Oil-Dri Corporation of America v. Nestle Purina Petcare Company
Filing
105
MEMORANDUM Opinion and Order Signed by the Honorable Amy J. St. Eve on 3/31/2017:Mailed notice(kef, )
IN THE UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
OIL-DRI CORP. OF AMERICA,
)
)
Plaintiff/Counter-Defendant, )
)
v.
)
)
NESTLE PURINA PETCARE CO.,
)
)
Defendant/Counter-Plaintiff. )
No. 15-cv-1067
Hon. Amy J. St. Eve
MEMORANUM OPINION AND ORDER
AMY J. ST. EVE, District Court Judge:
Defendant Nestle Purina Petcare Co. (“Purina”) has moved pursuant to Federal Rule of
Civil Procedure 12(b)(6) to dismiss Plaintiff Oil-Dri Corporation of America’s (“Oil-Dri”)
patent-infringement action to the extent that it relies on certain claims in U.S. Patent No.
5,975,019 (’019 Patent) that include the limitation of an “organic clumping agent.” (R. 81 at 1.)1
For the following reasons, the Court grants Purina’s motion without prejudice.
BACKGROUND2
I.
The Patent-in-Suit
The ’019 Patent, entitled “Clumping Animal Litter,” was filed on August 19, 1997. (R.
77-1, ’019 Patent, 1.) The Abstract of the patent describes “[a] clumping animal litter utilizing
the interparticle interaction of a swelling clay, such as sodium bentonite, in combination with a
1
Purina’s motion also sought dismissal of Oil-Dri’s claim that Purina’s “lightweight” products infringe the ’019
Patent. (R. 81 at 1.) Oil-Dri withdrew this claim, so the Court need not consider it. (R. 91.)
2
The Court takes the facts presented in the Background from the complaint and presumes them as true for the
purpose of resolving the pending motion to dismiss under Rule 12(b)(6). See Teamsters Local Union No. 705 v.
Burlington N. Santa Fe, LLC, 741 F.3d 819, 823 (7th Cir. 2014); Alam v. Miller Brewing Co., 709 F.3d 662, 665–66
(7th Cir. 2013); see also Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007).
non-swelling clay material.” (Id.) Additionally, the patent’s abstract discloses that “[p]referably,
sixty percent (60%) by weight, or less, composition of sodium bentonite is used after the
judicious selection of particle size distribution such that the mean particle size of the nonswelling clay material is greater than the mean particle size of the sodium bentonite.” The
abstract further indicates that “an organic clumping agent, such as pregelatinized corn starch can
be combined with the sodium bentonite/clay mixture to enhance clumping properties.” (Id.)
The ’019 Patent has three independent claims. Claim 1 is:
A clumping animal litter comprising:
a. a particulate non-swelling clay having a predetermined mean
particle size no greater than about 4 millimeters; and
b. a particulate swelling clay having a predetermined mean particle
size no greater than about 2 millimeters, wherein the mean particle
size of the non-swelling clay material is greater than the mean
particle size of the swelling clay.
(Id. at col. 9:37–46.) Claim 21 is:
A clumping animal litter comprising:
a. a particulate non-swelling clay material in the amount of at most
about 60 percent by weight of the animal litter, the material having
a predetermined mean particle size;
b. a particulate swelling clay in the amount of at least about 40
percent by weight of the animal litter, the material having a
predetermined mean particle size, and wherein the mean particle
size of the non-swelling clay material is greater than the mean
particle size of the swelling clay;
c. an organic clumping agent in an amount within the range of about
0.25 percent by weight to about 6 percent by weight of the animal
litter; and
d. wherein the ratio of the mean particle size of the non-swelling
clay material to the mean particle size of the swelling clay is within
the range of more than about 1:1 to about 4:1.
