L.M. Sessler Excavating and Wrecking, Inc. v. Bette & Cring, LLC

Filing 25

DECISION AND ORDER: Defendant's 20 Motion to Dismiss Plaintiff's Amended Complaint is GRANTED, and Plaintiff's 16 Amended Complaint is DISMISSED. SO ORDERED. Signed by Hon. Frank P. Geraci, Jr. on 10/17/17. (KSB)-CLERK TO FOLLOW UP-

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NEW YORK
L.M. SESSLER EXCAVATING AND
WRECKING, INC.,
Plaintiff,
Case # 16-CV-06534-FPG
v.
DECISION AND ORDER
BETTE & CRING, LLC,
Defendant.

INTRODUCTION
Plaintiff L.M. Sessler Excavating and Wrecking, Inc. (“Plaintiff”) brings this action for
patent infringement against Defendant Bette & Cring, LLC (“Defendant”) pursuant to Title 35 of
the U.S. Code. ECF No. 16, at 1. Plaintiff alleges that Defendant (1) directly infringed, and
continues to directly infringe, its patented process for bridge demolition; (2) induced others
involved with New York State Thruway Department of Transportation (“NYSDOT”) Contract No:
TAA 15-34B/D214390 to infringe the patent; and (3) contributed to others’ infringement by
providing those participants with the truck assembly described in the patent. Id. at 2–3.
Plaintiff filed its initial complaint on August 2, 2016. ECF No. 1. On August 26, 2016,
Defendant moved to dismiss that complaint pursuant to Federal Rule of Civil Procedure 12(b)(6).
ECF No. 8. Plaintiff responded by filing its Amended Complaint on September 16, 2016. ECF No.
16. On October 11, 2016, Defendant moved to dismiss Plaintiff’s Amended Complaint pursuant
to Federal Rule of Civil Procedure 12(b)(6). ECF No. 20. For the reasons that follow, Defendant’s
Motion to Dismiss is GRANTED, and this action is DISMISSED.

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BACKGROUND
Plaintiff is a corporation organized under the laws of New York, and its principal place of
business is located in Waterloo, New York. ECF No. 16, at 1. Plaintiff owns U.S. Patent No.
6,155,649 (“the ‘649 patent”), which details a process for bridge demolition. Id. at 2. Defendant is
a limited liability company organized under the laws of New York, and its principal place of
business is located in Latham, New York. Id. at 1. Plaintiff alleges that Defendant’s activities have
infringed, and continue to infringe, the ‘649 patent. Id. at 2–4.
The ‘649 patent protects a process for bridge demolition via a particular truck assembly.
ECF No. 16-1, at 10. Specifically, claim 1 of the ‘649 patent reads as follows:
A process for demolishing a bridge deck by means of a truck assembly equipped with a
receptacle comprised of a right side and a left side, a first wing rotatably connected to said
right side of said receptacle, comprising the steps of: (a) disposing said truck assembly
beneath said bridge deck, (b) rotating said first wing upwardly and outwardly from said
right side of said receptacle to a first position, (c) supporting said first wing in said first
position by means of a support contiguous with said first wing, (d) demolishing said bridge
deck and causing debris to fall therefrom, (d) [sic] receiving said debris from said bridge
deck within said receptacle, (e) [sic] ceasing supporting said first wing in said first position
and moving said first wing downwardly and inwardly towards said right side of said
receptacle, (f) [sic] moving said truck assembly, and (g) [sic] removing said debris from
said receptacle.

Id. at 9. Plaintiff alleges that Defendant has directly infringed, and continues to directly infringe,
the ‘649 patent in connection with its work on NYSDOT Contract No: TAA 15-34B/D214390.
ECF No. 16, at 2. In paragraph 9 of its Amended Complaint, Plaintiff offers the following
description of the allegedly infringing process:
[The process] is accomplished by means of a truck assembly equipped with a receptacle
comprised of a right side, a left side, and a first wing rotatably connected to the right side
of the receptacle, and comprises the steps of: disposing the truck assembly beneath the
bridge deck; rotating the first wing upwardly and outwardly from the right side of the
receptacle to a first position; supporting the first wing in the first position by means of a
support continuous with the first wing; demolishing the bridge deck and causing debris to
fall therefrom; receiving debris from the bridge deck within the receptacle; ceasing
supporting the first wing in the first position and moving the first wing downwardly and
inwardly towards the right side of the receptacle; moving the truck assembly; and
removing the debris from the receptacle.

