Fisher-Price, Inc. et al v. Kids II, Inc.
Filing
52
DECISION AND ORDER and REPORT AND RECOMMENDATIONS re 32 MOTION to Dismiss , or Alternatively for Judgment on the Pleadings, with Respect to Kids II, Inc.'s False Marking Counterclaim filed by Mattel, Inc., Fisher-Price, Inc., 35 MOTION to Stay Litigation Pending Reexamination of the Patent-in-Suit by the U.S. Patent and Trademark Office filed by Kids II, Inc. Objections due fourteen days from receipt. Signed by Hon. Leslie G. Foschio on 12/21/2011. (SDW)
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NEW YORK
FISHER-PRICE, INC. and
MATTEL, INC.,
Plaintiffs and
Counter Defendants,
v.
DECISION
and
ORDER
------------------------------REPORT
and
RECOMMENDATION
KIDS II, INC.,
10-CV-00988A(F)
Defendant and
Counter Claimant.
APPEARANCES:
KENYON & KENYON
Attorneys for Plaintiffs and Counter Defendants
JOHN FLOCK, and
K. PATRICK HERMAN, of Counsel
One Broadway
New York, New York 10004
and
JOHN R. HUTCHINS, of Counsel
1500 K Street NW
Suite 700
Washington, District of Columbia 20005-1257
HODGSON RUSS LLP
Attorneys for Plaintiffs and Counter Defendants
ROBERT J. LANE, JR., of Counsel
The Guaranty Building
140 Pearl Street
Buffalo, New York 14202-4040
ALSTON & BIRD LLP
Attorneys for Defendant and Counter Claimant
ROBERT LEE, and
SCOTT PATRICK AMY, of Counsel
One Atlantic Center
1201 West Peachtree Street
Atlanta, Georgia 30309-3424
PHILLIPS LYTLE LLP
Attorneys for Defendant and Counter Claimant
MICHAEL JAMES BERCHOU, of Counsel
3400 HSBC Center
Buffalo, New York 14203
JURISDICTION
This case was referred to the undersigned by Honorable Richard J. Arcara, on
January 25, 2011, for all pretrial matters including preparation of a report and
recommendation on dispositive motions. The matter is presently before the court on
Plaintiffs’ motion for to dismiss Defendant’s cross-claim for false marking (Doc. No. 32),
filed October 18, 2011, and on Defendant’s motion to stay (Doc. No. 35), filed
November 3, 2011.1
BACKGROUND and FACTS2
Plaintiff Fisher-Price, Inc. (“Fisher-Price”), a wholly-owned subsidiary of Plaintiff
Mattel, Inc. (“Mattel”) (together, “Plaintiffs”), commenced this action on December 7,
2010, asserting a single claim for relief alleging Defendant Kids II, Inc. (“Kids II” or
“Defendant”), violated United States Patent No. 5,562,548 (“the ‘548 patent” or the
“patent-in-suit”), issued on October 8, 1996 for an invention denominated as a
“Convertible Child Swing,” described as child swing with a convertible seat that can be
configured as a cradle to accommodate very young babies or as a chair for older
1
Although Plaintiffs’ m otion to dism iss is dispositive, whereas Defendant’s m otion to stay the
litigation is nondispositive, the m atters are discussed in this com bined Decision and Order and Report and
Recom m endation in the interest of judicial convenience.
2
The Facts are taken from the pleadings and m otion papers filed in this action.
2
babies, and that is also removable, allowing the seat to function as a car seat or car
bed (“the cradle swing”). The ‘548 patent is owned by Mattel which has exclusively
licensed it to Fisher-Price, thereby granting Fisher-Price the sole right to make, use and
sell the cradle swing. Plaintiffs allege Defendant both directly and indirectly infringed
upon the ‘548 patent by making and selling products embodying one of more claims
covered by the ‘548 patent. For the alleged infringement, Plaintiffs seek to recover
treble damages, an order permanently enjoining Defendant from the continued
infringement, and the costs, expenses and attorney’s fees incurred in connection with
this action. On February 7, 2011, Defendant filed its answer (Doc. No. 11).
On August 16, 2011, Defendant filed a petition with the United States Patent and
Trademark Office (“the Patent Office”), requesting reexamination of Claims 1-4, 6, 10,
12-13, and 15-16 of the ‘548 patent. On August 19, 2011, after seeking and obtaining
leave from the court, Defendant filed its Amended Answer (Doc. No. 26) (“Amended
Answer”), in which Defendant asserts three counterclaims including the Third
Counterclaim alleging Fisher-Price engaged in false patent marking in violation of 35
U.S.C. § 292 (“Third Counterclaim”). On September 12, 2011, Plaintiffs filed FisherPrice and Mattel’s Answer to Defendant Kid II’s Amended Counterclaims (Doc. No. 28)
(“Answer to Counterclaims”). On October 18, 2011, Plaintiffs filed a motion to dismiss
the Third Counterclaim (Doc. No. 32) (“Plaintiffs’ motion”), supported by the attached
Memorandum of Law in Support of Fisher-Price and Mattel’s Motion to Dismiss, or
Alternatively for Judgment on the Pleadings, with Respect to Kids II’s False Marking
Counterclaim (Doc. No. 32-1) (“Plaintiffs’ Memorandum”), and exhibits A through F
(“Plaintiffs’ Exh(s). __”).
