Telebrands Corp. v. 1ByOne Products Inc.
MEMORANDUM ORDER- denying as moot 9 MOTION to Dismiss. Signed by Judge Sherry R. Fallon on 11/21/2017. (lih)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
lBYONE PRODUCTS INC.,
Civil Action No. 17-997-JFB-SRF
At Wilmington this 21st day of November, 2017, the court having considered the
parties' briefing on defendant 1ByOne Products Inc.' s (" 1ByOne") motion to dismiss for failure
to state a claim pursuant to Federal Rule of Civil Procedure 12(b)(6) (D.I. 9; D.I. 10; D.I. 11; D.I.
13; D.I. 15), IT IS HEREBY ORDERED THAT the motion to dismiss (D.I. 9) is denied as moot
for the reasons set forth below.
1. Background. Plaintiff Telebrands Corp. ("Telebrands") filed this action for patent
infringement on July 21, 2017, alleging infringement of U.S. Patent Nos. 9,546,775 ("the '775
patent") and 9,562,673 ("the '673 patent") (together, the "patents-in-suit"). (D.I. 1) Telebrands
is a direct marketing company which markets and sells a variety of consumer products through
direct response advertising and national retail stores. (Id
7) Telebrands developed a line of
decorative lighting products marketed and sold under the trademark Star Shower®, which it
introduced during the 2015-2016 holiday season. (Id
8) Telebrands subsequently
introduced the Star Shower Motion™ product, which introduced the ability to move the points of
light in patterns, and the Star Shower Patriot™ product, which introduced new colored lights.
(Id) The paten~s-in-suit are assigned to Telebrands and cover Telebrands' Star Shower®
technology. (Id at ifif 11-14)
2. Telebrands accuses lByOne of making, using selling, offering for sale, and/or
importing into the United States infringing decorative lighting products under the brand Garden
Laser Light Motion and titled "lByOne Outdoor Laser Lights for Christmas" and/or "lByOne
Magical Laser Light with Green Christmas and Red Star Patterns" (the "Accused Product"). (Id
at if 15) Specifically, Telebrands alleges that the Accused Product infringes claim 1 of the '775
patent because it includes a first laser light source which generates first light, a second laser light
source which generates a second light, and a motion assembly which includes an articulating
optical element disposed in the path of the light generated by the first and second laser light
sources and a motor. (Id at if 16) Telebrands contends that the Accused Product infringes claim
1 of the '673 patent because it includes a first housing coupled with screws to a second housing
to form a recess designed to receive and hold a tube-shaped geared member in a substantially
fixed position. (Id at if 17)
3. lByOne filed the pending motion to dismiss on August 15, 2017. (D.I. 9) On
November 17, 2017, while its motion to dismiss was still pending before the court, lByOne filed
an answer, affirmative defenses, and counterclaims. (D.I. 16) By way of its counterclaims,
lByOne seeks declaratory reliefregarding the invalidity and non-infringement of the patents-insuit as well as U.S. Patent No. 9,752,761 ("the '761 patent"), which issued on September 5,
2017. (Id at if 19)
4. On May 11, 2017, Telebrands filed a lawsuit against lByOne in the United States
District Court for the District of New Jersey ("the New Jersey Action") alleging that the Accused
Product infringes the '775 patent and the '673 patent. (Id at if 20) lByOne responded to the
complaint by filing a motion to dismiss for improper venue pursuant to Federal Rule of Civil
Procedure 12(b)(3 ), and a motion to dismiss for failure to satisfy the "plausibility" pleading
requirement under Federal Rule of Civil Procedure 12(b)(6). (D.I. 10 at 1) On July 21, 2017,
Telebrands agreed to voluntarily dismiss the New Jersey Action without prejudice. 1 (D.I. 11, Ex.
2) The court dismissed the New Jersey Action on July 25, 2017. (D.I. 11, Ex. 3)
5. Legal Standard. Rule 12(b)(6) permits a party to move to dismiss a complaint for
failure to state a claim upon which relief can be granted. Fed. R. Civ. P. 12(b)(6). When
considering a Rule 12(b)(6) motion to dismiss, the court must accept as true all factual
allegations in the complaint and view them in the light most favorable to the plaintiff. Umland v.
