Yufa v. Particle Measuring Systems, Inc.

Filing 53

ORDER by Judge Hamilton granting in part and denying in part 47 Motion to Dismiss (pjhlc2, COURT STAFF) (Filed on 5/7/2013)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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ALEKSANDR L. YUFA,
Plaintiff,

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v.

No. C 09-1388 PJH
ORDER RE MOTION TO DISMISS

PARTICLE MEASURING SYSTEMS,
INC.,

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For the Northern District of California

United States District Court

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Defendant.
_______________________________/
Before the court is defendant Particle System Inc.’s motion to dismiss for failure to

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state a claim. Defendant argues that claims 1-5 of U.S. Patent No. 6,346,983 (“the ’983

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patent” or the “patent-in-suit”) were cancelled during reexamination, and are no longer valid

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and enforceable. To the extent that plaintiff’s complaint alleges infringement of these

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claims of the patent-in-suit, the motion to dismiss is GRANTED.

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However, defendant also argues that plaintiff should be precluded from asserting a

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cause of action for infringement of claims 6-8 of the patent-in-suit, which do remain valid

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and enforceable. Essentially, defendant argues that plaintiff should have alleged

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infringement of those claims when he filed his complaint, and further argues that its

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accused products do not infringe because “claims 6, 7, and 8 do not relate to methods or

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an apparatus using ‘wireless communication.’” Dkt. 49 at 2. As to the first argument, the

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court notes that plaintiff was not obligated to identify any asserted claims until the serving of

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infringement contentions, which has not yet occurred. Thus, even though plaintiff’s

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complaint specifically names claims 1-5 as being infringed, he did not waive the right to

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assert additional claims in his infringement contentions. Second, to the extent that

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defendant argues that its products do not infringe, those arguments are premature at the

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pleading stage of the case, and will likely continue to be premature until after the claims

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have been construed. Finally, to the extent that plaintiff delayed in seeking to amend his

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complaint, such delay is attributable to the fact that this case has been stayed since August

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2009, and not to any dilatory action on the part of plaintiff. For those reasons, the court

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DENIES defendant’s motion to the extent that it seeks dismissal of any claim of

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infringement as to claims 6-8 of the patent-in-suit. That said, however, the first amended

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complaint (“FAC”) is hardly a model of clarity and while it does specifically identify

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cancelled claims 1-5, it only vaguely refers to “other claims” that might also be infringed.

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Additionally, although the complaint is styled as one for patent infringement, it is not clear

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whether plaintiff is also attempting to assert some sort of common law cause of actions as

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For the Northern District of California

United States District Court

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well.
Accordingly, the court ORDERS plaintiff to file a second amended complaint (“SAC”)

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in accordance with this order. The SAC shall clearly delineate and number all asserted

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causes of action in separate paragraphs (e.g., “first cause of action,” “second cause of

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action,” etc.), and must allege facts supporting each cause of action. No new parties may

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be added without leave of court. Additionally, although identification of asserted claims

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would normally wait until the preparation of infringement contentions, in view of the

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confusion presented by the FAC and the delay already incurred in this case, the SAC shall

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identify the claims currently being asserted by plaintiff as infringed by defendant. The SAC

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shall be filed by June 7, 2013 and defendant shall have until June 28, 2013 to answer or

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otherwise respond to the complaint.

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IT IS SO ORDERED.

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Dated: May 7, 2013
______________________________
PHYLLIS J. HAMILTON
United States District Judge

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