3
On October 21, 2011, the Patent Office granted Defendant’s request for ex parte
reexamination of the ‘548 patent. On November 3, 2011, Defendant filed a motion to
stay litigation pending the Patent Office’s reexamination of the ‘548 patent (Doc. No.
35) (“Defendant’s motion”), supported by the attached Declaration of Robert L. Lee,
Esq. in Support of Motion to Stay Litigation Pending Reexamination of the Patent in Suit
(Doc. No. 35-1) (“Lee Declaration”), exhibits A through D (“Defendant’s Exh(s). __”),
and Defendant’s Memorandum of Law in Support of Its Motion to Stay Litigation
Pending Reexamination of the Patent-in-Suit (Doc. No. 35-6) (“Defendant’s
Memorandum”).
On November 18, 2011, Defendant filed the Declaration of Scott P. Amy, Esq., in
Opposition to Plaintiffs’ Motion to Dismiss or Alternatively for Judgment on the
Pleadings (Doc. No. 40) (“Amy Declaration”), with attached exhibits A through E
(“Defendant’s Response Exh(s). __”), and Kids II’s Memorandum of Law in Opposition
to Fisher-Price and Mattel’s Motion to Dismiss, or alternatively for Judgment on the
Pleadings (Doc. No. 41) (“Defendant’s Response”). On November 28, 2011, Plaintiffs
filed Fisher-Price and Mattel’s Opposition to Defendant’s Motion to Stay Litigation
Pending Reexamination of the Patent-in-Suit (Doc. No. 45) (“Plaintiffs’ Response”), with
the attached Declaration of K. Patrick Herman in Support of Fisher-Price and Mattel’s
Opposition to Defendant’s Motion to Stay Litigation Pending Reexamination of the
Patent-in-Suit (Doc. No. 45-1) (“Herman Declaration”), with attached exhibits A through
G (Plaintiffs’ Response Exh(s). __”).
On November 30, 2011, Plaintiffs filed Fisher-Price and Mattel’s Reply Brief in
Support of Their Motion to Dismiss or Alternatively for Judgment on the Pleadings, with
4
Respect to Kid II’s False Marking Counterclaim (Doc. No. 47) (“Plaintiffs’ Reply”). On
December 5, 2011, Defendant filed Kids II’s Reply Memorandum of Law in Support of
Its Motion to Stay Litigation Pending Reexamination of the Patent-in-Suit (Doc. No. 49)
(“Defendant’s Reply”), and the Reply Declaration of Scott P. Amy, Esq., in Support of
Kids II Motion to Stay Litigation Pending Reexamination of the Patent-in-Suit (Doc. No.
50) (“Amy Reply Declaration”), with attached exhibits A through D (“Defendant’s Reply
Exh(s). __”). Oral argument was deemed unnecessary.
Based on the following, Plaintiffs’ motion should be GRANTED without prejudice;
Defendant’s motion is DENIED.
DISCUSSION
1.
Motion to Stay Litigation
Defendant moves to stay litigation pending the PTO’s ex parte reexamination of
the ‘548 patent, arguing that because the PTO is reexamining a number of the ‘548
patent’s claims including, inter alia, Claims 1 and 10 (“Claims”) which are the only
Claims Plaintiffs have identified as being infringed, the pending reexamination will
simplify the issues before the court, thus saving both the court and the parties time and
expense, and that Plaintiffs will not be prejudiced by a stay because the parties have
engaged in only minimal discovery. Defendant’s Memorandum at 1; Defendant’s Exh.
A at 3 (“Fisher-Price and Mattel’s Preliminary Infringement Contentions”). In opposition,
Plaintiffs assert they would be unduly prejudiced by a stay which would prevent
Plaintiffs from obtaining the requested permanent injunction against Defendant, thereby
dispossessing Plaintiffs of the ‘548 patent’s value which is set to expire in less than
5
three years, and that, contrary to Defendant’s assertion, significant discovery in this
action has occurred with document production complete except for those documents for
which the parties have recently obtained a protective order. Plaintiffs’ Response at 2-3.
In further support of its motion, Defendant maintains Plaintiffs’ assertions of prejudice
are not supported by allegations of lost market share and sales or price erosion, and
disputes Plaintiffs’ asserted concerns of lost market share and sales given that Plaintiff,
despite learning of Defendant’s alleged infringing products in September 2009, did not
file the instant action until December 7, 2010, and have not sought a preliminary
injunction. Defendant’s Reply at 2. Defendant further maintains that Plaintiffs have
failed to diligently pursue discovery. Id. at 3.
In a reexamination procedure, the PTO reconsiders the validity of an existing
patent. 35 U.S.C. §§ 301 et seq. “One purpose of the reexamination procedure is to
eliminate trial of that issue (when the claim is canceled) or to facilitate trial of that issue
by providing the district court with the expert view of the PTO (when a claim survives
the reexamination proceeding.” Gould v. Control Laser Corporation, 705 F.2d 1340,
1342 (Fed.Cir.), cert. denied, 464 U.S. 935 (1983). Because the reexamination of a
patent’s validity can facilitate or eliminate the need for trial of one or more issues,
parties often seek to stay patent infringement actions pending the outcome of patent
reexamination proceedings, especially where the litigation is at an early stage without
substantial progress toward trial. See, e.g., Spread Spectrum Screening LLC v.
