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