Auburn University v. International Business Machines, Corp.

Filing 375

MEMORANDUM OPINION AND ORDER: it is hereby ORDERED that 1) IBM's 212 Motion for Judgment on the Pleadings is DENIED as MOOT as to Auburn's claims for indirect infringement and DENIED as to Auburn's claims under the doctrine of equiva lents; 2) IBM's 308 Motion for Scheduling Order Regarding Completion of Briefing on IBM's Motion for Summary Judgment of Noninfringement is DENIED as MOOT; 3) Auburn's claims for indirect infringement are DISMISSED WITH PREJUDICE; 4) IBM's 229 Contingent Motion to Strike Portions of Dr. F. Joel Ferguson's Expert Report is DENIED; 5) Auburn's 251 Motion for Leave to File Supplemental Evidentiary Submission in Opposition to IBM's Motion Under Federal Rule 12(c) and Contingent Motion to Strike Portions of Dr. Joel F. Ferguson's Expert Report is DENIED as MOOT. Signed by Honorable Judge Mark E. Fuller on 6/4/2012. (Attachments: # 1 Civil Appeals Checklist) (wcl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF ALABAMA
EASTERN DIVISION
AUBURN UNIVERSITY,
Plaintiff,
v.
INTERNATIONAL BUSINESS
MACHINES, CORP.,
Defendant.

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CASE NO. 3:09-cv-694-MEF
(WO - Publish)

MEMORANDUM OPINION AND ORDER
This cause is before the Court on the following motions: (1) IBM’s opposed
Motion for Judgment on the Pleadings under Rule 12(c) (Doc. #212); (2) IBM’s
Contingent Motion to Strike Portions of Dr. F. Joel Ferguson’s Expert Report (Doc.
#229); (3) IBM’s Motion for Scheduling Order Regarding Completion of Briefing on
IBM’s Motion for Summary Judgment of Noninfringement (Doc. #308); and (4)
Auburn’s Motion for Leave to File Supplemental Evidentiary Submission in Opposition
to IBM's Motion (Doc. #251.) For the reasons discussed below, all of these motions are
due to be DENIED.
Procedural Background
IBM is seeking judgment as a matter of law on Auburn’s claims for indirect
infringement and direct infringement through the doctrine of equivalents (Doc. #212 at 1).
If that motion is denied as to the doctrine of equivalents claim, IBM alternatively seeks to
strike the portions of Dr. F. Joel Ferguson’s expert report that reference the doctrine of
equivalents. The Court held a hearing on these motions on May 9, 2012.

Auburn’s First Amended Complaint alleges, as to U.S. Patent No. 7,194,366 (“the
‘366 patent”) and 7,409,306 (“the ‘306 patent”), as follows:
Upon information and belief, IBM has directly infringed,
contributed to and/or actively induced infringement of the [‘306
or ‘366] patent and is continuing to directly infringe, contribute
to and/or actively induce infringement by making, using,
importing, offering for sale, soliciting sales by others of, and/or
selling within the United States products, including, without
limitation, integrated circuits tested using the claimed methods,
which is covered by one or more claims of the [‘306 or ‘366]
patent.
(Amended Complaint, Doc. #87, at ¶¶ 63, 69).
IBM alleges that, both on its face and in combination with Auburn’s responses to
interrogatories, this language is insufficient to support a claim for either (1) indirect
infringement, or (2) direct infringement under a doctrine of equivalents theory (see generally
Doc. #212).
Discussion
I. Motion For Judgment Under Rule 12(c)
a. Standard of Review
A motion for judgment on the pleadings pursuant to Rule 12(c) is governed by the
same standard as a motion to dismiss under Rule 12(b)(6). United States v. Ala. Dep’t.
Mental Health, Mental Retardation, No. 2:08-cv-1025-MEF, 2010 WL 447399, at *2 (M.D.
Ala. Feb. 9, 2010); Strategic Income Fund, L.L.C. v. Spear, Leeds & Kellogg Corp., 305 F.3d
1293, 1295 n. 8 (11th Cir. 2002). Therefore, for the purposes of adjudging IBM’s motion,