Eastman Kodak Company, __ F.R.D. __; 2011 WL 3796182, at * 3 (W.D.N.Y. Aug. 26,
2011) (collecting cases).
A motion to stay litigation pending the PTO’s reexamination of a patent-in-suit is
6
committed to the district judge’s sound discretion. K.G. Motors, Inc. v. Specialized
Bicycle Components, Inc., 2009 WL 2179129, at *2 (W.D.N.Y. July 22, 2009) (citing
Xerox Corp. v. 3Com Corp., 69 F.Supp.2d 404, 406 (W.D.N.Y. 1999), appeal dismissed
by 243 F.3d 554 (Fed.Cir. 2000)). In determining whether to grant a stay, courts
consider the following factors:
(1) whether a stay would unduly prejudice or present a clear tactical
disadvantage to the non-moving party; (2) whether a stay will simplify the issues
in question and trial of the case; and (3) whether discovery is complete and
whether a trial date has been set.
Xerox Corp., 69 F.Supp.2d at 406 (citations omitted).3
In the instant case, these factors weigh against granting a stay.
First, Plaintiffs assert, Plaintiff’s Response at 5, and Defendant does not dispute,
the ‘548 patent is set to expire in November 2014. Because the patent reexamination
process, including an appeal, on average, takes more than four years to complete,4
which Defendants also do not dispute, as a practical matter, if the matter were stayed,
as Defendant requests, Plaintiff would be without the benefit of the patent, and the stay
would also eliminate any opportunity for Plaintiff to obtain injunctive relief. It is, of
course, well established that “[t]he essential attribute of a patent grant is that it provides
3
Although not separately enum erated as a relevant factor, the court also considers as relevant to
the decision whether to stay litigation pending reexam ination the tim e rem aining before the patent–in-suit
expires.
4
Both Plaintiffs and Defendant agree that the ex parte reexam ination process requires an
average of 25.4 m onths to com plete, Plaintiffs’ Response at 5; Defendant’s Exh. D at 3, with Plaintiffs
asserting, unchallenged by Defendant, that an appeal would take an additional 24 m onths. Plaintiff’s
Response at 5. The PTO’s decision upon ex parte reexam ination of a patent, however, can be appealed
only by the patentee. 35 U.S.C. § 306 (providing that patent owner m ay appeal ex parte reexam ination
procedures). Accordingly, the additional 24 m onths for an appeal of the PTO’s decision would be
necessary only if the PTO rules against Plaintiff by rejecting any of the ‘548 patent’s claim s.
7
a right to exclude competitors from infringing the patent.” Acumed LLC v. Stryker
Corporation, 551 F.3d 1323, 1328 (Fed. Cir. 2008) (citing 35 U.S.C. § 154(a)(1)
(providing that “[e]very patent shall . . . grant to the patentee . . . the right to exclude
others from making, using, offering for sale, or selling the invention throughout the
United States or importing the invention into the United States . . . .”). As such,
“infringement may cause a patentee irreparable harm not remedied by a reasonably
royalty.” Acumed LLC, 551 F.3d at 1328. Even a patentee’s licensing of the subject
patent to a competitor in exchange for royalties will not establish a lack of irreparable
harm by infringing activity by another, unlicensed competitor. Id. at 1328-29. Thus,
immediate equitable relief to prevent competing infringement is likely to be essential to
a patentee’s right to exclusive exercise of the patent.
Although to date, Plaintiffs have identified only Claims 1 and 10 of the ‘548
patent as being infringed upon by Defendant, the PTO is reexamining, at Defendant’s
request, Claims 1-4, 6, 10, 12-13, and 15-16 of the ‘548 patent. A stay of litigation
pending the PTO’s completion of the reexamination process would deprive Plaintiff of
the protection provided by the patent-in-suit, i.e., the ‘548 patent, including any
accompanying good will and reputation, throughout the reexamination of all claims
subject to the reexamination. Further, the PTO’s rejection of any one of the eleven
Claims subject to reexamination, whether or not at issue in the instant litigation, will
trigger Plaintiffs’ right to appeal.5 As Defendant points out, Defendant’s Memorandum
5
The court notes that Defendant’s request for ex parte reexam ination of an additional nine Claim s
of the ‘548 patent, beyond the two Plaintiffs have identified as being infringed, im plies the question of
whether Defendant’s request for ex parte reexam ination is, in actuality, a delaying tactic.
8
at 1, 77% of all patents subjected to ex parte reexamination emerge either canceled or
amended. See Inter Partes Reexamination of Patents: An Empirical Evaluation, 15
Texas Intellectual Property Law Journal 1, 5 (Fall 2006) (reporting PTO statistics of ex
parte reexaminations conducted between 1981 and 2003 show 26 % proceedings
resulted in all claims confirmed, 10 % resulted in all claims canceled, and 64 %
resulting in claims amended and allowed). Given the likelihood that the ex parte
reexamination process, including an appeal, will continue beyond the expiration of the
‘548 patent, this factor weighs in favor of rejecting a stay.