2
(Id. at col. 10:32–49.) Finally, Claim 30 is:
A method for making a clumping animal litter comprising the steps
of:
a. combining a particulate non-swelling clay material with a suitable
particulate swelling clay to form a composition wherein the mean
particle size of the particulate non-swelling clay is greater than the
mean particle size of the particulate swelling clay;
b. mixing the composition to effect a substantially uniform
distribution of the two materials;
c. packaging a quantity of the mixed composition.
(Id. at col. 11:3–13.)
The dependent claims add various elements on top of the independent claims. Central to
the motion now before the Court, various claims contain the limitation that the claimed animal
litter or method for making animal litter include “an organic clumping agent.” (Id. at col. 10:10–
49, 62–65; col. 11:31–33; col. 12:33–9.) Claim 13, for example, is “[t]he animal litter of claim 1
and further comprising an organic clumping agent,” (id. at col. 10:10–11), and Claim 31 is “[t]he
method of claim 30 and further comprising the step of adding an organic clumping agent after
the step of combining,” (id. at col. 11:13–15).
II.
Oil-Dri’s Allegations
Oil-Dri initiated this lawsuit in February 2015. (R. 1.) In February 2017, Oil-Dri filed an
amended complaint. (R. 77.) In it, Oil-Dri alleges that Purina infringed and continues to
infringe the ’019 Patent with some of its “Tidy Cats” clumping cat litters, namely Instant Action;
Dual Power; 24/7 Performance; 4-in-1 Strength; Glade Tough Odor Solutions; Small Spaces;
Occasional Cleaning; Scoop for Multiple Cats; Power Blend; and Breathe Easy (the “Accused
Products”). (Id. at ¶¶ 7–8.) Specifically, Oil-Dri contends that the Accused Products infringe
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“various claims of the ’019 Patent, including but not limited to claims 1–4, 6–7, 9–11, 13, 16,
21–26, 30–32, and 35.” (Id. at ¶ 8.)
In its complaint, Oil-Dri makes specific allegations regarding infringement of Claim 1—a
claim that does not include the element of “an organic clumping agent.” (Id. at ¶ 9.) Oil-Dri,
however, does not make similar specific allegations about any other patent claims.
Oil-Dri contends that it is entitled to damages in the amount of a reasonable royalty,
treble damages due to willful infringement, a permanent injunction prohibiting further
infringement, and reasonable attorneys’ fees. (Id. at 5–6.)
LEGAL STANDARD
Even in patent cases, the Court looks to Seventh Circuit law for the standard governing
motions to dismiss under Rule 12(b)(6). See Lyda v. CBS Corp., 838 F.3d 1331, 1337 (Fed. Cir.
2016); see also Alfred E. Mann Found. for Sci. Res. v. Cochlear Corp., 841 F.3d 1334, 1346
(Fed. Cir. 2016). “A motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6)
challenges the viability of a complaint by arguing that it fails to state a claim upon which relief
may be granted.” Camasta v. Jos. A. Bank Clothiers, Inc., 761 F.3d 732, 736 (7th Cir. 2014).
Under Rule 8(a)(2), a complaint must include “a short and plain statement of the claim showing
that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). The short and plain statement under
Rule 8(a)(2) must “give the defendant fair notice of what the . . . claim is and the grounds upon
which it rests.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007) (quoting Conley v. Gibson,
355 U.S. 41, 47 (1957)). A plaintiff’s “[f]actual allegations must be enough to raise a right to
relief above the speculative level.” Id. Put differently, “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, 556 U.S. 662, 678 (2009) (quoting Twombly, 550 U.S. at 570). In determining the
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sufficiency of a complaint under the plausibility standard, courts must “accept all well-pleaded
facts as true and draw reasonable inferences in [a plaintiff’s] favor.” Roberts v. City of Chicago,
817 F.3d 561, 564 (7th Cir. 2016).3
Some of the facts the Court references come from exhibits attached to the complaint. The
Court may properly consider such attachments in ruling on a Rule 12(b)(6) motion to dismiss.
