DELAVAU, LLC v. CORBION NV et al

Filing 35

OPINION. Signed by Judge Noel L. Hillman on 6/15/2016. (tf, )

UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
DELAVAU, LLC,
Civil No. 15-1183 (NLH/AMD)
Plaintiff,
OPINION

v.
CORBION NV and CARAVAN
INGREDIENTS, INC.,
Defendants.

APPEARANCES:
DOUGLAS R. WEIDER
JONATHAN D. BALL
RICHARD C. PETTUS
GREENBERG TRAURIG, LLP
500 CAMPUS DRIVE
SUITE 400
PO BOX 677
FLORHAM PARK, NJ 07932-0677
On behalf of plaintiff
ARNOLD B. CALMANN
JAKOB BENJAMIN HALPERN
SAIBER LLC
ONE GATEWAY CENTER
10TH FLOOR
NEWARK, NJ 07102-5311
SCOTT R. BROWN
TODD A. GANGEL
HOVEY WILLIAMS LLP
10801 MASTIN BLVD., SUITE 1000
84 CORPORATE WOODS
OVERLAND PARK, KANSAS 66210
On behalf of defendants
HILLMAN, District Judge
Presently before the Court is defendants’ motion to dismiss
plaintiff’s claims of direct and indirect infringement of its

patent concerning the calcium fortification of bread dough.
For the reasons expressed below, defendants’ motion will be
denied.
BACKGROUND
In its complaint, plaintiff, Delavau, LLC, states that it
is a leading developer and manufacturer of nutritional
enhancement technology for the baking industry.

Among

plaintiff’s patented innovations are calcium-fortified leavened
breads and calcium blends for making such breads.

Plaintiff is

the owner of United States Patent No. 7,595,075 (“the ‘075
Patent”), titled “CALCIUM FORTIFICATION OF BREAD DOUGH,” and it
is currently in full force and effect.

The ‘075 Patent claims,

among other things, breads fortified with calcium carbonate at
specified levels, including at the “good source” or “excellent
source” levels of calcium, and methods of making them.

These

patented calcium-fortified bread products have been made, used,
promoted and sold by plaintiff’s customers using plaintiff’s
proprietary calcium blends at stores and fast food restaurants
throughout the United States.

Plaintiff engaged in extensive

efforts to develop its patented calcium-fortified breads and
calcium additives used to make them.
Plaintiff contends that defendants, Corbion NV and its
subsidiary Caravan Ingredients, Inc., have infringed its patent.
Plaintiff alleges that defendants manufacture, sell, and market
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calcium blends and other products that contain calcium carbonate
for use by the food and baking industries to fortify breads with
calcium at the “good source,” “excellent source,” or higher
levels, including at least defendants’ Nutrivan® line of
products, and bread bases to make calcium-fortified white bread,
rolls, and hearth bread (collectively, “Calcium Blend
Products”).

Plaintiff claims that defendants have profited

through their direct infringement of the ‘075 Patent by their
sale and manufacture of calcium-fortified breads, and through
their indirect infringement by encouraging, instructing, and
causing others, including manufacturers in the baking industry,
to infringe the ‘075 Patent.
Plaintiff claims that defendants’ actions constitute direct
and indirect infringement under 35 U.S.C. § 271(a), (b) and (g).
Plaintiff asks that this Court declare that defendants have
directly and indirectly infringed the ‘075 Patent, enjoin
defendants from further acts of infringement, deem defendants’
actions to be “exceptional” within the meaning of 35 U.S.C. §
285, and award plaintiff damages, attorneys’ fees and costs.
Defendants have moved to dismiss plaintiff’s patent
infringement claims against them pursuant to Federal Civil
Procedure Rule 12(b)(6), arguing that plaintiff’s complaint and
the exhibits attached to its complaint demonstrate on their face
that defendants have not and cannot infringe the ‘075 Patent.
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Plaintiff has opposed defendants’ motion.
DISCUSSION
A.

Subject Matter Jurisdiction

The Court has subject matter jurisdiction over this
controversy under 28 U.S.C. §§ 1331 and 1338(a), and the
Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202.
B.

Standard for Motion to Dismiss

When considering a motion to dismiss a complaint for
failure to state a claim upon which relief can be granted
pursuant to Federal Rule of Civil Procedure 12(b)(6), a court
must accept all well-pleaded allegations in the complaint as
true and view them in the light most favorable to the plaintiff.
Evancho v. Fisher, 423 F.3d 347, 351 (3d Cir. 2005).

It is well

settled that a pleading is sufficient if it contains “a short
and plain statement of the claim showing that the pleader is
entitled to relief.”