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the Court will accept as true all well-pleaded factual allegations and view them in the light
most favorable to Auburn, as it would if considering a motion under Rule 12(b)(6). See
Pielage v. McConnell, 516 F.3d 1282, 1284 (11th Cir. 2008); Am. United Life Ins. Co. v.
Martinez, 480 F.3d 1043, 1057 (11th Cir. 2007).
Federal Rule of Civil Procedure 8(a)(2) requires only that a complaint contain “a short
and plain statement of the claim showing that the pleader is entitled to relief.” However, to
survive a motion to dismiss for failure to state a claim, the plaintiff must allege “enough facts
to state a claim to relief that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 550
U.S. 554, 570 (2007). “A claim has facial plausibility when the plaintiff pleads factual
content that allows the court to draw the reasonable inference that the defendant is liable for
the misconduct alleged.” Ashcroft v. Iqbal, 129 S. Ct. 1937, 1950 (2009). The plaintiff must
provide “more than labels and conclusions, and a formulaic recitation of the elements of a
cause of action will not do.” Twombly, 550 U.S. at 559. It is not sufficient that the pleadings
merely leave “open the possibility that a plaintiff might later establish some set of
undisclosed facts to support recovery.” Id. at 561 (internal quotation and alteration omitted).
b. Indirect Infringement
A claim for indirect infringement can be shown in two ways: (1) through
demonstrating that the defendant actively induced a third party to directly infringe; or (2)
through a showing that the defendant contributed to the direct infringement of a third party.
35 U.S.C. § 271.

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Auburn’s opposition to IBM’s motion as to indirect infringement was entirely based
on IBM’s use of the allegedly infringing testing methods (the “accused methods”) on the
Sony Cell 11S and 12S products (Doc. #215 at 4-6.) However, the procedural posture of this
case has changed dramatically since IBM filed its 12(c) motion.
In light of discovery provided to Auburn by IBM in response to this Court’s December
20, 2011 order (Doc. #305), Auburn has acknowledged that IBM never implemented any
allegedly infringing testing methods with regard to the Sony Cell 11S or Cell 12S products.
(Auburn’s Motion to Amend/Correct, Doc. #323, at 5) (“IBM management . . . ultimately put
implementation on hold . . . .”).) The Court subsequently issued an order denying Auburn
leave to amend its complaint and add a claim for a declaratory judgment that IBM would
infringe if IBM were to implement the accused methods with Sony in the future. The Court
held that such an amendment would be futile. (Doc. #370.)
In light of these developments, at the May 9 hearing Auburn represented that it is no
longer pursuing any claims for indirect infringement and that it has no remaining claims
regarding the accused Sony products. Therefore, to the extent that Auburn’s claims for
indirect infringement survived the Court’s order of March 23, 2012 (Doc. #370), Auburn’s
indirect infringement claims and all claims related to the Sony products are due to be
DISMISSED WITH PREJUDICE. Accordingly, IBM’s motions for judgment as to indirect
infringement and its motion for scheduling order regarding completion of briefing on IBM’s
motion for summary judgment of noninfringement are due to be DENIED AS MOOT.

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c. Doctrine of Equivalents
The doctrine of equivalents may apply when a patent claim is not literally infringed,
but the alleged infringer has made only “insubstantial changes and substitutions . . . which,
though adding nothing, would be enough to take the copied matter outside the claim, and
hence outside the reach of law.” Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S.
605, 607 (1950).
1. Auburn Has Sufficiently Pled the Doctrine of Equivalents
The parties do not agree as to whether a claim for infringement under the doctrine of
equivalents must be pled separately from a claim for literal infringement. IBM contends that
a pleading must explicitly make out a claim for infringement under the doctrine of
equivalents as distinct from a claim of literal infringement (Doc. #213 at 13). Auburn argues
that a claim under the doctrine of equivalents is encompassed by a claim for direct
infringement (Doc. #215 at 7). After a review of the parties’ arguments and the relevant case
law, the Court concludes that, because the Federal Circuit has not said otherwise, Auburn
need not have explicitly pled the doctrine of equivalents in its complaint. See McZeal v.
Sprint Nextel Corp., 501 F.3d 1354, 1356-57 (Fed. Cir. 2007) (holding that a direct
infringement claim made in accordance with Form 16 (now Form 18) of the Federal Rules
of Civil Procedure meets the Twombly pleading standard).
Auburn’s complaint satisfies the pleading standard for a doctrine of equivalents claim.
McZeal dealt with a pro se plaintiff’s claim for direct infringement under a doctrine of