See Phillips v. Prudential Ins. Co. of Am., 714 F.3d 1017, 1019–20 (7th Cir. 2013); McWorthey
v. Tech. Ins. Co., No. 15-cv-5021, 2016 WL 4398063, at *3 n.3 (N.D. Ill. Aug. 18, 2016). When
the exhibits contradict the allegations, “the exhibits trump the allegations.” See Abcarian v.
McDonald, 617 F.3d 931, 933 (7th Cir. 2010); McWorthey, 2016 WL 4398063, at *3 n.3.
ANALYSIS
Since Oil-Dri withdrew its claims related to Purina’s “lightweight” products, Purina’s
only relevant argument is that “Oil-Dri’s Amended Complaint is devoid of any alleged facts—let
alone plausible facts—even suggesting that the accused Nestlé Purina products have an ‘organic
clumping agent’ as expressly required by Claims 13, 16, 31 & 35.”4 (R. 81 at 2.) Oil-Dri does
not dispute this, but instead argues that it need not plead any facts related to claims containing
the limitation of an organic clumping agent as long as it “provides factual support that a
3
The parties do not dispute that the familiar Twombly-Iqbal standard governs motions to dismiss patent
infringement claims under Rule 12(b)(6). The Court therefore applies that standard. The Court notes, however, that
in some cases, parties have disputed whether Form 18 and Rule 84 of the Federal Rules of Civil Procedure still have
any application in patent cases even though the form and rule were eliminated from the Federal Rules in 2015. See,
e.g., Sunrise Techs., Inc. v. Cimcon Lighting, Inc., No. 15-11545-NMG, 2016 WL 6902395, at *2 (D. Mass. Nov.
23, 2016). While one court has concluded that Form 18 still has some relevance to the sufficiency of a patent
infringement complaint, see Hologram USA, Inc. v. Pulse Evolution Corp., No. 2:14-cv-772-GMN-NJK, 2016 WL
199417 (D. Nev. Jan. 15, 2016), this Court agrees with the majority of courts that have concluded otherwise and
have applied Twombly and Iqbal, see, e.g., Cont’l Circuits LLC v. Intel Corp., No. CV16-2026 PHX DGC, 2017 WL
679116, at *3–4 (D. Ariz. Feb. 21, 2017) (collecting cases); Sunrise Techs., 2016 WL 6902395, at *2; RAH Color
Techs. LLC v. Ricoh USA Inc., 194 F. Supp. 3d 346, 352 (E.D. Pa. 2016) (collecting cases).
4
Other claims that Oil-Dri asserts include an “organic clumping agent.” (See, e.g., R. 77-1 at col. 10:43–45 (claim
21 includes “an organic clumping agent in an amount within the range of about 0.25 percent by weight to about 6
percent by weight of the animal litter”).) The Court’s ruling applies to all claims that include the limitation of an
organic clumping agent.
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defendant infringed on each limitation of a single claim of the patent.” (R. 96 at 2.) The Court
agrees with Purina.
“To prove infringement, the patentee must show that an accused product embodies all
limitations of the claim [that the patentee alleges the defendant infringed] either literally or by
the doctrine of equivalents.” Cephalon, Inc. v. Watson Pharm., Inc., 707 F.3d 1330, 1340 (Fed.
Cir. 2013); see also Profectus Tech. LLC v. Huawei Techs. Co., 823 F.3d 1375, 1382 (Fed. Cir.
2016) (“The infringement inquiry asks if an accused device contains every claim limitation or its
equivalent.”). “To establish literal infringement, every limitation set forth in a claim must be
found in an accused product, exactly.” Advanced Steel Recovery, LLC v. X-Body Equip., Inc.,
808 F.3d 1313, 1319 (Fed. Cir. 2015) (quoting Southwall Techs., Inc. v. Cardinal IG Co., 54
F.3d 1570, 1575 (Fed. Cir. 1995)). To show infringement under the doctrine of equivalents, the
patentee must show that the accused product “contains an equivalent for each limitation not
literally satisfied.” Wi-Lan, Inc. v. Apple, Inc., 811 F.3d 455, 463 (Fed. Cir. 2016). “An element
in the accused product is equivalent to a claimed element if the differences between the two
elements are ‘insubstantial’ to one of ordinary skill in the art.” Id.