Fed. R. Civ. P. 8(a)(2).

Under the

liberal federal pleading rules, it is not necessary to plead
evidence, and it is not necessary to plead all the facts that
serve as a basis for the claim.
F.2d 434, 446 (3d Cir. 1977).

Bogosian v. Gulf Oil Corp., 562
However, “[a]lthough the Federal

Rules of Civil Procedure do not require a claimant to set forth
an intricately detailed description of the asserted basis for
relief, they do require that the pleadings give defendant fair
notice of what the plaintiff’s claim is and the grounds upon
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which it rests.”

Baldwin Cnty. Welcome Ctr. v. Brown, 466 U.S.

147, 149-50 n.3 (1984) (quotation and citation omitted).
A district court, in weighing a motion to dismiss, asks
“‘not whether a plaintiff will ultimately prevail but whether
the claimant is entitled to offer evidence to support the
claim.’”

Bell Atlantic v. Twombly, 550 U.S. 544, 563 n.8 (2007)

(quoting Scheuer v. Rhoades, 416 U.S. 232, 236 (1974)); see also
Ashcroft v. Iqbal, 556 U.S. 662, 684 (2009) (“Our decision in
Twombly expounded the pleading standard for ‘all civil actions’
. . . .”); Fowler v. UPMC Shadyside, 578 F.3d 203, 210 (3d Cir.
2009) (“Iqbal . . . provides the final nail-in-the-coffin for
the ‘no set of facts’ standard that applied to federal
complaints before Twombly.”).
Following the Twombly/Iqbal standard, the Third Circuit has
instructed a two-part analysis in reviewing a complaint under
Rule 12(b)(6).

First, the factual and legal elements of a claim

should be separated; a district court must accept all of the
complaint's well-pleaded facts as true, but may disregard any
legal conclusions.
S. Ct. at 1950).

Fowler, 578 F.3d at 210 (citing Iqbal, 129
Second, a district court must then determine

whether the facts alleged in the complaint are sufficient to
show that the plaintiff has a “‘plausible claim for relief.’”
Id. (quoting Iqbal, 129 S. Ct. at 1950).

A complaint must do

more than allege the plaintiff's entitlement to relief.
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Id.;

see also Phillips v. Cnty. of Allegheny, 515 F.3d 224, 234 (3d
Cir. 2008) (stating that the “Supreme Court's Twombly
formulation of the pleading standard can be summed up thus:
‘stating . . . a claim requires a complaint with enough factual
matter (taken as true) to suggest’ the required element.

This

‘does not impose a probability requirement at the pleading
stage,’ but instead ‘simply calls for enough facts to raise a
reasonable expectation that discovery will reveal evidence of’
the necessary element”).

A court need not credit either “bald

assertions” or “legal conclusions” in a complaint when deciding
a motion to dismiss.

In re Burlington Coat Factory Sec. Litig.,

114 F.3d 1410, 1429-30 (3d Cir. 1997).

The defendant bears the

burden of showing that no claim has been presented.

Hedges v.

U.S., 404 F.3d 744, 750 (3d Cir. 2005) (citing Kehr Packages,
Inc. v. Fidelcor, Inc., 926 F.2d 1406, 1409 (3d Cir. 1991)).
A court in reviewing a Rule 12(b)(6) motion must only
consider the facts alleged in the pleadings, the documents
attached thereto as exhibits, and matters of judicial notice.
S. Cross Overseas Agencies, Inc. v. Kwong Shipping Grp. Ltd.,
181 F.3d 410, 426 (3d Cir. 1999).

A court may consider,

however, “an undisputedly authentic document that a defendant
attaches as an exhibit to a motion to dismiss if the plaintiff’s
claims are based on the document.”

Pension Benefit Guar. Corp.

v. White Consol. Indus., Inc., 998 F.2d 1192, 1196 (3d Cir.
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1993).

If any other matters outside the pleadings are presented

to the court, and the court does not exclude those matters, a
Rule 12(b)(6) motion will be treated as a summary judgment
motion pursuant to Rule 56.
C.

Fed. R. Civ. P. 12(b).

Analysis

In their motion to dismiss, defendants argue that plaintiff
has failed to state a claim for direct patent infringement
because its factual allegations are contradicted by its
exhibits.

Defendants also argue that plaintiff has failed to

state a claim for indirect patent infringement because it has
not alleged an underlying act of direct infringement.
For their first argument, defendants contend that in order
to directly infringe the ‘075 Patent, defendants must either
make, use, sell, offer to sell, or import calcium-fortified
bread, or practice a method of fortifying dough with calcium
from calcium carbonate.