Planco Fin. Servs., 542 F.3d 59, 64 (3d Cir. 2008). To state a claim upon which relief can b~
granted pursuant to Rule 12(b)(6), a complaint must contain a "short and plain statement of the
claim showing that the pleader is entitled to relief." Fed. R. Civ. P. 8(a)(2). Although detailed
factual allegations are not required, the complaint must set forth sufficient factual matter,
accepted as true, to "state a claim to relief that is plausible on its face." Bell Atl. Corp. v.
Generally, a district court ruling on a motion to dismiss cannot consider matters outside of the
pleadings. In re Burlington Coat Factory Sec. Litig., 114 F .3d 1410, 1426 (3d-Cir. 1997).
However, courts may consider documents that are "incorporated into the complaint by reference,
and matters of which a court may take judicial notice." Tellabs, Inc. v. Makor Issues & Rights,
Ltd, 551 U.S. 308, 322 (2007). The court may take judicial notice of a fact "that is not subject to
reasonable dispute because it (1) is generally known within the trial court's territorial
jurisdiction; or (2) can be accurately and readily determined from sources whose accuracy cannot
reasonably be questioned." Fed. R. Evid. 201(b). In accordance with this authority, a court may
take judicial notice of public records. City ofPittsburgh v. W. Penn Power Co., 147 F.3d 256,
259 (3d Cir. 1998). Consequently, this court may take judicial notice of publicly-available
documents filed in the New Jer~ey Action, submitted by lByOne. (D.I. 11, Exs. 1-3) Exhibit 4
is a copy of the complaint filed in the present action, and the court's permission is not required
for consideration of the pleading. Exhibit 5 contains email correspondence between the parties,
which was not incorporated into the complaint by reference and is not a public record. (D.I. 11,
Ex. 5) As such, the court denies 1ByOne' s request for consideration of Exhibit 5 at this stage of
Twombly, 550 U.S. 544, 570 (2007); see also Ashcroft v. Iqbal, 556 U.S. 662, 663 (2009). A
claim is facially plausible when the factual allegations allow the court to draw the reasonable
inference that the defendant is liable for the misconduct alleged. Iqbal, 556 U.S. at 663;
Twombly, 550 U.S. at 555-56.
6. Analysis. In view of the subsequent filing of its answer, affirmative defenses, and
counterclaims, lByOne's pending motion to dismiss is denied as moot. "A defendant is not
required to file an answer until [the] court disposes of the motion to dismiss." Smith v. Bank of
Am., NA., 2014 WL 897032, at *9 (M.D. Fla. Mar. 6, 2014) (citing Lockwoodv. Beasley, 211 F.
App'x 873, 876 (11th Cir. 2006)). When an answer is filed prior to the resolution of a motion to
dismiss, the motion to dismiss becomes moot. See Veltre v. Sliders Seas.ide Grill, Inc., 2016 WL
524658, at *1 (M.D. Fla. Feb. 10, 2016) (dismissing as moot a motion to dismiss when the
defendant filed an answer while a Report and Recommendation on the motion to dismiss was
pending). "A motion to dismiss challenges the sufficiency of the allegations within the
complaint; an answer admits or denies those allegations and raises any available affirmative
defenses." Briskv. City ofMiami Beach, Fla., 709 F. Supp. 1146, 1147 (S.D. Fla. 1989).
7. A Rule 12 motion is a response filed in lieu of an answer. In this instance, the motion
asserts pleading deficiencies, namely, that substantive details are lacking to show how the
Accused Product allegedly infringes the recited claims of the patents-in-suit. The very act of
answering the complaint defeats the argument that the complaint is too thin to provide adequate
notice of the claims and permit the defendant to respond in a meaningful way. Consequently,
1ByOne' s motion to dismiss is denied as moot.
8. Conclusion. In view of the foregoing analysis, lByOne's motion to dismiss (D.I. 9)
is denied as moot.
9. This Memorandum Order is filed pursuant to 28 U.S.C. § 636(b)(l)(A), Fed. R. Civ.
P. 72(a), and D. Del. LR 72.l(a)(2). The parties may serve and file specific written objections
within fourteen (14) days after being served with a copy of this Memorandum Order. Fed. R.
Civ. P. 72(a). The objections and responses to the objections are limited to ten (10) pages each.
10. The parties are directed to the court's Standing Order For Objections Filed Under
Fed. R. Civ. P. 72, dated October 9, 2013, a copy of which is available on the court's website,
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