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Id. at 2–3. Plaintiff also asserts that, in the alternative, Defendant is liable on theories of induced
and contributory infringement. Id. at 3. For all three grounds, Plaintiff additionally claims that
Defendant’s infringement was willful. 1 Id. at 4.
LEGAL STANDARD
In ruling on a 12(b)(6) motion to dismiss for patent infringement claims, the law of the
regional circuit governs. McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1355–56 (Fed. Cir. 2007)
(“A motion to dismiss for failure to state a claim upon which relief can be granted is a purely
procedural question not pertaining to patent law.”). Although some courts appear to treat Federal
Circuit decisions as authoritative on this pleading standard, the proper guidance in this case should
come from the lead of the Second Circuit. See, e.g., Regeneron Pharm., Inc. v. Merus B.V., No.
14-cv-1650 (KBF), 2014 WL 2795461, at *1 & n.1 (S.D.N.Y. June 19, 2014); see also McZeal,
501 F.3d at 1356 (“[O]n review we apply the law of the regional circuit.”).
As a general matter, Federal Rule of Civil Procedure 8(a)(2) instructs that a complaint must
include “a short and plain statement of the claim showing that the pleader is entitled to relief.” In
Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007), and Ashcroft v. Iqbal, 556 U.S. 662 (2009),
the Supreme Court clarified the requirements of Rule 8(a)(2) for “all civil actions.” Iqbal, 556 U.S.
at 684. To be sufficient, a pleading “does not require ‘detailed factual allegations,’ but it demands
more than an unadorned, the-defendant-unlawfully-harmed-me accusation.” Id. at 678 (quoting
Twombly, 550 U.S. at 555). In that vein, “[a] pleading that offers ‘labels and conclusions’ or ‘a
formulaic recitation of the elements of a cause of action will not do.’ ” Id. (quoting Twombly, 550

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Willfulness speaks to the nature of the infringement—it is a basis for enhancing damages, not a theory of liability in
itself. See 35 U.S.C. § 284. Plaintiff’s allegation of willful infringement is not addressed in Defendant’s Motion to
Dismiss or either of the subsequent memoranda. As discussed below, however, the claims of infringement are not
adequately pleaded, so the Court need not reach this issue.

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U.S. at 555). Rather, “a complaint must contain sufficient factual matter, accepted as true, to ‘state
a claim to relief that is plausible on its face.’ ” Id. (quoting Twombly, 550 U.S. at 570). That
measure of plausibility requires “more than a sheer possibility that a defendant has acted
unlawfully”—the pleaded facts must permit a “reasonable inference” of liability for the alleged
misconduct. Id.; see also Faber v. Metro. Life Ins. Co., 648 F.3d 98, 104 (2d Cir. 2011) (instructing
that “all reasonable inferences” are to be taken in the plaintiff’s favor). Beyond the facts alleged
in the complaint, a court may also consider “documents attached to the complaint as exhibits[] and
documents incorporated by reference in the complaint.” DiFolco v. MSNBC Cable L.L.C., 622
F.3d 104, 111 (2d Cir. 2010).
I.

