Wright Manufacturing, Inc. v. The Toro Company et al
Filing
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MEMORANDUM AND ORDER granting in part 13 Motion of defendants to Dismiss for Failure to State a Claim. Signed by Judge Marvin J. Garbis on 12/12/11. (jnls, Deputy Clerk)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MARYLAND
WRIGHT MANUFACTURING, INC.
Plaintiff
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vs.
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THE TORO COMPANY, et al.
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Defendants
CIVIL ACTION NO. MJG-11-1373
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MEMORANDUM AND ORDER RE: MOTION TO DISMISS
The Court has before it Defendants’ Motion to Dismiss
Complaint [Document 13] and the materials submitted relating
thereto.
The Court has had the benefit of written arguments by
counsel and finds a hearing unnecessary.
I.
BACKGROUND1
At all times relevant hereto, The Toro Company (“Toro”) and
Exmark Manufacturing Company, Inc. (“Exmark”) (collectively,
“Defendants”) were engaged in the manufacture of lawn mowers and
other agricultural equipment
Wright Manufacturing, Inc.
(“Wright”) is the sole holder of all relevant rights to United
States Patent Nos. 6,438,931 (“the ‘931 patent”) and 6,935,093
1
The “facts” herein are as alleged by Plaintiff and are not
necessarily agreed upon by Defendants.
(“the ‘093 patent”)(collectively, “the Patents”), both of which
are continuations-in-part of United States Patent No. 6,205,753.
The aforesaid patents relate to a self-propelled lawn mower with
an allegedly novel deck lift system for raising and lowering the
cutter deck assembly.
In the instant case, Wright sues Defendants for
infringement of the Patents.
By the instant motion, Defendants
seek dismissal pursuant to Rule 12(b)(6) of the Federal Rules of
Civil Procedure.2
II.
DISMISSAL STANDARD
A motion to dismiss filed pursuant to Rule 12(b)(6) tests
the legal sufficiency of a complaint.
A complaint need only
contain “a short and plain statement of the claim showing that
the pleader is entitled to relief, in order to 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) (citations omitted).
While allegations need not be
exactingly specific, they “must be enough to raise a right to
relief above the speculative level.”
Id.
For the purposes of ruling on a Rule 12(b)(6) motion, a
court must assume that the facts presented by the plaintiff are
2
All Rule references herein refer to the Federal Rules of Civil
Procedure unless otherwise indicated.
2
true.
This assumption, however, excludes “[t]hreadbare recitals
of the elements of a cause of action, supported by mere
conclusory statements.”
Ashcroft v. Iqbal, 556 U.S. 662, 129 S.
Ct. 1937, 1949 (2009) (citing Twombly, 550 U.S. at 555).
Consequently, in order to “survive a motion to dismiss, a
complaint must contain sufficient factual matter” as to provide
the court with enough plausible evidence to “draw the reasonable
inference that the defendant is liable for the misconduct
alleged.”
Id.
The Fourth Circuit has held that a complaint will survive a
Rule 12(b)(6) motion when it states a plausible claim for
relief.
2009).
Francis v. Giacomelli, 588 F.3d 186, 193 (4th Cir.
However, this determination is “a context-specific task
that requires the reviewing court to draw on its judicial
experience and common sense.”
Id. (quoting Iqbal, 129 S. Ct. at
1950).
III. DISCUSSION
The counts are, essentially, identical except for the
identification of the patent at issue.
3
A.
DIRECT INFRINGEMENT
1.
Direct Literal Infringement
Form 18 of the Federal Rules of Civil Procedure provides a
guide for a complaint sufficient to state a claim for direct,
literal patent infringement.
Fed. R. Civ. P. Form 18 (2011).
Complaints that mirror the format set out in Form 18 are
sufficient to survive a Rule 12(b)(6) motion to dismiss.
See
W.L. Gore & Assocs., Inc. v. Medtronic, Inc., 778 F. Supp. 2d
667, 675 (E.D. Va. 2011) (“[T]he Court agrees with the postTwombly holding in McZeal [McZeal v. Sprint Nextel Corp., 501
F.3d 1354 (Fed. Cir. 2007)] that a litigant who complies with
the provisions of Form 18 has sufficiently stated a claim for
direct infringement as contemplated by Rule 12(b)(6).”); Fed. R.
Civ. P. 84 (2011) (“The forms in the Appendix suffice under
these rules and illustrate the simplicity and brevity that these
rules contemplate.”).
