter alia, on an erro-
neous legal standard or clearly erroneous findings of fact.
Id.
Sgromo argues that the district court erred by failing
to properly apply contract law in interpreting the assign-
ments and corresponding ownership of the patents and
trademarks at issue in this case. Target contends that this
argument is baseless because the court did not engage in
any contract interpretation. We agree with Target. The
court did not engage in any contract interpretation in find-
ing that Sgromo did not own any of the patents or trade-
marks at issue. To the extent that Sgromo contends that
the court erred in finding that he did not have ownership
of the patents and trademarks at issue, we disagree.
Sgromo did not hold ownership of any of the patents or
trademarks when he asserted them. At all relevant times,
as indicated by publicly available assignment forms, Scott,
Bestway, or Imperial Toy owned the ’422, ’440, and ’298
patents and the H2O-GO! trademarks. See J.A. 26–35, 63;
S.A. 111–22, 170–75. Although Sgromo is listed as an in-
ventor on the ’298 and ’422 patents, he had assigned them
to others and lacked ownership of these patents when he
attempted to sue on them. In addition, the purported
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SGROMO v. TARGET BRANDS INC. 7
assignments Sgromo filed for the ’422 patent, ’440 patent,
and H2O-GO! trademarks have no legal effect. See 37
C.F.R. § 3.54 (“The recording of a document . . . is not a
determination by the Office of the validity of the document
or the effect that document has on the title to an applica-
tion, a patent, or a registration.”).
The district court’s findings regarding ownership in the
present case are consistent with those of the other courts
that have found that Sgromo holds no ownership rights to
the ’422, ’440, and ’298 patents and the H2O-GO! trade-
marks. Because Sgromo lacked ownership of the patents
and trademarks at issue when he brought this suit, he
lacks standing to assert his claims for infringement. See
Paradise Creations, Inc. v. UV Sales, Inc., 315 F.3d 1304,
1309 (Fed. Cir. 2003) (“[T]o assert standing for patent in-
fringement, the plaintiff must demonstrate that it held en-
forceable title to the patent at the inception of the lawsuit.”)
(emphasis in the original). We therefore affirm the court’s
dismissal of Sgromo’s action.
Sgromo also asserts infringement of U.S. Patent
9,069,243 for the first time on appeal. This patent was not
asserted against Target at the district court and cannot be
raised for the first time on appeal. See Sage Prods., Inc. v.
Devon Indus., Inc., 126 F.3d 1420, 1426 (Fed. Cir. 1997)
(“With a few notable exceptions . . . appellate courts do not
consider a party’s new theories, lodged first on appeal. If a
litigant seeks to show error in a trial court’s overlooking an
argument, it must first present that argument to the trial
court.”).
In light of our affirmance of the dismissal of Sgromo’s
action, the portion of the district court’s decision address-
ing Sgromo’s motion for a preliminary injunction is moot.
Thus, we do not address Sgromo’s appeal from that portion
of the court’s decision.
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8 SGROMO v. TARGET BRANDS INC.
CONCLUSION
For the foregoing reasons, the decision of the district
court is affirmed.
AFFIRMED
COSTS
Costs are awarded to Target.
