Open Innovation LLC v. Char-Broil et al
Filing
43
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
COLUMBUS DIVISION
OPEN INNOVATION LLC,
*
Plaintiff,
*
vs.
*
CASE NO. 4:11-CV-16 (CDL)
CHAR-BROIL,
BRADLEY CO.,
LLC,
and
W.C. *
*
Defendants.
*
O R D E R
Plaintiff
brought
this
qui
tam
35 U.S.C. § 292,
alleging
that
patent marking.
Defendants assert that Plaintiff‟s Complaint
Defendants
action
engaged
under
in
false
fails to state a claim on which relief can be granted.
Court
agrees
with
Defendants
and
grants
Defendants‟
The
renewed
Motion to Dismiss (ECF No. 39).
MOTION TO DISMISS STANDARD
When considering a 12(b)(6) motion to dismiss, the Court
must
accept
complaint
as
and
true
limit
all
facts
its
consideration
exhibits attached thereto.
set
forth
to
in
the
the
plaintiff=s
pleadings
and
Bell Atl. Corp. v. Twombly, 550 U.S.
544, 556 (2007); Wilchombe v. TeeVee Toons, Inc., 555 F.3d 949,
959
(11th
Cir.
2009).
“To
survive
a
motion
to
dismiss,
a
complaint must contain sufficient factual matter, accepted as
true, to „state a claim to relief that is plausible on its
face.‟”
Ashcroft
v.
Iqbal,
129
S.
(quoting Twombly, 550 U.S. at 570).
Ct.
1937,
1949
(2009)
The complaint must include
sufficient factual allegations “to raise a right to relief above
the
speculative
level.”
Twombly,
550
U.S.
at
555.
“[A]
formulaic recitation of the elements of a cause of action will
not do[.]”
Id.
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,
“Rule
12(b)(6)
does
not
permit
dismissal
of
a
well-pleaded
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.
at 556).
FACTUAL ALLEGATIONS
Defendants
sell
“outdoor
produce,
cooking
manufacture,
products
and
market,
distribute,
accessories,”
“consumer barbeque grills and grill accessories.”
9, 15, ECF No. 1.
and
including
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.”
¶ 16.
Id.
Each product guide is also available in digital form on
Char-Broil‟s website.
Id. ¶ 17.
Each product guide states that
the associated grill product is protected under “one or more” of
approximately 100 U.S. patents.
2
Plaintiff alleges that nearly
half of those patents are either expired or inapplicable to the
grill products.
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.
alleges
6,640,803
that
U.S.
Patent
No.
Plaintiff further
claims
an
“outdoor
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,”
respectively.
(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
the
numerous
instances
of
mismarking
.
irrelevance of the patents so-mismarked.”
.
.
and
the
obvious
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
January
2001,
and
(2)
causing
a
physical
copy
of
the
periodically updated product guides to be included within the
packaging
of
each
September 2008.”
of
the
Char-Broil
Id. ¶ 137.
Grills
since
at
least
Plaintiff does not allege that
3
Defendants
fixed
an
inapplicable
or
expired
patent
number
directly on any of the grill models listed in the Complaint.
Finally,
Plaintiff
alleges:
“On
information
and
belief,
Defendants are large and sophisticated companies that regularly
employ
and
retain
multiple
individuals
familiar
with
of
U.S.C. §
292.”
¶
Plaintiff
requirements
alleges,
“on
Defendants‟
“either
35
information
employees
aware
of,
and
were,
created,
by
Id.
belief,”
128.
that
several
virtue
of
their
participated
in
the
the
of
positions,
creation
of,
approved, and/or ratified Char-Broil‟s practice of marking its
Char-Broil
Grills
with
numerous
expired
and/or
inapplicable
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.
DISCUSSION
Defendants
three
reasons.
contend
First,
that
Plaintiff‟s
Defendants
Complaint
assert
that
fails
for
Plaintiff‟s
Complaint does not satisfy the heightened pleading requirement
of Federal Rule of Civil Procedure 9(b).
argue
that
Plaintiff
cannot
state
a
claim
Second, Defendants
for
false
marking based on the marking in the product guides.
patent
Third,
Defendants maitain that even if marking in the product guides
can
constitute
false
patent
marking,
Plaintiff‟s
claims
fail
because Plaintiff did not sufficiently allege that Defendants
4
had intent to deceive.
Court
finds
that
As discussed in more detail below, the
Plaintiff
intent to deceive.
failed
to
allege
sufficiently
an
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
. . .
[s]hall
be
fined
not
more
offense.” 35 U.S.C. § 292(a).
than
$500
for
every
such
“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
rebuttable
presumption
of
intent
to
deceive
the
public.”
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
5
marked.”
Clontech, 406 F.3d at 1353.
Although “knowledge” and
“intent” “may be averred generally and . . . a plaintiff may
plead
upon
information
and
belief
under
Rule
9(b),”
the
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).
Here,
Plaintiff
attempts
to
travel
under
the
rebuttable
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.
more
than
Plaintiff
100
U.S.
alleges
patents
that
listed
in
approximately
each
There are
patent
forty-seven
of
notice.
them
are
inapplicable but makes no allegation that the other patents do
not
actually
or
potentially
apply
to
the
grills.
So,
the
Complaint does not allege that it is a false statement to say
that “one or more” of the listed patents protects the grill in
question.
The
Court
finds
Pequignot
to
be
instructive
here.
In
Pequignot, the defendant‟s patent notice stated: “This product
may be covered by one or more U.S. or foreign pending or issued
patents.
For
details,
contact
Pequignot, 608 F.3d at 1359.
[the
defendant‟s
website].”
Some of the products so marked
6
were not covered by any patent, but others were.
The court
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
listed patents.1
For these reasons, the Court concludes that the
Complaint does not sufficiently allege intent to deceive.
CONCLUSION
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
1
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.
7
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