Direct Patent Infringement
The current pleading standard for claims of direct patent infringement remains unresolved

in the Second Circuit. While Iqbal and Twombly clarified the basic contours of Rule 8(a)(2), courts
remained divided as to the cases’ effect on claims of direct patent infringement. Prior to December
1, 2015, some courts maintained that the then-existing Federal Rule of Civil Procedure 84 and
accompanying Form 18 signaled the prevailing pleading requirements. 2 See, e.g., K-Tech
Telecomms., Inc. v. Time Warner Cable, Inc., 714 F.3d 1277, 1283–84 (Fed. Cir. 2013) (citing In
re Bill of Lading, 681 F.3d 1323 (Fed. Cir. 2012) (applying Sixth Circuit law)) (applying Ninth
Circuit law). On December 1, 2015, Congress abrogated Rule 84 and the appended Form 18. E.g.,
Gym Door Repairs, Inc. v. Young Equip. Sales, Inc., 206 F. Supp. 3d 869, 891 (S.D.N.Y. 2016).

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The former Rule 84 provided that the pleading forms appended to the Federal Rules of Civil Procedure “suffice
under these rules and illustrate the simplicity and brevity that these rules contemplate.” Fed. R. Civ. P. 84 (abrogated
2015). The only information required by Form 18 included
(1) an allegation of jurisdiction; (2) a statement that the plaintiff owns the patent; (3) a statement
that the 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.
Gradient Enters., Inc. v. Skype Techs. S.A., 848 F. Supp. 2d 404, 407 (W.D.N.Y. 2012).

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Congress noted, however, that the abrogation “d[id] not alter existing pleading standards or
otherwise change the requirements of Civil Rule 8.” Fed. R. Civ. P. 84 advisory committee’s note
to 2015 amendment (abrogated 2015). As a result, at least one district court has maintained that
the requirements of the former Form 18 still dictate the standard for pleading the direct
infringement of a patent. See Hologram USA, Inc. v. Pulse Evolution Corp., No. 2:14-cv-0772GMN-NJK, 2016 WL 199417, at *2–3 & *2 n.1 (D. Nev. Jan. 15, 2016).
Before the abrogation of Rule 84, the Second Circuit had not spoken to the relationship
between Rule 84, Form 18, and Twombly and Iqbal. See Lyda v. CBS Corp., No. 14-CV-6572
(VEC), 2015 WL 4393120, at *2 (S.D.N.Y. July 16, 2015); Regeneron, 2014 WL 2795461, at *1.
Courts in this district called attention to the issue, but no definitive direction emerged. 3 Compare,
e.g., Automated Transactions, LLC v. First Niagara Fin. Grp., Inc., No. 10-CV-00407(A)(M),
2010 WL 5819060, at *2–5 (W.D.N.Y. Aug. 31, 2010), adopted, 2011 WL 601559 (W.D.N.Y.
Feb. 11, 2011) (“[R]econciling the dictates of Twombly and Iqbal with the Appendix Forms is not
merely difficult, it is impossible. . . . [U]nless or until Rule 84 is amended . . . the sufficiency of [a
plaintiff’s] direct infringement allegations is governed by Appendix Form 18 . . . .”), with Gradient
Enters., Inc. v. Skype Techs. S.A., 848 F. Supp. 2d 404, 407–08 (W.D.N.Y. 2012) (flagging the
disagreement among lower courts and citing “either standard” as warranting dismissal). Since Rule
84’s abrogation, the Second Circuit has not addressed the standard for pleading claims of direct
infringement, see Gym Door Repairs, 206 F. Supp. 3d at 891, nor has the Federal Circuit

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In Lyda v. CBS Corp., 838 F.3d 1331 (Fed. Cir. 2016), the Federal Circuit invoked “the law of . . . the Second Circuit”
to reason that the Form 18 standard governed pre-abrogation. Id. at 1337–38 & 1337 n.2. The cases upon which it
then relied, however, were those in which it had applied the laws of other circuits. See id. at 1337–38 (citing K-Tech,
714 F.3d 1277 (applying Ninth Circuit law), and In re Bill of Lading, 681 F.3d 1323 (applying Sixth Circuit law)).
The Federal Circuit addressed this concern in K-Tech, maintaining that its “decision regarding the requirements of
Form 18 and its relationship to the pleading standards set forth in Twombly and Iqbal was dictated by Supreme Court
precedent.” K-Tech, 714 F.3d at 1283 n.1 (noting that its determination of Form 18’s precedence would be “no
different” for any circuit). It is worth noting, then, that Lyda does not provide definitive guidance as to the preabrogation approach of the Second Circuit.

