Swinford v. 360 Booth Inc. et al

Filing 86

ORDER granting in part and denying in part Defendants' 61 Motion to Dismiss. The 59 Second Amended Complaint is DISMISSED without prejudice and Plaintiff is granted leave to file a Third Amended Complaint, if warranted, on or before December 9, 2022, in accordance with the court's instructions at the November 16, 2022 hearing and this order. Signed by Magistrate Judge Julie S. Sneed on November 21, 2022. (DD)

Case 8:21-cv-02993-MSS-JSS Document 86 Filed 11/21/22 Page 1 of 6 PageID 3481

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
STEPHEN M. SWINFORD,
Plaintiff,
v.

Case No: 8:21-cv-2993-MSS-JSS

360 BOOTH INC. and JAY G.
SMITHWECK,
Defendants.
___________________________________/
ORDER
Defendants move to dismiss Plaintiff’s Second Amended Complaint (Dkt. 59)
with prejudice pursuant to Federal Rules of Civil Procedure 12(b)(6) and 15. (Motion,
Dkt. 61.) Plaintiff opposes the Motion. (Dkt. 64.) On November 16, 2022, the court
held a hearing on the Motion, along with several other pending motions. (Dkt. 81.)
Upon consideration and for the reasons stated during the hearing, Defendants’ Motion
to Dismiss (Dkt. 59) is granted in part and denied in part.
BACKGROUND
Plaintiff sued Defendant for patent infringement on December 27, 2021. (Dkt.
1.) After Defendants moved to dismiss the initial complaint (Dkt. 19), Plaintiff filed
an amended complaint on February 20, 2022. (Dkt. 20.) Defendants then moved to
dismiss Plaintiff’s Amended Complaint (Dkt. 23), and Plaintiff opposed the motion
(Dkt. 24).

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On July 6, 2022, the court held a hearing on Defendants’ Motion to Dismiss the
Amended Complaint. (Dkt. 54.) During the hearing, Plaintiff agreed to dismiss the
Amended Complaint and to file a second amended complaint remedying certain
defects identified by Defendants. See (Dkt. 56.) Plaintiff thereafter filed the Second
Amended Complaint on July 20, 2022. (Dkt. 59.)
With the instant Motion, Defendants move to dismiss the Second Amended
Complaint with prejudice. (Dkt. 61.) Defendants argue that dismissal is warranted
because the Second Amended Complaint violates the court’s order (Dkt. 56) by
containing allegations of literal infringement by Defendants’ one-door product and
because the Second Amended Complaint is a shotgun pleading.

(Id. at 2–6.)

Defendants also argue that the Second Amended Complaint fails to state a claim
pursuant to Federal Rule of Civil Procedure 12(b)(6) because (1) it fails to adequately
plead indirect infringement by Defendants’ two-door product, (2) infringement under
the doctrine of equivalents by Defendants’ one-door product is barred by estoppel, (3)
the remaining allegations against Defendants’ two-door product are insufficient, and
(4) the allegations against Defendant Smithweck in his individual capacity are
insufficient. (Id. at 7–24.)
ANALYSIS
A. Plaintiff’s Allegations of Literal Infringement by Defendants’ One-Door
Product
At the hearing on the Motion, Plaintiff’s Counsel represented that Plaintiff is
not pursuing claims of literal infringement by Defendants’ one-door product of any of
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the patents-in-suit: U.S. Patent Nos. 9,438,864 (the 864 Patent), 8,830,320 (the 320
Patent), and 8,830,321 (the 321 Patent). 1 However, Plaintiff’s counsel acknowledged
that the Second Amended Complaint contains certain allegations of literal
infringement of Plaintiff’s patents by Defendants’ one-door product. See, e.g., (Dkt. 59
¶¶ 12, 30.)
Based on Plaintiff’s Counsel’s representations, Plaintiff’s allegations of literal
infringement of each of the patents-in-suit by Defendants’ one-door product are
therefore dismissed with prejudice. Such allegations are not to be included in any
forthcoming third amended complaint.
B. Shotgun Pleading
The Eleventh Circuit has identified several categories of “shotgun pleadings,”
including, as relevant here, a complaint that fails to separate into a different count each
cause of action or claim for relief. See Weiland v. Palm Breach Cnty. Sheriff’s Office, 792
F.3d 1313, 1322–23 (11th Cir. 2015); Ledford v. Peeples, 657 F.3d 1222, 1239 (11th Cir.
2011) (finding shotgun pleading where complaint “lumps multiple claims together in
one count”).

