Oakley, Inc. v. 5.11, Inc. et al

Filing 28

ORDER: The Motion to Dismiss filed by Defendants Wiley X, Inc. and 5.11, Inc. (Doc. 25 ) is denied. Signed by Judge William Q. Hayes on 10/29/2012. (mdc)

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1 2 3 4 5 6 7 UNITED STATES DISTRICT COURT 8 SOUTHERN DISTRICT OF CALIFORNIA 9 10 OAKLEY, INC., a Washington corporation, CASE NO. 11cv2173 WQH (CAB) ORDER 11 Plaintiff, 12 13 14 vs. 5.11, INC., a California corporation, and WILEY X, INC., a California corporation, 15 HAYES, Judge: 16 Defendant. The matter before the Court is the Motion to Dismiss Oakley’s Second Amended 17 Complaint filed by Defendants Wiley X, Inc. and 5.11, Inc. (ECF No. 25). 18 19 BACKGROUND On September 16, 2011, Plaintiff Oakley, Inc. (“Oakley”) initiated this action by filing 20 the Complaint for patent infringement. (ECF No. 1). On November 22, 2011, Oakley filed 21 an Amended Complaint. (ECF No. 11). 22 On April 17, 2012, this Court granted a motion to dismiss the amend complaint. (ECF 23 No. 19). The Court found that Oakley’s allegations that “eyewear” manufactured and sold by 24 the Defendants knowingly, intentionally and willfully infringes Oakley’s ownership rights in 25 the ‘949, D572, and D686 patents did “not provide Defendants with sufficient information 26 regarding the features or designs that allegedly infringe upon Oakley’s patents.” Id. at 5. 27 On July 9, 2012, Plaintiff Oakley filed a second amended complaint alleging that 28 Oakley has been engaged in the business of manufacturing and selling several lines of eyewear -1- 11cv2173 WQH (CAB) 1 since at least 1985. (ECF No. 24 at ¶ 8). Oakley currently holds two patents Patent No. 2 D543,572 (“the D572 patent”), entitled “Eyeglass”; and Patent No. D384,686 (“the D686 3 patent”), entitled “Eyeglass Front.” (ECF No. 24 at ¶¶ 9, 10). The second amended complaint 4 alleges that “Defendants have received written notice of Oakley’s proprietary rights in the D 5 572 and D868 patents as early as July 25, 2011” and that “Oakley has provided constructive 6 notice of its patent rights to the public by causing its patents to be placed on patented products 7 and/or packaging.” (ECF No. 24 at ¶¶ 11, 12, 13). 8 The second amended complaint alleges that “Defendants manufacture, use, sell, offer 9 for sale and/or import into the United States eyewear that infringe Oakley’s intellectual 10 property rights” specifically identifying the claim that the Defendants Deflect sunglasses 11 infringe the D572 patent and that the Defendants’ Ascend sunglasses infringe the D686 patent. 12 (ECF No. 24 at ¶¶ 15, 17). Oakley alleges claims for willful and intentional infringement of 13 each of its patents. 14 15 CONTENTIONS OF PARTIES Defendants contend that the Court should dismiss the second amended complaint 16 pursuant to Rule 12(b)(6) on the grounds that Oakley fails to allege facts to support willful 17 infringement. Defendants contend that the second amended complaint fails to allege facts 18 sufficient to establish that Defendants acted with objective recklessness or had the subjective 19 intent to infringe. Oakley contends that the allegations in the second amended complaint 20 satisfy the pleading requirements. Oakley asserts that the complaint identifies the specific 21 products alleged to infringe and sufficiently alleges Defendants’ knowledge of the issued 22 patents before the action was filed. 23 24 APPLICABLE STANDARD Federal Rule of Civil Procedure 12(b)(6) permits dismissal for “failure to state a claim 25 upon which relief can be granted.” Fed. R. Civ. P. 12(b)(6). Federal Rule of Civil Procedure 26 8(a) provides: “A pleading that states a claim for relief must contain . . . a short and plain 27 statement of the claim showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). 28 Dismissal under Rule 12(b)(6) is appropriate where the complaint lacks a cognizable legal -2- 11cv2173 WQH (CAB) 1 theory or sufficient facts to support a cognizable legal theory. See Balistreri v. Pacifica Police 2 Dep’t, 901 F.2d 696, 699 (9th Cir. 1990). 3 When considering a motion to dismiss, a court must accept as true all “well-pleaded 4 factual allegations.” Ashcroft v. Iqbal, 556 U.S. 662, 129 S. Ct. 1937, 1950 (2009). The 5 complaint must be read in the light most favorable to the nonmoving party. Sprewell v. Golden 6 State Warriors, 266 F.3d 979, 988 (9th Cir. 2001). However, the court need not “accept as true 7 unreasonable inferences or conclusory legal allegations.” Id. RULING OF THE COURT 8 9 “[T]o establish willful infringement, a patentee must show by clear and convincing 10 evidence that the infringer acted despite an objectively high likelihood that its actions 11 constituted infringement of a valid patent.” In re Seagate Technology, Inc., 497 F.3d 1360, 12 1371 (Fed. Cir. 2007). However, the issue at this stage in the proceedings is limited to the 13 sufficiency of the pleadings. The second amended complaint identifies the specific products 14 alleged to infringe and alleges that the Defendants’ had written notice of the issued patents 15 before the action was filed. (ECF No. 24 at ¶¶ 11, 12, 13, 15, 17). The Court concludes that 16 second amended complaint sufficiently alleges willful infringement. See Sentry Prot. Prods. 17 Inc. v. Eagle Mfg. Co., 400 F.3d 910, 918 (Fed. Cir. 2005) (“Sentry’s pleading that the 18 ‘infringements have been willful and with full knowledge of the ... patents’ was sufficient”); 19 Jardin v. Datallegro, Inc., 2009 WL 186194, at *7-8 (S. D. Cal. Jan.20, 2009) (Plaintiff 20 alleged sufficient facts to state a plausible claim for willful infringement where “plaintiff 21 identifies the specific accused product... and alleges that defendants had actual knowledge of 22 the patents in suits.”). CONCLUSION 23 24 IT IS HEREBY ORDERED that the Motion to Dismiss filed by Defendants Wiley X, 25 Inc. and 5.11, Inc. (ECF No. 25) is denied. 26 DATED: October 29, 2012 27 28 WILLIAM Q. HAYES United States District Judge -3- 11cv2173 WQH (CAB)

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