Defendants argue that plaintiff’s

complaint and the attached exhibits show that the products made
and sold by defendants are “Calcium Blend Products” rather than
actual breads or doughs.

Because defendants are not in the

bread-making business, and they do not actually make breads or
practice a dough-making method, all of which information is
contained in plaintiff’s complaint, defendants argue that
plaintiff’s patent infringement claims must be dismissed for
lack of any valid infringement claim.
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In response to defendants’ argument, plaintiff points out
that defendants do not contend that plaintiff’s complaint
violates the “short and plain statement” requirement of Federal
Civil Procedure Rule 8, or that the facts in its complaint, when
accepted as true, do not demonstrate a “plausible claim for
relief.”

Plaintiff argues that defendants instead contend that

plaintiff’s direct infringement claims should be dismissed
because the exhibits attached to the Complaint demonstrate that
defendants have not infringed the ‘075 Patent.

Plaintiff argues

that the substantive question of infringement is an issue for
another day that is not appropriately decided during the
resolution of a motion to dismiss.

Plaintiff further argues

that defendants’ position also fails on its merits.

Plaintiff

argues that despite defendants’ contention that they cannot
directly infringe the patent because they are not in the breadmaking business, the exhibits strongly suggest that defendants
have made and used bread.
When considering a motion to dismiss, the Court must ask
whether plaintiff is entitled to offer evidence to support its
claim, and not whether plaintiff will ultimately prevail.
Defendants argue that the exhibits to the complaint show that
they have not and cannot directly infringe plaintiff’s patent
because in order for plaintiff to prove direct infringement
plaintiff must show, at a minimum, that defendants make bread,
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and defendants do not make bread.

In contrast, plaintiff argues

that the exhibits to the complaint show that defendants have
made and used bread and therefore they have, and continue to,
directly infringe plaintiff’s patent.

If defendants’

interpretation of the exhibits to plaintiff’s complaint is
correct, plaintiff may not ultimately prevail on its direct
infringement claim.

The Court, however, cannot credit

defendants’ interpretation of the exhibits over plaintiff’s
conflicting interpretation at this motion to dismiss stage. 1

1

Nothing in the Federal Rules precludes a defendant from filing
a motion for summary judgment, supported by the defendant’s own
evidence, prior to the filing of an answer. See Fed. R. Civ. P.
56(b); see also Fed. R. Civ. P. 41(a)(1)(A)(i). When deciding a
motion for summary judgment, the Court is not constrained, as it
is now, to consider only facts alleged in the pleadings, the
documents attached thereto as exhibits, and matters of judicial
notice. It is important to note, however, that even if
defendants had styled their motion as one for summary judgment,
defendants’ argument that it has not and cannot directly
infringe the ‘075 Patent, without more, would be insufficient
garner judgment in their favor. For example, defendants contend
that plaintiff’s complaint and the attached exhibits do not
state that defendants actually make breads or practice a doughmaking method. Defendants, however, do not affirmatively state
themselves that they do not make bread or practice a doughmaking method. Moreover, even if it were to become undisputed
that defendants do not make bread or practice a dough-making
method, it is unclear if the analysis of plaintiff’s
infringement claims depends on that fact. In other words, can
defendants infringe the ‘075 Patent even if they do not make
bread or practice a dough-making method by, for example, copying
the ‘075 Patent up until the premixed blend is prepared into
dough and placed in an oven? Defendants have essentially asked
this Court, through the procedural device of a motion to
dismiss, to declare that (1) defendants do not make bread or
practice a dough-making method; and (2) that fact completely
precludes any direct or indirect infringement claims by
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Consequently, plaintiff’s direct infringement claim may proceed.
The Court similarly rejects defendants’ argument that
plaintiff has failed to state a claim for indirect infringement.
Defendants argue that in order to maintain a viable indirect
infringement claim, plaintiff must plead that defendants have
actually induced a third party to infringe the patent, and
plaintiff has only pleaded that defendants’ customers’ products
“will be made” with infringing characteristics.

Defendants also

argue that plaintiff’s allegations as to the identity of the
third party they have allegedly induced to infringe are too
vague.

Plaintiff disputes that its complaint does not allege

actual inducement, and it argues that it provides sufficient
specificity as to the third party infringer.

Plaintiff also

argues that prospective indirect infringement is actionable.
“Whoever actively induces infringement of a patent shall be
liable as an infringer.”

35 U.S.C. § 271(b).

In order to

establish inducement, the patentee must show “direct
infringement, and that the alleged infringer ‘knowingly induced
infringement and possessed specific intent to encourage
another's infringement.’”