Courts applying the Twombly-Iqbal standard to patent infringement claims have required
plaintiffs to set forth sufficient facts to plausibly allege that the accused product embodies every
limitation in a particular asserted claim. See, e.g., Scripps Res. Inst. v. Illumina, Inc., No. 16-cv661 JLS (BGS), 2016 WL 6834024, at *4 (S.D. Cal. Nov. 21, 2016); Atlas IP, LLC v. Exelon
Corp., 189 F. Supp. 3d 768, 775 (N.D. Ill. 2016); e.Digital Corp. v. iBaby Labs, Inc., No. 15-cv5790-JST, 2016 WL 4427209, at *3 (N.D. Cal. Aug. 22, 2016). This requirement flows
naturally from the Twombly/Iqbal and the burden of proof in a patent infringement case “because
‘the failure to meet a single limitation is sufficient to negate infringement of [a] claim.’”
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e.Digital, 2016 WL 4427209, at *3 (alteration in original) (quoting Laitram Corp v. Rexnord,
Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991)); Atlas, 189 F. Supp. 3d at 775.
Oil-Dri points to cases that it contends conclude that plaintiffs need only adequately
plead infringement as to one claim from a patent rather than all asserted claims from that patent.
In Cont’l Circuits LLC v. Intel Corp., No. CV16-2026 PHX DGC, 2017 WL 679116, at *5 (D.
Ariz. Feb. 21, 2017), the court explained, “Nor is Plaintiff required, as Defendants maintain, to
allege facts supporting every limitation of every claim in each of the four patents-in-suit.”
Instead, the court reasoned that the plaintiff need only “provide factual allegations regarding
every limitation of at least one claim of each allegedly-infringing patent.” Cont’l Circuits, 2017
WL 679116, at *5. In CG Technology Development, LLC v. Zynga, Inc., No. 2:16-cv-859-RCJVCF, 2017 WL 662489, at *2 (D. Nev. Feb. 17, 2017), the plaintiffs alleged infringement of “at
least claims 1, 16, 20, 21, 24, 31, and 32.” The plaintiffs’ complaint, however, “focuse[d] solely
on the alleged infringement of Claim 20 ‘by way of example.’” CG Tech., 2017 WL 662489, at
*2. Based on the plaintiffs’ allegations concerning Claim 20, the court concluded that it had
sufficiently pled its claim of infringement of the patent.5 Id. Similar to these cases, the court in
Atlas IP LLC v. Pac. Gas & Elec. Co., rejected an argument that a plaintiff must specify which
patent claims it is asserting as long as the plaintiff “state[s] a plausible claim for relief, which can
be satisfied by adequately pleading infringement of one claim.” No. 15-cv-05469-EDL, 2016
WL 1719545, at *5 (N.D. Cal. Mar. 9, 2016). The court noted, however, that “only claim 1 of
the [patent] is actually asserted, so the scope of discovery would be limited accordingly.” Id.
5
CG Technology is not necessarily a compelling case for Oil-Dri’s argument because Claim 20 was representative
of all asserted claims and “the Court f[ound] that all of the asserted claims broadly contain certain essential
elements,” which were included in Claim 20. In the current case, Oil-Dri gives factual detail only regarding Claim
1, which does not contain the limitation of an organic clumping agent.
7
Additionally, the court explained that “the disclosures required by the Patent Local Rules will
soon provide more detailed notice.” Id.