With regard to the second factor, the court does not find that the PTO’s decision
following ex parte reexamination of the patent-in-suit is likely to narrow or simplify the
issues for trial. In particular, whereas “[i]nter parte reexaminations provide a third party
the right to participate in the reexamination process and, thus, have a res judicata effect
on the third party requester in any subsequent or concurrent civil action . . . . [e]x parte
reexaminations . . . do not bar the requestor from relitigating the exact same issues in
district court.” eComsystems, Inc. v. Shared Marketing Services, Inc., 2011 WL
280942, at * 2 (M.D.Fla. Jan. 26, 2011) (citing 35 U.S.C. §§ 314-315). See also Nidec
Corporation v. LG Innotek Co., Ltd., 2009 WL 3673433, * (E.D.Tex. 2009) (“the ex
parte nature of the reexamination does not prevent Defendants from asserting the
same issues of invalidity currently before the USPTO. Thus, simplification of the issues
in this litigation will not necessarily result from reexamination.”); Tomco2 Equip Co. v.
S.E. Agri-Systems, Inc., 542 F.Supp.2d 1303, 1309 (N.D.Ga. 2008) (“an inter partes
reexamination, in contrast to the ex parte reexamination, has great potential for
9
simplifying issues. It has res judicata effect, and it allows the court to consider the
expertise of the PTO before making its own conclusions.”); and Anascape, Ltd. v.
Microsoft Corp., 475 F.Supp.2d 612, 616 (E.D.Tex. 2007) (“the newer inter partes
procedure is more likely to result in simplification, because both parties are bound by
the result. . . .”).
Moreover, the supposed factor of “‘awkwardness’”, i.e., if the PTO and the
district court reach different conclusions in an infringement action, is “‘more apparent
than real.’” Xerox Corp., 69 F.Supp.2d at 407 (quoting Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1428 (Fed. Cir. 1988)). In particular, “[t]he two forums take different approaches
in determining the invalidity and on the same evidence could quite correctly come to
different conclusions.” Id. In litigation before the district court, “a patent is presumed
valid and the party asserting invalidity must prove the facts to establish invalidity of
each claim by clear and convincing evidence.” Xerox Corp., 69 F.Supp.2d at 407 (citing
35 U.S.C. § 282, and Kaufman Co. v. Lantech, Inc., 807 F.2d 970, 974 (Fed.Cir.
1986)). In a reexamination process before the PTO, however, “there is no presumption
of validity and there must only be a preponderance of the evidence to show
nonpatentability before the PTO may reject the patent claim(s).” Id. (citing Quigg, 849
F.2d at 1427). Then, even where the PTO’s determination by preponderance of the
evidence invalidates a patent, no inconsistency arises upon a contrary finding by the
district court based on clear and convincing evidence. Furthermore, if the district court
determines a patent-in-suit is not invalid, the doctrine of collateral estoppel will not bar
the PTO’s continuation of the reexamination process because of the two different
standards of proof for determining invalidity. Id. at 407-08 (citing Quigg, 849 F.2d at
10
1429 n. 3). Nevertheless, if the district court determines the patent is invalid, and such
determination either is upheld on appeal, or is not appealed, the district court’s order
will have res judicata effect on the PTO’s reexamination process provided the
“‘patentee has had a full and fair chance to litigate the validity of his patent.’” Id.
Similarly, in the instant case, the possibility that the parties will be subject to conflicting
results in parallel proceedings before this court and the PTO is “more apparent than
real.” Quigg, 849 F.2d at 1428. The second factor thus weighs against a stay.
As for the third factor, although discovery has not been completed, nor the case
yet scheduled for trial, contrary to Defendant’s assertion, substantial discovery has
taken place, including interrogatories, formal infringement and validity contentions, and
document production. Plaintiffs’ Response at 10-11. Although Defendant asserts that
little fact discovery has been completed because Fisher-Price did not engage in any
discovery until after Defendant’s petition for reexamination was granted, Defendant’s
Reply at 6-7, that fact alone is not enough to warrant a stay given that the first two
factors, as well as the fact that little time remains before the ‘548 patent expires, weigh
so heavily in this case against a stay.
Defendant’s motion seeking to stay litigation pending the PTO’s ex parte
reexamination of the patent-in-suit is DENIED.
2.
Motion to Dismiss Third Counterclaim or for Judgment on the Pleadings
Plaintiffs move to dismiss Defendant’s Third Counterclaim asserting a qui tam
action for false marking in violation of 35 U.S.C. § 292 (“§ 292") on the basis that
recently enacted legislation has eliminated such actions. Plaintiffs’ Memorandum at 4.
11
Plaintiffs further contend that Defendant has failed to sufficiently allege the requisite
“competitive injury” for a § 292 claim. Id. at 5-8. In opposition, Defendant concedes
that insofar as its Third Counterclaim may be construed as a qui tam action seeking
one half of the statutory monetary damages available under § 292, such counterclaim is
no longer permitted as a result of its abolishment by the Leahy-Smith America Invents
Act (“AIA”), enacted September 16, 2011. Defendant’s Response at 4. Defendant
nevertheless maintains that because the Third Counterclaim seeks to remedy
Defendant’s own competitive injury attributable to Fisher-Price’s alleged false marking,
the Third Counterclaim sufficiently states a claim under § 292. Id. at 6-13. In further
support of their motion, Plaintiffs maintain that the Third Counterclaim fails to
sufficiently plead a competitive injury in accordance with the heightened pleading
standard applicable to § 292 claims. Plaintiffs’ Reply at 2-4.