Moreover, while a claim for direct patent infringement is
comprised of five elements,3 the plaintiff is not required to
explicitly identify each element in its complaint.
3
McZeal, 501
Elements include “1) an allegation of jurisdiction; 2) a
statement that the plaintiff owns the patent; 3) a statement
that defendant has been infringing the patent ‘by making,
selling, and using [the device] embodying the patent’; 4) a
statement that the plaintiff has given the defendant notice of
its infringement; and 5) a demand for an injunction and
damages.” McZeal, 501 F.3d at 1357 (citing Fed. R. Civ. P. Form
16 [currently Form 18]).
4
F.3d at 1357 (“[A] plaintiff in a patent infringement suit is
not required to specifically include each element of the claims
of the asserted patent.”).
Courts have further concluded that
the “notice” element of a direct infringement action is not
essential to the sufficiency of a complaint.
See W.L. Gore &
Assoc., Inc., 778 F. Supp. 2d at 676-77 (finding that notice
need not be pleaded in a complaint because “[n]o notice
requirement is found in 35 U.S.C. § 271(a)”).
Direct infringement requires only that “whoever without
authority makes, uses, offers to sell, or sells any patented
invention” be held liable.
35 U.S.C. § 271(a).
knowledge of the infringement is required.
No intent or
See id.
In the instant case, the Wright Complaint specifically
alleges all of the required elements from Form 18:
jurisdiction
(Compl. ¶ 7); patent ownership (Compl. ¶ 23); direct
infringement (Compl. ¶ 27 & ¶ 37); and a demand for injunction
and/or damages (Compl. Sec. VII).
Although not particularly
specific, the allegations clearly identify the patents at issue,
its ownership of the patents, and the lawnmower models that
allegedly directly infringe.
This is adequate to establish a
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plausible basis for a claim for direct, literal infringement
under § 271(a).4
2.
Direct Infringement by Doctrine of Equivalents
For present purposes it suffices to state in general
(although not precise in light of more recent decisions) terms
that “a patentee may . . . proceed against the producer of a
device ‘if it performs substantially the same function in
substantially the same way to obtain the same result.’”
Graver
Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608
(1950) (quoting Sanitary Refrigerator Co. v. Winters, 280 U.S.
30, 42 (1929)).
The Supreme Court has stated that “application
of the doctrine of equivalents . . . is akin to determining
literal infringement, and neither requires proof of intent.”
Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S.
17, 35 (1997).
There is a presently unresolved question whether, in light
of Iqbal and Twombly, merely utilizing Form 18 will suffice to
allege a § 271(a) claim for infringement by the doctrine of
equivalents. See W.L. Gore & Assocs., Inc., 778 F. Supp. 2d at
675 (finding that “Form 18’s continuing viability post Twombly
and Iqbal in contexts other than literal infringement claims is
4
All § references herein refer to Title 35 of the United States
Code unless otherwise indicated.
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an open question”); see also Colida v. Nokia, Inc., 347 Fed.
Appx. 568, 571 n.2 (Fed. Cir. 2009) (noting that Form 18 “is not
tailored to design patents and was last updated before the
Supreme Court’s Iqbal decision”).
In the absence of either Federal Circuit precedent or a
fair preponderance of district court decisions, the Court will
find the Complaint, following Form 18, sufficient to state a
plausible claim for infringement by the doctrine of equivalents.
B.
INDUCED INFRINGEMENT
One who “actively induces infringement of a patent” is
liable under 35 U.S.C. § 271(b).
To prove an induced
infringement case, a plaintiff must prove that the infringer had
knowledge of the existence of the infringed patent to prove
induced infringement.5
Global-Tech Appliances, Inc. v. SEB S.A.,
-- U.S. --, 131 S. Ct. 2060, 2068 (2011) (“We now hold that
induced infringement under § 271(b) requires knowledge that the
induced acts constitute patent infringement.”).
Thus, the
Supreme Court interprets § 271(b) to require proof that an
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The elements of induced infringement are: (1) direct
infringement; (2) “knowledge of acts alleged to constitute
infringement”; (3) “specific intent and action to induce
infringement.” DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d
1293, 1305 (Fed. Cir. 2006) (citations omitted).
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inducer “persuade[d] another to engage in conduct that the
inducer knows is infringement.”
Id.
In light of Iqbal and Twombly, claims under § 271(c) can no
longer survive motions to dismiss solely on sufficient pleading
of direct infringement, as in Tech. Patents, LLC v. Deutsche
Telekom AG, 573 F. Supp. 2d 903, 922-23 (D. Md. 2008).