Other cases, contrary to Oil-Dri’s contentions, conclude that a plaintiff must adequately
plead facts related to each asserted patent claim for an infringement action based on those claims
to survive a 12(b)(6) motion. In other words, these cases hold that if a plaintiff alleges
infringement of Claims 1 and 2 of a patent, which are materially different from one another,
allegations that the accused product embodies the elements of Claim 1 is sufficient to plead
infringement of that claim, but insufficient to plead infringement of Claim 2. In Werteks Closed
Joint Stock Co. v. Vitacost.com, Inc., the plaintiffs alleged that the defendants infringed “one or
more” claims of a patent. No. 16-cv-60695-GAYLES, 2016 WL 5076169, at *2 (S.D. Fla. Sept.
20, 2016). Similar to the current case, plaintiffs’ complaint addressed the elements of claim 1 of
the patent but not claims 2 and 3. Id. The court granted the defendants’ motion to dismiss “as to
claims 2 and 3” of the patent because, under Twombly and Iqbal, “[t]he Plaintiffs are required to
put forth facts that, at the very least, allow the Court to make a reasonable inference that the
Defendants have infringed on claims 2 and 3.” Id. at *3.6
Beyond the Southern District of Florida, courts have concluded or at least suggested that
Twombly and Iqbal require adequate factual allegations supporting each asserted patent claim. In
Asghari-Kamrani v. United Services Automobile Ass’n, for example, the court dismissed the
plaintiffs’ claims because, among other reasons, they “fail[ed] to identify how [the defendant’s]
website infringes each of the claims they allege have been infringed.” No. 2:15cv478, 2016 WL
6
The court in Werteks relied on the opinions of two other judges from the Southern District of Florida who reached
the same conclusion. See Werteks, 2016 WL 5076169, at *3 (citing Thermolife Int’l, LLC v. Vitamin Shoppe, Inc.,
No. 0:16-cv-60693-UU, 2016 WL 6678525, at *2 (S.D. Fla. June 8, 2016), and Werteks Closed Joint Stock Co. v.
GNC Corp., No. 16-60688-CIV-MORENO, Dkt. No. 32 at 2 (S.D. Fla. Aug. 23, 2016) (adopting the report and
recommendation of the magistrate judge (Dkt. No. 30)).
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1253533, at *4 (E.D. Va. Mar. 22, 2016). While the court noted that the plaintiffs identified
several infringed claims in their complaint, “they only provide[d] details . . . about how the
features of the website infringe claim 1.” The court concluded that the plaintiffs “must detail
how each claim is infringed.” Id. Similarly, in Jenkins v. LogicMark, LLC, the court explained
that “before filing a complaint, counsel must ascertain exactly what claims should [be] alleged to
be infringed and how they are infringed.” No. 3:16-CV-751-HEH, 2017 WL 376154, at *3
(E.D. Va. Jan. 25, 2017) (emphasis in original). The court dismissed the plaintiff’s patent claims
because (1) he “failed to identify which specific patent claims are alleged to be infringed,” (2) he
failed to “specify which features of [the defendant’s] products correspond to the limitations of
any claims in the identified patents,” and (3) he “d[id] not identify with any particularity how
each allegedly infringing feature of the accused products infringes any of the named patents,
either literally or under the doctrine of equivalents.” Id. Finally, in Scripps Research Institute v.
Illumina, Inc., the court explained that under Twombly and Iqbal, “a plaintiff must plausibly
allege that a defendant directly infringes each limitation in at least one asserted claim,” but the
court clarified in a footnote that plaintiffs “should not read this holding as an invitation to assert
and plausibly allege infringement of one claim, survive a motion to dismiss, and thereafter
conduct discovery on other, unrelated claims.” No. 16-cv-661 JLS (BGS), 2016 WL 6834024, at
*5 & n.3 (S.D. Cal. Nov. 21, 2016). The court further explained that “while under Twombly a
patentee need only plausibly allege direct infringement of one asserted claim for its complaint to
survive a motion to dismiss, a patentee must plausibly allege direct infringement as to all
asserted claims in its complaint in order for those asserted claims to likewise survive a motion to
dismiss.” Id. at *5 n.3 (emphasis in original).
