Open Innovation LLC v. Char-Broil et al
ORDER granting 39 Motion to Dismiss Complaint. Ordered by Judge Clay D. Land on 08/19/2011. (CGC)
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF GEORGIA
OPEN INNOVATION LLC,
CASE NO. 4:11-CV-16 (CDL)
O R D E R
35 U.S.C. § 292,
Defendants assert that Plaintiff‟s Complaint
fails to state a claim on which relief can be granted.
Motion to Dismiss (ECF No. 39).
MOTION TO DISMISS STANDARD
When considering a 12(b)(6) motion to dismiss, the Court
exhibits attached thereto.
Bell Atl. Corp. v. Twombly, 550 U.S.
544, 556 (2007); Wilchombe v. TeeVee Toons, Inc., 555 F.3d 949,
complaint must contain sufficient factual matter, accepted as
true, to „state a claim to relief that is plausible on its
(quoting Twombly, 550 U.S. at 570).
The complaint must include
sufficient factual allegations “to raise a right to relief above
formulaic recitation of the elements of a cause of action will
Although the complaint must contain factual
allegations that “raise a reasonable expectation that discovery
will reveal evidence of” the plaintiff=s claims, id. at 556,
complaint simply because „it strikes a savvy judge that actual
proof of those facts is improbable,‟” Watts v. Fla. Int’l Univ.,
495 F.3d 1289, 1295 (11th Cir. 2007) (quoting Twombly, 550 U.S.
“consumer barbeque grills and grill accessories.”
9, 15, ECF No. 1.
Compl. ¶¶ 7,
Defendants “include within the packaging of
each cooking product” a product guide, which “identifies the
associated product model and lists a number of patents.”
Each product guide is also available in digital form on
Id. ¶ 17.
Each product guide states that
the associated grill product is protected under “one or more” of
approximately 100 U.S. patents.
Plaintiff alleges that nearly
half of those patents are either expired or inapplicable to the
Id. ¶¶ 18-19, 123-24.
For example, Plaintiff alleges that the product guide for
the grill with product number 463250510 lists U.S. Patent Nos.
6,640,803, D456,222, and D456,223—as well as a host of other
patents—in the patent notice.
Id. ¶ 18.
fireplace” and not a grill (id. ¶¶ 26-27) and that U.S. Patent
Nos. D456,222 and D456,223 claim ornamental designs of a “Fork
with Ergonomic Handle” and a “Spatula with Ergonomic Handle,”
(id. ¶¶ 69-72, 126).
Plaintiff also alleges that
Defendants lacked a reasonable basis to believe that all of the
listed patents applied to the grill products and that “[t]here
can be no innocent explanation of Defendants[‟] mismarking given
irrelevance of the patents so-mismarked.”
Id. ¶¶ 125-27.
Plaintiff contends that Defendants engaged in mismarking
under 35 U.S.C. § 292 by “(1) causing a digital copy of the
periodically updated product guides to be publicly accessible
via the Char-Broil website at www.charbroil.com since at least
periodically updated product guides to be included within the
Id. ¶ 137.
Plaintiff does not allege that
directly on any of the grill models listed in the Complaint.
Defendants are large and sophisticated companies that regularly
approved, and/or ratified Char-Broil‟s practice of marking its
patent numbers” and “knew that the inapplicable patents do not
cover and could not be read to cover the Char-Broil Grills.”
Id. ¶¶ 133-34.
Complaint does not satisfy the heightened pleading requirement
of Federal Rule of Civil Procedure 9(b).
marking based on the marking in the product guides.
Defendants maitain that even if marking in the product guides
because Plaintiff did not sufficiently allege that Defendants
had intent to deceive.
As discussed in more detail below, the
intent to deceive.
Accordingly, the Court need not address
Defendants‟ other bases for dismissal.
Under 25 U.S.C. § 292(a), “[w]hoever marks upon, or affixes
to, or uses in advertising in connection with any unpatented
article, the word “patent” or any word or number importing that
the same is patented for the purpose of deceiving the public
. . .
offense.” 35 U.S.C. § 292(a).
“The two elements of a § 292
false marking claim are (1) marking an unpatented article and
(2) intent to deceive the public.” Forest Grp., Inc. v. Bon Tool
Co., 590 F.3d 1295, 1300 (Fed. Cir. 2009).
Even if the Court
were to assume that the Complaint adequately alleges “marking an
unpatented article,” the Complaint does not adequately allege
“intent to deceive the public.”
In the false marking context, “the combination of a false
statement and knowledge that the statement was false creates a
Pequignot v. Solo Cup Co., 608 F.3d 1356, 1362-63 (Fed. Cir.
2010); accord Clontech Labs., Inc. v. Invitrogen Corp., 406 F.3d
1347, 1352 (Fed. Cir. 2005).
Knowledge of the falsity can be
proved by showing “that the party accused of false marking did
not have a reasonable belief that the articles were properly
Clontech, 406 F.3d at 1353.
Although “knowledge” and
“intent” “may be averred generally and . . . a plaintiff may
pleadings must “allege sufficient underlying facts from which a
court may reasonably infer that a party acted with the requisite
state of mind.”
In re BP Lubricants USA Inc., 637 F.3d 1307,
1311 (Fed. Cir. 2011) (internal quotation marks omitted).
presumption approved in Pequignot and Clontech, but Plaintiff
has not alleged a false statement.
The Complaint alleges that
the patent notice in the product guides states that the grill is
covered under “one or more” of the listed patents.
inapplicable but makes no allegation that the other patents do
Complaint does not allege that it is a false statement to say
that “one or more” of the listed patents protects the grill in
Pequignot, the defendant‟s patent notice stated: “This product
may be covered by one or more U.S. or foreign pending or issued
Pequignot, 608 F.3d at 1359.
Some of the products so marked
were not covered by any patent, but others were.
noted that “it is highly questionable whether such a statement
could be made „for the purpose of deceiving the public,‟ when
the public would not reasonably be deceived into believing that
the products were definitely covered by a patent.”
Id. at 1365.
Likewise, here, the public would not reasonably be deceived into
believing that the grills were definitely covered by all of the
For these reasons, the Court concludes that the
Complaint does not sufficiently allege intent to deceive.
For the reasons set forth above, Defendants‟ renewed Motion
to Dismiss (ECF No. 39) is granted.
IT IS SO ORDERED, this 19th day of August, 2011.
S/Clay D. Land
CLAY D. LAND
UNITED STATES DISTRICT JUDGE
The intent to deceive allegations would prove to be even more dubious
at the summary judgment stage if Defendants‟ contention that they
physically mark their grills with applicable patent numbers, in
accordance with 35 U.S.C. § 287(a), proved to be true. However, the
Court acknowledges that consideration of this argument at the motion
to dismiss stage is not appropriate.
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