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equivalents theory. Id. at 1357. The Federal Circuit held that a properly-pled infringement
claim need only include:
1) an allegation of jurisdiction; 2) a statement that the plaintiff
owns the patent; 3) a statement that the defendant has been
infringing the patent by making, selling, and using [the device]
embodying the patent; 4) a statement that the plaintiff has given
the defendant notice of its infringement; and 5) a demand for an
injunction and damages.
Id. (internal quotations omitted).
The Federal Circuit has also held that “[t]o prove direct infringement, [the patentee]
must establish by a preponderance of the evidence that one or more claims of the patent read
on the accused device literally or under the doctrine of equivalents.” Spansion, Inc. v. Int’l
Trade Comm’n, 629 F.3d 1331, 1349 (Fed. Cir. 2010). In combination with Spansion,
McZeal indicates that a claim under the doctrine of equivalents can be brought through an
allegation of direct infringement that complies with the five requirements set out above.
Auburn’s amended complaint satisfies all five of these requirements (Doc. #87).
In their motion, IBM points out that several developments in this area of the law predate the Supreme Court’s decision in Ashcroft v. Iqbal, 129 S.Ct. 1937 (2009). For example,
the Federal Circuit has noted that Form 18 has not been updated since Iqbal. Colida v.
Nokia, 347 F. App’x 568, 571 n.2 (Fed. Cir. 2009) (“Form 18 is a sample pleading for patent
infringement, but is not tailored to design patents and was last updated before the Supreme
Court's Iqbal decision.”). Additionally, McZeal, along with several of the district court cases

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cited above, were decided pre-Iqbal or pre-Twombly.
Nevertheless, the dicta in Colida at most indicates that the Federal Circuit may soon
review whether a Form 18 complaint satisfies Twombly’s “plausibility” standard. That dicta
does not affect the presently applicable law. McZeal was decided post-Twombly, and, despite
the fact that Twombly had not yet been explicitly held to apply outside of the antitrust
context,1 the McZeal Court held that form pleading satisfied Twombly’s heightened standard.
Therefore, until the Federal Circuit explicitly says otherwise, the law allows for a pleading
of a doctrine of equivalents infringement theory through a bare-bones allegation of direct
infringement. McZeal, 501 F.3d at 1357; see also Fed. R. Civ. P. 84, Form 18.
The Court acknowledges that whether a doctrine of equivalents theory must be
explicitly pled after McZeal, Twombly, and Iqbal is a close question, and one that the Federal
Circuit has not explicitly answered. See Automated Trans. Corp. v. Bill Me Later, Inc., No.
09-61903-CIV, 2010 WL 1882264, at *2 (S.D. Fla. May 11, 2010) (indicating that the
Federal Circuit has not explicitly addressed this question). District Courts are split on the
issue. Compare Eon Corp. IP Holdings LLC v. Flo TV Inc., 802 F.Supp. 2d 527, 532 (D.
Del. 2011) (holding that a pleading for direct infringement is sufficient if it complies with
Rule 84 and Form 18 of the Federal Rules of Civil Procedure) and U.S. Gypsum Co. v.
LaFarge N. Am., Inc., 508 F. Supp. 2d 601, 618-620 (N.D. Ill. 2007) (“A plaintiff is not
required to expressly refer to the doctrine of equivalents in a complaint, alleging
1