Therefore, this Court agrees with the decision in Mike’s Train
House, Inc. v. Broadway Ltd. Imports, which required the
plaintiff to include factual allegations sufficient to create a
plausible claim of intent and knowledge. Civil No. JKB-09-2657,
2011 WL 856306, *8 (D. Md. Mar. 8, 2011).
Wright’s intent and knowledge allegations are merely
conclusory.
Wright alleges knowledge only through a broad
statement that “Toro has known of [been aware of] [the patent]
since at least 2008.”
Compl. ¶ 34, 44.
More is required.
See
Bender v. Motorola, Inc., No. C 09-1245 SBA, 2010 WL 726739, *4
(N.D. Cal. Feb. 26, 2010) (finding that a complaint alleging
that the Defendant “‘performed acts . . . that infringe and
induce others to infringe’. . . [was a] conclusory, fact-barren
allegation [that] fail[ed] to state a claim for inducement to
infringe under 35 U.S.C. § 271(b)”) (citing ACCO Brands, Inc. v.
ABA Locks Mfrs. Co., Ltd., 501 F.3d 1307, 1312 (Fed. Cir.
2007)).
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Wright merely provides “[t]hreadbare recitals of the
elements of a cause of action” that are inadequate. Iqbal, 129
S. Ct. at 1949.
C.
CONTRIBUTORY INFRINGEMENT
Claims of contributory infringement under § 271(c) require
a plaintiff to prove that the defendant had knowledge of the
patent(s) he was infringing.
See Aro Mfg. Co. v. Convertible
Top Replacement Co., 377 U.S. 476, 488 (1964) (Ҥ 271(c) . . .
require[s] a showing that the alleged contributory infringer
knew that the combination for which his component was especially
designed was both patented and infringing.”).
Thus, Wright must sufficiently plead that the
Defendants (1) offered to sell within the United States or
imported into the United States a component of the patented
machine; (2) for use in practicing a patented process,
constituting a material part of the invention; (3) with
knowledge that the invention was patented and that such use was
infringing.
35 U.S.C. § 271(c).
Matched against these
standards, the Complaint is inadequate.
While “the pleading standard Rule 8 announces does not
require ‘detailed factual allegations,’ . . . it demands more
than an unadorned, the-defendant-unlawfully-harmed-me
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accusation.”
Iqbal, 129 S. Ct. at 1949 (quoting Twombly, 550
U.S. at 555).
Courts have generally required some factually
supported allegations of knowledge in claims of contributory
infringement.
See, e.g., Winn Inc. v. Eaton Corp., 272 F. Supp.
2d 968, 975, n.3 (C.D. Cal. 2003) (citing Hewlett–Packard Co. v.
Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990)
(arguing that “proof of a defendant’s knowledge . . . that his
activity cause[d] infringement was necessary to establish
contributory infringement”)(emphasis in original)).
Wright provides highly generalized statements concluding
that Toro and Exmark are “aiding and causing distributors and/or
dealers to sell and offer to sell mowers, including Grandstand
[and Vantage] mowers, within the United States.”
42.
Compl. ¶ 39,
This recitation parrots the required elements of a § 271(c)
action without providing any factual setting.
See Twombly, 550
U.S. at 557 (“A statement of . . . conduct consciously
undertaken needs some setting suggesting the agreement necessary
to make out a . . . claim.”).
Cf. Nielsen Co. (US), LLC v.
comScore, Inc., No. 2:11cv168, 2011 WL 4937158, *12 (E.D. Va.
Aug. 19, 2011) (finding a pleading of contributory infringement
barely sufficient because Plaintiff “allege[d] that defendant
‘has had actual knowledge and constructive notice of the [patent
at issue] at all relevant times,’ and provide[d] a concrete
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example of an occasion on which defendant would have received
such notice.”)(emphasis added)).
IV.
CONCLUSION
For the foregoing reasons:
1.
The Defendants’ Motion to Dismiss Complaint
[Document 13] is GRANTED IN PART.
2.
All claims pursuant to 35 U.S.C. § 271(b) and (c)
are dismissed.
3.
Plaintiff may file a motion seeking leave to file
an Amended Complaint pursuant to Rule 103.6 of
the Rules of the United States District Court for
the District of Maryland.
4.
The Court shall set a deadline for the filing of
any motion to amend following resolution of the
pending motion seeking a stay of the instant
case.
SO ORDERED, on Monday, December 12, 2011.
/s/__________
Marvin J. Garbis
United States District Judge
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