Based on its understanding of Plaintiff’s Counsel’s representations at the July 6, 2022 hearing, the
court had previously dismissed with prejudice Plaintiff’s allegations of literal infringement of each of
Plaintiff’s patents by Defendants’ one-door product. (Dkt. 56.) However, in his opposition to the
instant Motion, Plaintiff represents that he had intended to dismiss only his literal infringement claims
by Defendants’ one-door product as to one of Plaintiff’s patents. (Dkt. 64 at 2.) Nevertheless, Plaintiff
now states that he is not pursuing literal infringement as to each of the patents-in-suit by Defendants’
one-door product as evidenced by his Preliminary Infringement Contentions that do not assert such
infringement. (Id. (citing Dkt. 63).)
1

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Although Plaintiff argues that the Second Amended Complaint distinguishes
each count into separate paragraphs (Dkt. 64 at 3), each paragraph falls under the
general heading of infringement of the patents-in-suit pursuant to 35 U.S.C. § 271(a)–
(c) and the paragraphs all appear to incorporate the general descriptions of Defendant
Smithweck’s conduct, Plaintiff’s damages, and Defendants’ knowledge of Plaintiff’s
patents in paragraphs 50–53. See (Dkt. 59 ¶¶ 41–53.) Such pleading is insufficient to
satisfy Plaintiff’s obligation to separate each cause of action or claim for relief into a
different count. See, e.g., O.E. Wheel Distributors, LLC v. Mobile Hi-Tech Wheels, LLC,
No. 8:21-cv-2573-CEH-SPF, 2022 WL 2918028, at *5 (M.D. Fla. July 25, 2022)
(dismissing complaint for patent infringement as shotgun pleading “because it groups
multiple causes of action under the veil of a single count”) (collecting cases); Advanced
Screenworks, LLC v. Mosher, No. 2:19-cv-758-FtM-29MRM, 2020 WL 94562, at *2
(M.D. Fla. Jan. 8, 2020) (finding that the “combination of infringement claims into a
single count constitutes a shotgun pleading”).
In any forthcoming third amended complaint, Plaintiff is therefore directed to
use headers to number and delineate each count that asserts particular alleged
violations of Plaintiff’s patents as to each of Defendants’ products (e.g. COUNT ONE
– Direct Infringement of Plaintiff’s 864 Patent by Defendants’ Two-Door Product in
violation of 35 U.S.C. § 271(a) asserted against Defendant 360Booth, Inc. and Jay
Smithweck; COUNT TWO – Indirect Infringement of Plaintiff’s 320 Patent by
Defendants’ One-Door Product in violation of 35 U.S.C. § 271(c) asserted against
Defendant 360Booth, Inc.). Under each count alleged, Plaintiff should include or
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reference, the specific allegations in the third amended complaint that support the
count and the infringement theory asserted. These allegations should include, if
applicable, support for Plaintiff’s assertions of individual liability against Defendant
Smithweck, damages, and any other applicable remedy.
C. Defendants’ Remaining Arguments for Failure to State a Claim
Having dismissed Plaintiff’s Second Amended Complaint based on Plaintiff’s
counsel’s representations at the hearing, the court expresses no opinion as to the merits
of Defendants’ remaining arguments for dismissal pursuant to Federal Rule of Civil
Procedure 12(b)(6). Nonetheless, with the benefit of Defendants’ arguments, Plaintiff
is encouraged to review the Second Amended Complaint to remedy any potential
deficiencies in any forthcoming third amended complaint. See, e.g. Phonometrics, Inc. v.
Hosp. Franchise Sys., Inc., 203 F.3d 790, 794 (Fed. Cir. 2000) (outlining standards to
assert patent infringement to include alleging “ownership of the asserted patent, names
each individual defendant, cit[ing] the patent that is allegedly infringed, describ[ing]
the means by which the defendants allegedly infringe, and point[ing] to the specific
sections of the patent law invoked”); O.E. Wheel Distributors, LLC, 2022 WL 2918028,
at *7–10 (M.D. Fla. July 25, 2022) (dismissing complaint as shotgun pleading but
discussing standards necessary to plead direct and indirect infringement theories as
well as intentional, willful, and wanton infringement to find that complaint otherwise
satisfies Rule 12(b)(6)).
Accordingly,

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1. Defendants’ Motion to Dismiss Plaintiff’s Second Amended Complaint
for Patent Infringement (Dkt. 61) is GRANTED in part and DENIED
in part.
2. The Second Amended Complaint (Dkt. 59) is DISMISSED without
prejudice and Plaintiff is directed to file a third amended complaint, if
warranted, on or before December 9, 2022, in accordance with the court’s
instructions at the November 16, 2022 hearing and as discussed herein.
ORDERED in Tampa, Florida, on November 21, 2022.

Copies furnished to:
Counsel of Record

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