The Supreme Court first applied the Twombly “plausibility” standard outside of the
antitrust context in Iqbal, 129 S.Ct. at 1949-52.
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infringement and citing to [the statute prohibiting infringement] is sufficient.”) with
Automated Transaction Corp., 2010 WL 1882264 at *2 (finding that the Federal Circuit has
implied a requirement that a doctrine of equivalents claim be pled explicitly and allowing
plaintiff to amend its complaint to do so) and W.L. Gore & Assocs., Inc. v. Medtronic, Inc.,
778 F. Supp. 2d 667, 675 (E.D. Va. 2011) (questioning whether a bare-bones Form 18
pleading of direct infringement encompasses a claim under a doctrine of equivalents theory).
This Court makes its decision under what the current law seems to be, rather than attempting
to make a decision based on the way the law may be trending.
2. Auburn Did Not “Amend” Its Infringement Contentions Through its
Expert’s Report, and Therefore Did Not Need to Show This Court Good
Cause for Its Doctrine of Equivalents Theory.
IBM contends that, to make a claim under the doctrine of equivalents, Auburn must
have moved the Court for leave to amend its Final Infringement Contentions (Doc. #117) and
shown good cause for the amendment. This contention is incorrect.
IBM bases its argument on the Court’s order (Doc. #139) denying IBM’s Motion for
Order Directing Auburn to Provide Adequate and Complete Final Infringement Contentions
(Doc. #110.) In Auburn’s Final Infringement Contentions Auburn states that
as presently advised, IBM literally infringes the Asserted Claims
with respect to each of the Accused Products. Auburn reserves
the right to also assert infringement under the doctrine of
equivalents should IBM contend that it does not literally
perform one or more elements of the Asserted claims and/or
based on further case investigation and discovery. Similarly,
Auburn reserves the right to assert infringement under the
doctrine of equivalents following claim construction by the
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Court.
...
Auburn reserves the right to move the Court for good cause for
an Order to allow Auburn to amend, supplement and/or narrow
its contentions following receipt of additional discovery and/or
a claim construction ruling by the Court.
(Doc. #110, Ex. H, at 4) (emphasis added).
In its Motion for Final Contentions, IBM argues that Auburn should not be allowed
to “unilaterally ‘reserve’ alternative infringement theories.” (Doc. #110 at 14). The Court
denied IBM’s motion, holding that Auburn had “provided final infringement contentions
sufficient [to] place IBM on notice of its theories of infringement (Doc. #139 at 1.) The
Court also held that “IBM’s argument that Auburn impermissibly reserves the right to amend
its final claim contentions is without merit.” (Doc. #139 at 2.)
IBM now argues that Auburn should not be permitted to pursue its doctrine of
equivalents claim in part because Auburn did not move for leave to amend its final claim
contentions to include a doctrine of equivalents claim. (IBM’s 12(c) Motion, Doc. #212 at
4). However, this argument misconstrues the Court’s order denying IBM’s Motion for Final
Contentions. While the Court did note that Auburn could amend its final claim contentions
upon a showing of good cause, the Court also noted that Auburn’s claims were sufficient to
place IBM on notice of its infringement theories. Auburn had already sufficiently pled the
doctrine of equivalents, supra p.5, and its reservation of its right to assert a more developed
doctrine of equivalents claim later in the proceedings was sufficient to place IBM on notice
that a doctrine of equivalents issue may arise.
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With the advent of Dr. Ferguson’s expert report and the information upon which it is
based,2 a doctrine of equivalents issue has arisen, and IBM will be responsible for responding
to it at the appropriate time.3
3. Boss Control, Inc. v. Bombardier Inc. Is Distinguishable from the
Instant Case
In further support of its position that Auburn cannot rely solely on its bare-bones
pleading to support a doctrine of equivalents claim, IBM relies heavily on the Federal
Circuit’s decision in Boss Control, Inc. v. Bombardier Inc., 410 F.3d 1372 (Fed. Cir. 2005).
However, Boss Control is distinguishable from the case at hand.
2

The Court notes that Auburn did not receive the information used to prepare Dr. Ferguson’s
report until very near the time the final infringement contentions were due. (Transcript, Doc. #374 at 23).
Auburn points out that Dr. Ferguson’s report, though coming after the final infringement contention
deadline, came within three weeks of Auburn’s receipt of the information needed to prepare the report
(Doc. #374 at 23.) This seems a reasonable turn around time, and prevents the Court from finding that
Auburn has been “sandbagging” with regard to its claims under the doctrine of equivalents. This
situation is closely analogous to that faced by the Federal Circuit in Kemin Foods, L.C. v. Pigmentos
Vegetales Del Centro S.A. De C.V., 464 F.3d 1339 (Fed. Cir. 2006). In Kemin, a magistrate judge struck
a late-filed expert report which included references to an allegation of infringement regarding a claim not
explicitly mentioned in the plaintiff’s complaint. Id. at 1351. The magistrate judge “apparently
believ[ing] that the supplemental expert report [raised that claim] for the first time in the litigation.” The
Federal Circuit remanded the issue to the district court, holding that the “language in the complaint was
sufficiently broad to encompass a charge of infringement of all the claims[,]” and that the plaintiff
“diligently pursued discovery to ascertain whether [the accused process] implicated [the claim in
question].” Id.
3

Auburn’s strategy of continually “reserving its right” to argue a doctrine of equivalents theory
has not prejudiced IBM because that reservation, in and of itself, is sufficient to inform IBM that it
should be prepared to defend against a doctrine of equivalents argument. See McZeal, 501 F.3d at 1357;
cf Kemin, 464 F.3d at 1351 (“in response to a an interrogatory asking which claims [plaintiff] was
alleging were infringed . . . [plaintiff] . . . ‘reserve[d] the right to seasonably update this response as the
discovery may reveal that other patent claims are also infringed.’”). Auburn’s strategy on this issue is
similar to the strategy IBM employed in pleading an affirmative license defense and deploying that
defense for the first time in its response to Auburn’s motion for summary judgment on that issue (see
Auburn’s Motion for Summary Judgment on IBM’s Affirmative License Defense, Doc. # 255
(withdrawn)); (IBM’s Response in Opposition to Auburn’s Motion for Summary Judgment on IBM’s
Affirmative License Defense, Doc. #280).