Preliminarily, the court addresses Plaintiffs’ presentation of its motion as one
seeking to dismiss the Third Counterclaim pursuant to Rule 12(b)(6) for failure to state
a claim for which relief can be granted or, alternatively, for judgment on the pleadings
pursuant to Rule 12(c). The difference between the two motions is that a motion
pursuant to Rule 12(b)(6) seeking dismissal for failure to state a claim is made prior to
the filing of an answer to the claim for which dismissal is sought, whereas a motion
pursuant to Rule 12(c) seeking judgment on the pleadings is made after the relevant
pleadings are closed. In the instant case, because Plaintiffs, on September 12, 2011,
filed their Answer to Counterclaims (Doc. No. 28), including the Third Counterclaim
asserted for the first time in Defendant’s amended answer (Doc. No. 26), the pleadings
are closed and Plaintiffs’ motion, filed after their answer to the amended answer, is
12
considered as seeking judgment on the pleadings. The difference is, however, merely
academic because the same analysis applicable to a Fed.R.Civ.P. 12(b)(6) motion to
dismiss applies to a Fed.R.Civ.P. 12(c) motion for judgment on the pleadings.
Sheppard v. Beerman, 18 F.3d 147, 150 (2d Cir. 1994).
In particular, “‘[o]n a motion to dismiss or for judgment on the pleadings, [the
court] must accept all allegations in the complaint as true and draw all inferences in the
non-moving party’s favor.’” LaFaro v. New York Cardiothoracic Group, PLLC, 570 F.3d
471, 475 (2d Cir. 2009) (quoting Miller v. Wolpoff & Abramson, L.L.P., 321 F.3d 292,
300 (2d Cir. 2003) (bracketed material added and additional quotation omitted). On a
motion to dismiss under Rule 12(b), the court looks to the four corners of the complaint
and is required to accept the plaintiff's allegations as true and to construe those
allegations in the light most favorable to the plaintiff. Scheuer v. Rhodes, 416 U.S. 232,
236 (1974); Goldstein v. Pataki, 516 F.3d 50, 56 (2d Cir. 2008) (court is required to
liberally construe the complaint, accept as true all factual allegations in the complaint,
and draw all reasonable inferences in the plaintiff’s favor). “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, 556 U.S. 662, __; 129
S.Ct. 1937, 1949 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570
(2007)).
Generally, a motion for judgment on the pleadings must be based upon the
pleadings, and not on additional evidence submitted by any party. See Sira v. Morton,
380 F.3d 57, 66-67 (2d Cir. 2004) (observing that where moving party submits material
outside the pleadings in support of motion for judgment on the pleadings, the motion
13
should be converted to a motion for summary judgment). “A complaint is deemed to
include any written instrument attached to it as an exhibit, materials incorporated in it by
reference, and documents that, although not incorporated by reference, are ‘integral’ to
the complaint.” Sira, 380 F.3d at 67 (citing cases and Fed.R.Civ.P. 10(c) (“A copy of a
written instrument that is an exhibit to a pleading is a part of the pleading for all
purposes.”)). Where, however, a movant relies on papers outside the pleadings which
have not been incorporated by reference, the motion must be converted to one for
summary judgment. Hernandez v. Coffey, 582 F.3d 303, 307 (2d Cir. 2009) (“a district
court acts properly in converting a motion for judgment on the pleadings into a motion
for summary judgment when the motion presents matters outside the pleadings. . . .”).
In the instant case, although in connection with Plaintiffs’ motion, Plaintiffs and
Defendant have submitted for the court’s consideration exhibits neither attached to,
incorporated by reference into, nor integral to the Complaint, see, e.g., Plaintiffs’ Exhs.
A through F; Defendant’s Exhs. A through E, such submissions largely consist of copies
of legislation and cases cited by the parties in their respective motion papers. The sole
exceptions are Defendant’s Exh. A, consisting of Plaintiffs’ responses and objections to
Defendant’s second set of interrogatories, and C, consisting of a copy of a complaint
from an unrelated action. The court, however, has not found these exhibits necessary
to resolve the motion and the exhibits are excluded from the court’s consideration in
resolving the motion, thus obviating the need to convert Plaintiff’s motion to one for
summary judgment. Fed.R.Civ.P. 12(d) (“If, on a motion under Rule 12(b)(6) or 12(c),
matters outside the pleadings are presented to and not excluded by the court, the
motion must be treated as one for summary judgment under Rule 56.” (italics added)).