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The Court finds the cases in the two preceding paragraphs persuasive. It makes little
sense that a plaintiff could plead infringement as to one patent claim and then proceed in the
litigation with respect to every other materially different claim in the patent.7 Such a result
sidesteps Twombly and Iqbal’s plausibility requirements, up-ends the notice-pleading
requirements that remain in place post-Twombly, subjects the defendant to potentially
unnecessary and unwarranted discovery costs, and wastes judicial resources by preventing Rule
12(b)(6) motions from narrowing the focus of the case to issues for which the plaintiff has shown
it has a plausible chance of success. While the local rules in this district require plaintiffs to
eventually identify each patent claim that the defendant allegedly infringed and identify where
each element of each asserted claim is found in the Accused Products, see N.D. Ill. Local Patent
R. 2.2, 3.1, Oil-Dri does not identify any reason why these local rules would excuse it from the
normal pleading requirements of Rule 8 that apply regardless of a federal case’s subject matter,
see Thermolife, 2016 WL 6678525, at *2 (rejecting the plaintiffs’ contention that it need only
plead facts related to one of three patent claims because it will further identify its infringement
contentions later in the case); RAH Color Techs. LLC v. Ricoh USA Inc., 194 F. Supp. 3d 346,
351 n.4 (E.D. Pa. 2016) (agreeing with another case that explained (1) “using local patent rules
to alter a defendant’s pleading obligations, while perhaps practical given the very unique nature
of federal patent litigation, offends the trans-substantive character of federal procedure,” and
(2) local patent rules “cannot modify a defendant’s pleading standard . . . under the national
rules.” (quoting Tyco Fire Prods. LP v. Victaulic Co., 777 F. Supp. 2d 893, 904 (E.D. Pa.
2011))). In addition, plaintiffs should have no problem pleading facts related to each asserted
7
The Court emphasizes that a plaintiff need not necessarily address each asserted patent claim individually in the
complaint. Where two claims are materially the same, sufficient allegations as to one claim are enough to support
the other. A complaint need not adhere to rigid formalism. The point is that a plaintiff cannot adequately plead
infringement of a patent claim if it fails to allege anything about a particular claim limitation.
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patent claim given their obligations under Federal Rule of Civil Procedure 11(b). In other words,
Oil-Dri should already know the basis for its allegations concerning all of its asserted claims.
See Atlas, 189 F. Supp. 3d at 775 (“[G]iven the investigation that Rule 11(b) requires before
filing a complaint, it is difficult to imagine how an action for infringement could be brought
without a tentative but nonetheless coherent theory of which claims are allegedly infringed and
how the accused products practice—or, because Rule 11(b)(3) permits pleading on information
and belief, may practice—each of those claims’ elements.”).
In short, Twombly and Iqbal require plaintiffs to plead sufficient facts supporting their
infringement allegations with respect to each asserted patent claim. In this case, Purina seeks
dismissal of Oil-Dri’s infringement claim to the extent it relies on patent claims containing the
limitation of an organic clumping agent. Oil-Dri does not dispute that its complaint fails to
include allegations related to the organic clumping agent limitation, but instead argues that the
Court should deny Purina’s motion because Oil-Dri pleads facts related to claim 1 of the patent
(which, as previously noted, does not include the limitation of an organic clumping agent). For
the reasons outlined above, the Court disagrees with Oil-Dri. The Court therefore dismisses
without prejudice Oil-Dri’s infringement claim to the extent it asserts infringement of organicclumping-agent claims. Otherwise, Oil-Dri’s infringement claim may advance.
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CONCLUSION
For the foregoing reasons, the Court grants the unmooted portion of Purina’s motion
without prejudice.
Dated: March 31, 2017
ENTERED
______________________________
AMY J. ST. EVE
United States District Court Judge
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