Otsuka Pharm. Co. v. Torrent Pharm.

plaintiff. But because plaintiff has satisfied the Rule 8 and
Twombly/Iqbal pleading standard, the proper course for
defendants is to respond to plaintiff’s allegations in an
answer, a motion to dismiss on the pleadings, or, given the
substance of defendants’ motion, most likely through a summary
judgment motion supported by evidence.
10

Ltd., Inc., 99 F. Supp. 3d 461, 477 (D.N.J. 2015) (quoting
i4i Ltd. P'ship v. Microsoft Corp., 598 F.3d 831, 851 (Fed. Cir.
2010)).

Claims for indirect infringement must also contain

factual allegations that are “‘sufficient to allow an inference
that at least one direct infringer exists.’”

Richmond v.

Lumisol Elec. Ltd., 2014 WL 1405159, at *3 (D.N.J. Apr. 10,
2014) (quoting In re Bill of Lading Transmission & Processing
Sys. Patent Litig., 681 F.3d 1323, 1336, 1339 (Fed. Cir. 2012)
(quoting DSU Med. Corp. v. JMC Co., 471 F.3d 1293, 1306 (Fed.
Cir. 2006)).
Stated several times in various ways throughout the
complaint, plaintiff alleges:
Defendants have profited . . . through their indirect
infringement by encouraging, instructing, and causing
others, including manufacturers in the baking industry, to
infringe the ‘075 Patent. (Compl. ¶ 14)
To date, Defendants have also not provided a good faith
basis for believing that they do not directly or indirectly
infringe the ‘075 Patent, and particularly a good faith
basis for believing that their actions, or the actions they
encourage and instruct their customers to take and the
resulting products, do not infringe. On information and
belief, the requested datasheets and ingredients lists
referenced in Exhibits G and H to this Complaint are made
available to and relied upon by customers, because
Defendants instruct customers to follow Defendants’ formula
on the datasheets to make bread that will contain an
excellent source level of calcium. (Compl. ¶ 20)
[D]espite Defendants’ actual knowledge of the ‘075 Patent,
Defendants have willfully maintained their infringing
activities, with the specific intent and for the sole and
exclusive purpose that their customers would use the
Calcium Blend Products to manufacture, import, use, sell,
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and/or offer for sale of breads fortified with calcium at
the good source, excellent source, or higher levels,
thereby directly infringing the ‘075 Patent. (Compl. ¶ 23)

Taken together, these allegations maintain that defendants
have knowingly induced their customers, including manufacturers
in the baking industry, to infringe the ‘075 Patent when they
have used defendants’ infringing products.

Plaintiff’s claims

are sufficient to state a claim for indirect infringement.
With regard to claims of prospective inducement,
plaintiff’s complaint contains an allegation that refers to
possible future conduct by defendants:
[B]reads made by Defendants and/or by Defendants’ customers
using Defendants’ Calcium Blend Products as directed,
instructed, and encouraged by Defendants, including white
breads and rolls, will be made with the same types of flour
and will have the same pH, particle sizes, and
substantially identical taste, texture, volume, and crumb
structure as called for in the claims of the ‘075 Patent.
Delavau has tried to obtain information to confirm all of
these considerations, but has been unable to do so through
public sources, and thus has sought it from Defendants.
(Compl. ¶ 17)
Defendants argue that an allegation of induced infringement
that has not yet occurred is not viable.

The Court disagrees.

The Supreme Court has reaffirmed, “[O]ur case law leaves no
doubt that inducement liability may arise if, but only if,
[there is]

. . . direct infringement.”

Limelight Networks,

Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111, 2117 (2014)
(citation omitted).

This statement does not mean, however, that

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a patentee cannot maintain a claim that an alleged infringer’s
actions, if not stopped, will result in a third party being
induced to also infringe.

Even though an alleged infringer

“cannot be liable for inducing infringement that never came to
pass,” id. at 2118, a plaintiff may assert an indirect patentinfringement-by-inducement claim in its patent infringement
complaint even if infringement by a third party has not yet
occurred.

Nevertheless, the Court finds that in addition to its

claims regarding prospective indirect infringement, plaintiff
has asserted allegations regarding induced infringement that has
already occurred, and therefore plaintiff’s indirect
infringement claim may stand.
CONCLUSION
For the reasons expressed above, defendants’ motion to
dismiss plaintiff’s direct and indirect patent infringement
claims must be denied.

An appropriate Order will be entered.

Date:
June 15, 2016
At Camden, New Jersey

s/ Noel L. Hillman
NOEL L. HILLMAN, U.S.D.J.

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