14
As relevant, § 292(a) prohibits an entity from engaging in false marking, i.e.,
improperly affixing a patent number onto a product, with the intention of deceiving the
public into believing the product is protected by the patent, and any entity engaged in
such false marking “[s]hall be fined not more than $ 500 for every such offense.” When
Defendant filed the amended answer on August 19, 2011, thereby asserting the Third
Counterclaim alleging Fisher-Price had falsely marked competing cradle swing products
with the ‘548 patent in violation of § 292, the statute then provided that a § 292 violation
could be sued as a qui tam action, specifically providing that “[a]ny person may sue for
the [statutory] penalty, in which event one-half shall go to the person suing and the
other to the use of the United States.” 35 U.S.C. § 292(b) (2010). On September 16,
2011, § 292 was amended by the AIA which specifically provides that “[o]nly the United
States may sue for the penalty authorized by this subsection,” 35 U.S.C. § 292(a),
thereby precluding qui tam actions for § 292 violations. Accordingly, judgment on the
pleadings should be GRANTED in favor of Plaintiffs insofar as Defendant asserts the
Third Counterclaim as a qui tam action.
Despite eliminating qui tam actions for false marking violations, the AIA further
amended § 292 by replacing the prior version of § 292(b)6 with a new provision that “a
person who has suffered a competitive injury as a result of a violation of this section
may file a civil action in a district court of the United States for recovery of damages
6
Prior to the Septem ber 16, 2011 am endm ent, § 292(b) provided for the qui tam action that was
elim inated by the Act.
15
adequate to compensate for the injury.” 35 U.S.C. § 292(b) (2011).7 Plaintiffs argue
that § 292(b)’s competitive injury provision requires that Defendant plead damages with
more specificity than would otherwise be required, including pleading facts indicating
that Defendant actually, rather than potentially, sustained a competitive injury as a
result of Fisher-Price’s alleged false markings. Plaintiffs’ Memorandum at 5-9. In
opposition to Plaintiffs’ motion, Defendant asserts that although its Third Counterclaim
was originally asserted as a qui tam action, the Third Counterclaim also may be
construed as seeking actual damages “to remedy Kids II’s own competitive injury”
attributed to Fisher-Price’s alleged false marking of competing cradle swing products,
for which § 292(b) in its present form provides. Defendant’s Response at 2, 6-13.
Defendant characterizes Plaintiffs’ argument that Defendant has failed to sufficiently
plead a competitive injury as requiring Defendant “prove that it suffered a competitive
injury under the AIA at the initial pleadings stage.” Id.8 Defendant further maintains
7
Nothing in either the text or legislative history of the AIA suggests any am endm ent to the two
required elem ents for a § 292 false m arking claim , including “(1) m arking an unpatented article and (2)
intent to deceive the public.” Forest Group, Inc. v. Bon Tool Company, 590 F.3d 1295, 1300 (Fed.Cir.
2009) (citing Clontech Labs. Inc. v. Invitrogen Corp., 403 F.3d 1347, 1352 (Fed. Cir. 2005)). Furtherm ore,
a plain reading of the Third Counterclaim establishes Defendant has alleged Fisher-Price falsely m arked
certain cradle swing products with the ‘548 patent “with the purpose of deceiving the public and
suppression com petition,” Am ended Answer ¶ 48, and that “Fisher-Price knew or reasonably should have
known that the Accused Fisher-Price Swing Products are not covered by any claim of the ‘548 Patent.” Id.
¶ 50. Accordingly, Defendant has sufficiently alleged both elem ents for a false m arking claim in violation
of § 292, and Plaintiffs do not argue otherwise.
8
Insofar as Defendant m aintains, Defendant’s Response at 3-4, sim ilar argum ents Plaintiffs
proffered in opposition to Defendant’s m otion (Doc. No. 20) seeking leave to file the am ended answer
asserting the Third Counterclaim were already rejected by the undersigned in granting Defendant’s m otion
to am end by Text Order entered August 12, 2011 (Doc. No. 25), the court’s scrutiny on the instant
contested m otion seeking judgm ent on the pleadings is aided by the fact that when Defendant sought
leave to file the am ended answer, the AIA had yet to be finalized and, as such, it’s full im pact on the then
proposed Third Counterclaim was not known such that it was not possible to determ ine whether the Third
Counterclaim was futile and should be denied. See In re Tamoxifen Citrate Antitrust Litigation, 466 F.3d
187, 220 (2d Cir. 2006) (“where am endm ent would be futile, denial of leave to am end is proper.”). Thus,
that the court perm itted the Third Counterclaim to proceed on Defendant’s m otion to am end is irrelevant to
the present issues raised by Plaintiffs.
16
that Plaintiffs’ insistence that Defendant must plead how it was injured or elaborate on
the nature of such injury, Plaintiffs seek to hold Defendant “to a higher pleading
standard that what is required under Twombly and its progeny.” Id. at 8. In further
support of judgment on the pleadings, Plaintiffs maintain that the “competitive injury”
must be pleaded with “more than labels or conclusions.” Plaintiffs’ Reply at 2-4.
Plaintiffs, however, maintain that because Defendant has marketed and sold
cradle swing products despite Fisher-Price’s alleged false markings, and does not claim
the alleged false markings have prevented or discouraged Defendant from selling its
own cradle swing products, Defendant has not, and cannot, allege any competitive
injury under the Act. Plaintiffs’ Memorandum at 7. Defendant maintains that its
allegations regarding competitive injury are substantially similar to those held sufficient
to survive a motion to dismiss in the only relevant opinion published since the
enactment of the Act that addresses this issue, i.e., Fasteners for Retail, Inc. v.
