Lexmark International Inc. v. Universal Imaging Industries, LLC

Filing 62

ORDER denying 56 Motion to Dismiss and directing parties to file joint case management and discovery schedule by 7/17/2020. Signed by Judge William F. Jung on 7/6/2020. (CCB)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
LEXMARK INTERNATIONAL INC.,
Plaintiff,
v.

Case No: 8:18-cv-01047-T-02AEP

UNIVERSAL IMAGING INDUSTRIES, LLC
Defendant.
_____________________________________/
ORDER DENYING
DEFENDANT’S MOTION TO DISMISS
This matter comes to the Court following oral arguments on Defendant’s Fed.
R. Civ. P. 12(b)(6) Motion to Dismiss, Dkt. 56, Plaintiff’s Amended Complaint,
Dkt. 36, and Plaintiff’s Response in Opposition, Dkt. 57. With the benefit of full
briefing, the Court denies the Defendant’s Motion to Dismiss.
Background
Plaintiff alleges against Defendant ten counts of patent infringement under 35
U.S.C. §271. Dkt. 36 at 24–42. Defendant challenges the validity of two of the ten
patents, U.S. Patent Nos. 7,844,786 and 8,966,193, which underlie Plaintiff’s
Amended Complaint. Dkt. 56 at 5–6. Defendant additionally argues that Plaintiff’s
Amended Complaint fails to allege sufficient facts to state a plausible claim for

indirect or willful infringement and that Plaintiff’s Amended Complaint is an
impermissible shotgun pleading. Id. at 14–15.
Legal Standard
To survive a Fed. R. Civ. P. 12(b)(6) motion to dismiss, the plaintiff must
plead sufficient facts to state a claim that is “plausible on its face.” Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009) (citation omitted). In considering the motion, the
Court must accept all factual allegations of the complaint as true and construe them
in the light most favorable to the plaintiff. Pielage v. McConnell, 516 F.3d 1282,
1284 (11th Cir. 2008) (citation omitted). Finally, the Court should limit its
“consideration to the well-pleaded factual allegations, documents central to or
referenced in the complaint, and matters judicially noticed.” La Grasta v. First
Union Sec., Inc., 358 F.3d 840, 845 (11th Cir. 2004) (citations omitted).
Discussion
Defendant first argues that U.S. Patent Nos. 7,844,786 and 8,966,193 are
invalid and therefore incapable of serving as a basis for Plaintiff’s Amended
Complaint. Dkt. 56 at 4–5.
As a preliminary matter, this Court avoids resolving patent eligibility
disputes at the motion to dismiss stage absent claim construction unless “there are
no factual allegations that, taken as true, prevent resolving the eligibility question
as a matter of law.” Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d
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1121, 1125 (Fed. Cir. 2018). Plaintiff states factual allegations which, taken as
true, prevent the Court from resolving eligibility issues under 35 U.S.C. § 101 as a
matter of law. Dkt. 36 at 10–24. Accordingly, dismissal is inappropriate on these
grounds.
Even if the court were to consider patent eligibility, Plaintiff’s patents are
afforded a presumption of validity under 35 U.S.C. § 282. Any invalidity defense,
such as the one here presented by Defendant, must be “proved by clear and
convincing evidence.” Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95 (2011).
Defendant has not carried this burden at this early stage. An extensive two-part
Alice analysis is therefore unnecessary at this point. See Alice Corp. Pty. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
Next, Defendant argues that Plaintiff fails to allege sufficient facts to state a
plausible claim for indirect or willful infringement. Dkt. 56 at 14. Plaintiff’s
Amended Complaint expressly alleges that Defendant had knowledge of all of the
relevant patents. Dkt. 36 at 27–29. Moreover, Plaintiff’s Amended Complaint pled
facts from which one could conclude that Defendant knew of Plaintiff’s patents prior
to the filing of this action. Id. at 17–19; See, e.g., Lighting Science Group Corp. v.
Cree, Inc., No. 6:13-cv-587-Orl-37GJK, 2013 WL 12155497, at *1 (M.D. Fla. July
22, 2013).

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Finally, Plaintiff’s pleading is not a shotgun pleading as alleged by
Defendant’s Motion to Dismiss. Under Fed. R. Civ. P. 10(c), it is permissible to
incorporate background allegations into the counts of a complaint. Here, Plaintiff
has done so without causing substantial confusion. See Magluta v. Samples, 256
F.3d 1282, 1284 (11th Cir. 2001).
The Court therefore denies Defendant’s Motion to Dismiss, Dkt. 56.
Conclusion
The Court denies Defendant’s Motion to Dismiss, Dkt. 56. The parties should
submit a joint case management and discovery schedule no later than July 17, 2020.
Any disagreements therein should be noted.

DONE AND ORDERED at Tampa, Florida, on July 6, 2020.
/s/ William F. Jung
WILLIAM F. JUNG
UNITED STATES DISTRICT JUDGE
COPIES FURNISHED TO:
Counsel of record

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