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The Federal Circuit held that the patentee in Boss Control had waived any claim under
the doctrine of equivalents. Boss Control, 410 F.3d at 1380. Unlike in this case, however,
when the alleged infringer in Boss Control filed its motion to dismiss, the patentee had failed
to raise the doctrine of equivalents in both its pleadings and in multiple briefs in response to
a motion for summary judgment of non-infringement. Id. When IBM filed the motion at
issue here, Auburn had not yet had the chance to argue a doctrine of equivalents theory in
response to a summary judgment motion. However, since IBM’s motion for judgment on the
pleadings came under submission, IBM has moved for summary judgment of
noninfringment.
This Court holds that, even given the cursory treatment of the doctrine of equivalents
in both IBM’s Motion for Summary Judgment and in Auburn’s Response,4 Auburn has not
waived its doctrine of equivalents claim under Boss Control.5 As Auburn pointed out in the
May 9th hearing (Doc. #374 at 6), the patentee in Boss Control argued to the Federal Circuit
that the district court erred in failing to consider the doctrine of equivalents in ruling against
the patentee on the defendant’s motion to dismiss, despite the fact that the plaintiff had failed

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The doctrine of equivalents is given short shrift both in IBM’s summary judgment and in
Auburn’s response (see IBM’s Motion for Summary Judgment of Noninfringement, Doc. #261 at 4
(discussing, in one paragraph, the standard for infringement under the doctrine of equivalents); Auburn’s
Response to IBM’s Motion for Summary Judgment of Noninfringement, Doc. #276 at 2-3 (containing
only mention of the doctrine of equivalents the response).)
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The Court would reach this conclusion even if IBM had not filed a motion for summary
judgment of noninfringement at the time of this decision. Therefore, it is unnecessary to address the
question of whether considering the filing of the summary judgment motion constitutes going “outside
the pleadings,” and would necessitate the conversion of IBM’s motion into a Rule 56 motion for
summary judgment under Rule 12(d).

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to make any argument under the doctrine of equivalents in its response to the defendant’s
motion for summary judgment of noninfringement. Boss Control, 410 F.3d at 1380.
Similarly, Auburn presents no doctrine of equivalents argument in response to IBM’s
motion fo summary judgment. However, having held that Auburn has adequately pled the
doctrine of equivalents, Auburn’s doctrine of equivalents theory remains live until this case
is resolved one way or another. Given the lack of argument on the issue to this point, were
IBM to prevail on its pending motion for summary judgment of noninfringement, Boss
Control indicates that Auburn would be held to have waived an appeal based on a doctrine
of equivalents theory. If IBM’s motion is not granted, however, Auburn would be free to
make arguments under the doctrine of equivalents at trial.
II. IBM’s Contingent Motion to Strike Is Due to Be Denied
For many of the same reasons stated above, IBM’s motion to strike is also due to be
denied.
IBM is not prejudiced by allowing Auburn’s doctrine of equivalents claim to go
forward. See supra n.3. For the same reasons, IBM is not prejudiced by the Court’s
allowance of an expert report supporting Auburn’s theory. Contrary to IBM’s position,
Auburn did not need to seek the Court’s leave, nor show good cause, to amend their
complaint to include a doctrine of equivalents theory, because Dr. Ferguson’s expert report
is not the first time a doctrine of equivalents theory has appeared in the case. See supra n.
2; Kemin, 361 F.3d at 1351; (Auburn’s Response, Doc. #243 at 7,11) . Dr. Ferguson’s report

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simply represents one aspect of developing a theory through discovery of the sort that is
de rigeur in any litigation.
Conclusion
For the reasons stated above, it is hereby ORDERED that
1. IBM’s Motion for Judgment on the Pleadings (Doc. #212) is DENIED as MOOT
as to Auburn’s claims for indirect infringement and DENIED as to Auburn’s claims
under the doctrine of equivalents.
2. IBM’s Motion for Scheduling Order Regarding Completion of Briefing on IBM’s
Motion for Summary Judgment of Noninfringement (Doc. #308) is DENIED as
MOOT.
3. Auburn’s claims for indirect infringement are DISMISSED WITH PREJUDICE.
4. IBM’s Contingent Motion to Strike Portions of Dr. F. Joel Ferguson’s Expert
Report (Doc. #229) is DENIED.
5. Auburn’s Motion for Leave to File Supplemental Evidentiary Submission in
Opposition to IBM’s Motion Under Federal Rule 12(c) and Contingent Motion to
Strike Portions of Dr. Joel F. Ferguson’s Expert Report (Doc. #251) is DENIED as
MOOT.

DONE this the 4th day of June, 2012.
/s/ Mark E. Fuller
UNITED STATES DISTRICT JUDGE

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