Andersen, 2011 WL 5130445 6 (N.D.Ill. Oct. 28, 2011). Defendant’s Response at 10.
Defendant further maintains that the “competitive injury” standard in other contexts is
more relaxed than that demanded by Plaintiffs. Id. at 11-13. In further support of their
motion, Plaintiffs argue that Defendant has misrepresented the facts of Fasteners for
Retail with regard to “competitive injury” because in that case, the defendant also
alleged it had been injured because the allegedly falsely marked products deterred
customers from using competing products. Plaintiffs’ Response at 3.
In Fasteners for Retail, the court held that a defendant’s allegations, asserted in
a counterclaim, that the plaintiff’s false marking “is likely to, or at least has the tendency
to, discourage and deter persons and companies, such as [the defendant] from
17
commercializing competing products and deters consumers from using competing
products,” sufficient to survive the plaintiff’s motion to dismiss. Fasteners for Retail, Inc.
2011 WL 5130445, at * 6. The court surmises that the language “deters customers
from using competing products” was construed as establishing the defendant was
competitively injured each time a consumer chose to purchase the plaintiff’s allegedly
falsely marked product rather than a competing product manufactured by the
defendant.
As enacted, § 292(b) is properly construed as providing for a “competitive injury”
claim to be brought by a party seeking to gain entry into a market that has been
wrongfully blocked by a competitor’s falsely marking of products with inapplicable
patent markings. Although the term “competitive injury” is not defined in the Act, its
legislative history establishes that the “competitive injury” cause of action was intended
as a replacement for qui tam actions, the litigation of which was subject to abuse by
those with no desire to compete in any particular market, but who viewed a false
marking qui tam action as merely a for-profit endeavor. In particular,
The America Invents Act reins in abuses that are reflected in a recent surge in
false marking litigation. It allows such suits to be brought only by those parties
who have actually suffered a competitive injury as a result of false marking.
Currently, such suits are often brought by parties asserting no actual competitive
injury from the marking – or who did not even patent or manufacture anything in
a relevant industry. Many cases have been brought by patent lawyers
themselves claiming the right to enforce a fine of $ 500 for every marked
product.
157 Cong. Rec. S5319 -5321, at 5320 (daily ed. Sept. 6, 2011, S5319) (statement of
Sen. Kyl). Defendant’s Exh. D .
The court therefore considers whether Defendant has plausibly alleged it suffered a
“competitive injury as § 292 requires.
18
In the absence of any enacted definitional elements, the court is guided by the
plain meaning of Congress’s enactment.9 Natural Resources Defense Council, Inc. v.
Muszynski, 268 F.3d 91, 98 (2d Cir. 2001) (“If the plain meaning of a statute is
susceptible to two or more reasonable meanings, i.e., if it is ambiguous, then a court
may resort to the canons of statutory construction.”). “Competitive,” according to
Webster’s,10 in the context of economic activity, means a market condition wherein two
or more persons or organizations “exist in rivalry of economic endeavor and without the
presence of monopoly or collusion.” Webster’s Third New International Dictionary at
464. Thus, a competitor is “one that is engaged in selling or buying goods or services
in the same market as another.” Id. “Injury,” of course, broadly implies a right of
recovery for loss or impairment of a right or damage to property. Id. at 1164.
Accordingly, given the plain meaning of § 292, by reference to its terms, in order to
withstand Plaintiffs’ motion against Defendant’s Third Counterclaim, Defendant must
allege sufficient facts to plausibly establish that, as a result of Fisher-Price’s mismarking
of its cradle swings with the ‘548 patent, Defendant’s ability to compete against
9
The allegations in the Third Counterclaim that Defendant identifies as setting forth the basis for
its “com petitive injury” claim include
¶ 65.
¶ 66.
¶ 68.
Upon inform ation and belief, Fisher-Price intentionally included the ‘548 patent on the
Accused Fisher-Price Swing Products in an attem pt to prevent com petitors from m aking
or selling sim ilar or com peting products.
Each false m arking on Accused Fisher-Price Swing Products is likely to, or at least has
the potential to, discourage or deter persons or com panies from m aking or selling sim ilar
or com peting products.
Thus, by m arking and continuing to m ark the Accused Fisher-Price Swing Products with
the ‘548 patent without a reasonable belief that such articles were covered by the patents,
Fisher-Price has . . . discouraged com petition and innovation in com peting products.
Defendant’s Response at 10 (quoting Am ended Answer ¶¶ 65, 66 and 68).
10
W ebster’s Third New International Dictionary Unabridged.
19
Plaintiffs in the marked for purchasers of such products was impaired, resulting in
tangible economic loss to Defendant.11 Defendant’s allegations, however, fail to do so.