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interpreted the Second Circuit’s likely approach. Accordingly, the matter appears to be one of first
impression in this district.
A number of courts to address the post-abrogation standard have reasoned that the higher
bar of Twombly and Iqbal is the proper one. E.g., Crypto Research, LLC v. Assay Abloy, Inc., 236
F. Supp. 3d 671, 685 (E.D.N.Y. 2017) (“As a result of [the 2015] change, most courts to consider
the question have concluded that the Twombly pleading standard now applies to direct
infringement claims.”); Gym Door Repairs, 206 F. Supp. 3d at 891–92. This Court agrees. The
abrogation of Rule 84 and Form 18 erased any ambiguity regarding Twombly and Iqbal’s clear
application to “all civil actions.” See, e.g., Cont’l Circuits LLC v. Intel Corp., No. CV16-2026
PHX DGC, 2017 WL 679116, at *3–4 & *4 n.5 (D. Ariz. Feb. 21, 2017) (concluding the same and
interpreting pre-abrogation Advisory Committee deliberations); e.Digital Corp. v. iBaby Labs,
Inc., No. 15-cv-05790-JST, 2016 WL 4427209, at *2–3 (N.D. Cal. Aug. 22, 2016) (addressing the
Hologram court’s application of the Form 18 standard). Thus, the proper measure for pleading a
claim of direct patent infringement is the standard articulated in Twombly and Iqbal.
II.

Indirect Infringement
With respect to claims of indirect patent infringement—here, contributory and induced

infringement—courts have repeatedly agreed that the pleading standard of Twombly and Iqbal
governs. See, e.g., Pecorino v. Vutec Corp., 934 F. Supp. 2d 422, 446 (E.D.N.Y. 2012); Gradient
Enters., 848 F. Supp. 2d at 408–09.
DISCUSSION
I.

Direct Infringement Claim
Plaintiff alleges that Defendant has directly infringed, and continues to directly infringe,

claim 1 of the ‘649 patent, Plaintiff’s process for bridge demolition. Section 271(a) of the Patent

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Act provides, “Except as otherwise provided in this title, whoever without authority makes, uses,
offers to sell, or sells any patented invention, within the United States or imports into the United
States any patented invention during the term of the patent therefor, infringes the patent.” 35 U.S.C.
§ 271(a). To state a claim for direct infringement, a plaintiff must plead facts indicating that “all
steps of [the] claimed method are performed by or attributable to a single entity.” See Akamai
Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015) (en banc) (per
curiam).
Here, Plaintiff fails to satisfy the pleading standard for its direct infringement claim.
Although Plaintiff specifies the relevant NYSDOT contract and alleges that Defendant performed
each step of the patent claim at issue, it does so using exactly—and entirely—its own patent
language. To the extent Plaintiff addresses every element, it is only by parroting the patent claim
and prefacing it with an introductory attribution to Defendant. Under Twombly and Iqbal, Plaintiff
must do more than offer mere “labels and conclusions.” See Iqbal, 556 U.S. at 678 (quoting
Twombly, 550 U.S. at 555). By describing Defendant’s conduct solely in the words of its own
patent, Plaintiff implicitly concludes that Defendant’s process necessarily meets every element of
the patent claim—a legal determination, not a factual allegation. 4
Plaintiff maintains that being forced to describe the patent differently would leave it “in
the untenable position of having to use imprecise wording to avoid dismissal.” ECF No. 21, at 6.