First, the pleadings indicate Defendant is, and apparently has, engaged in actual
competition against Fisher-Price in the relevant market. Specifically, given Defendant’s
First Counterclaim alleges “[a]n actual case or controversy exists between Plaintiffs and
Kids II as to whether Kids II infringes the ‘548 patent,” Amended Answer § 35, and
seeks a declaration that its conduct in selling the competing cradle swings does not
infringe on the ‘548 patent, Amended Answer ¶¶ 36-37, Defendant has admitted
directly competing with Plaintiffs in the cradle swing market. Because Defendant is
competing in the cradle swing market, it is difficult for the court to perceive how
Defendant has in fact been “competitively injured” by any “false marking” by FisherPrice with the ‘ 548 patent. Rather, that Defendant has manufactured and sold
competing products, allegedly in violation of the ‘548 patent, establishes that Defendant
has not been deterred or discouraged from manufacturing competing cradle swing
products in the relevant market for such products. Thus, Defendant has not,
presumably because it cannot, alleged that Fisher-Price’s asserted mismarking has
prevented or frustrated Defendant’s efforts to enter this market.
Second, no factual allegation endeavors to allege how, if Defendant, consistent
11
The court notes that the phrase “com petitive injury” has been sim ilarly defined in the context of
other m arket-regulating statutes. See, e.g., Famous Horse Inc. v. 5th Avenue Photo Inc., 624 F.3d 106,
113-14 (2d Cir. 2010) (holding allegation that plaintiff clothing retailer lost sales to lower-priced counterfeit
garm ents sold by defendant wholesaler constituted a “com petitive injury” for a Lanham Act tradem ark
infringem ent claim ); and United Magazine Company, Inc. v. Curtis Circulation Company, 279 Fed.Appx.
14, 17-18 (2d Cir. 2008) (holding plaintiff wholesaler lacked standing to bring claim against national
distributor for violation of Robinson-Patm an Price Discrim ination Act based on defendant distributor’s
alleged policy favoring plaintiff wholesaler’s com petitor where wholesaler and alleged com petitor, although
direct com petitors for som e bid contracts, were not in head-to-head com petition for the subject bid, such
that the alleged price discrim ination did not substantially affect com petition between the two com petitors).
20
with and as admitted by Defendant’s pleading, is presently engaged in such
competition, Fisher-Price’s alleged mismarking has, in fact, hindered or diminished
Defendant’s success in such competition, or threatens to proximately force Defendant
to exit the market. As such, Defendant has not presently alleged sufficient facts making
it plausible to find Plaintiff’s alleged mismarking has resulted in Defendant suffering a
competitive injury, a required element of recovery under § 292.
Nor is there any merit to Defendant’s assertion, Defendant’s Response at 11,
that, without discovery, it is unable to determine that it has suffered a competitive injury
attributable to the alleged false marking. Rather, if Fisher-Price’s alleged false marking
of its cradle swing products has discouraged or deterred Defendant from manufacturing
or marketing competing cradle swing products, Defendant would or should be in
possession of such information without resort to discovery from Plaintiffs. Accordingly,
Defendant has not plausibly alleged a competitive injury claim and, furthermore, may
have pleaded itself out of court as to the Third Counterclaim.12
Plaintiffs’ motion for judgment on the pleadings as to the Third Counterclaim
should be GRANTED without prejudice and with leave to replead within 30 days of the
date of this Decision and Order and Report and Recommendation.
12
In contrast, it is not possible to discern from the opinion in Fasteners of Retail, Inc., whether the
products which the defendant alleged in its counterclaim were falsely m arked were the sam e products on
which the plaintiff’s patent infringem ent claim s against the defendant were predicated.
21
CONCLUSION
Based on the foregoing, Defendant’s motion seeking to stay litigation pending
reexamination of the patent-in-suit (Doc. No. 35) is DENIED; Plaintiffs motion to dismiss
for failure to state a claim or, alternatively, for judgment on the pleadings as to
Defendant’s third counterclaim (Doc. No. 32) should be GRANTED, without prejudice
and with leave to replead within 30 days of the date of this Decision and Order and
Report and Recommendation.
SO ORDERED, as to Defendant’s motion
seeking to stay litigation.
/s/ Leslie G. Foschio
LESLIE G. FOSCHIO
UNITED STATES MAGISTRATE JUDGE
Respectfully submitted, as to Plaintiffs’ motion
for judgment on the pleadings,
/s/ Leslie G. Foschio
LESLIE G. FOSCHIO
UNITED STATES MAGISTRATE JUDGE
DATED:
December 21, 2011
Buffalo, New York
22
ORDERED that this Report and Recommendation be filed with the Clerk of the
Court.
ANY OBJECTIONS to this Report and Recommendation must be filed with the
Clerk of the Court within fourteen (14) days of service of this Report and
Recommendation in accordance with the above statute, Rules 72(b), 6(a) and 6(d) of
the Federal Rules of Civil Procedure and Local Rule 72.3.
Failure to file objections within the specified time or to request an
extension of such time waives the right to appeal the District Court's Order.
Thomas v. Arn, 474 U.S. 140 (1985); Small v. Secretary of Health and Human
Services, 892 F.2d 15 (2d Cir. 1989); Wesolek v. Canadair Limited, 838 F.2d 55 (2d
Cir. 1988).
Let the Clerk send a copy of this Report and Recommendation to the attorneys
for the Plaintiff and the Defendants.
SO ORDERED.
/s/ Leslie G. Foschio
LESLIE G. FOSCHIO
UNITED STATES MAGISTRATE JUDGE
DATED:
December 21, 2011
Buffalo, New York
23
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