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By way of example, Defendant’s pleadings represent an inverted form of the pleadings at issue in Automated
Transactions, 2010 WL 5819060. In Automated Transactions, the plaintiff recited the elements of its patent claims
and alleged that the defendant was “using ATMs within this judicial district and elsewhere in the United States which
incorporate every element of the above claims or substantial equivalents thereof.” Second Amended Complaint and
Jury Demand for Patent Infringement at 2–3, Automated Transactions, LLC v. First Niagara Fin. Grp., Inc., No. 10CV-00408(A)(M) (W.D.N.Y. Aug. 31, 2010), ECF No. 59. While the court determined that the pleadings met the
Form 18 standard, it reasoned that they would have failed the Twombly and Iqbal standard. Automated Transactions,
2010 WL 5819060, at *2, *5–6. In this case, Plaintiff does identify the specific NYSDOT contract connected to the
activity at issue. However, Plaintiff then recites the elements of its patent claim, verbatim, as its description of
Defendant’s alleged conduct—a structural difference from Automated Transactions, but the same rote recitation and
conclusory attribution.

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But Plaintiff’s own arguments reveal otherwise: in its Memorandum of Law in Opposition,
Plaintiff summarizes Defendant’s process without simply repeating the words of its patent claim.
Id. at 5. There is a notable difference between using patent language to aid in a description and
invoking a rote recitation of the patent claim at issue. The former may be permissible; the latter
becomes conclusory. Compare Avago Techs. Gen. IP (Sing.) PTE Ltd. v. Asustek Comput., Inc.,
No. 16-cv-00451-EMC, 2016 WL 1623920, at *4 (N.D. Cal. Apr. 25, 2016), with Comcast Cable
Comms., LLC v. OpenTV, Inc., 319 F.R.D. 269, 274–75 (N.D. Cal. 2017) (“[W]hile Avago rejected
the notion that ‘a patent infringement complaint that largely tracks the language of the claims to
allege infringement is insufficient per se,’ it did not endorse the very different proposition . . . that
a patent infringement . . . complaint that only tracks the language of the asserted claims is sufficient
per se. . . . [T]he operative complaint in Avago contained more than conclusory allegations that
merely tracked the language of the asserted claims.” (emphases in original)). Reliance on the patent
language alone to describe Defendant’s alleged conduct renders Plaintiff’s claim a legal conclusion
insufficient to meet the pleading standard of Twombly and Iqbal.
II.

Indirect Infringement Claims
Plaintiff maintains that, in the alternative, Defendant is liable under a theory of induced

infringement. Section 271(b) of the Patent Act instructs that “[w]hoever actively induces
infringement of a patent shall be liable as an infringer.” 35 U.S.C. § 271(b). For a claim of induced
infringement to survive a motion to dismiss, the complaint must include facts that show “there has
been direct infringement, and second that the alleged infringer knowingly induced infringement
and possessed specific intent to encourage another’s infringement.” Gradient Enters., 848 F. Supp.
2d at 408–09 (quoting Eon Corp. IP Holdings LLC v. FLO TV Inc., 802 F. Supp. 2d 527, 533 (D.
Del. 2011)).

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Plaintiff also advances an alternative allegation of liability for contributory infringement.
Section 271(c) of the Patent Act dictates,
Whoever offers to sell or sells within the United States or imports into the United States a
component of a patented machine, manufacture, combination or composition, or a material
or apparatus for use in practicing a patented process, constituting a material part of the
invention, knowing the same to be especially made or especially adapted for use in an
infringement of such patent, and not a staple article or commodity of commerce suitable
for substantial noninfringing use, shall be liable as a contributory infringer.

35 U.S.C. § 271(c). To sufficiently plead contributory infringement, a plaintiff must allege facts
showing “1) that there is direct infringement, 2) that the accused infringer had knowledge of the
patent, 3) that the component has no substantial noninfringing uses, and (4) that the component is
a material part of the invention.” Medgraph, Inc. v. Medtronic, Inc., 111 F. Supp. 3d 346, 352
(W.D.N.Y. 2015) (quoting Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1326 (Fed. Cir. 2010)).
Both induced infringement and contributory infringement claims require an adequate
pleading of direct infringement. With respect to its induced infringement claim, Plaintiff alleges
that “other participants in the work connected with [the NYSDOT contract] . . . use[d] the
infringing bridge demolition process described in paragraph 9 of this Amended Complaint.” ECF
No. 16, at 3. Similarly, for its contributory infringement claim, Plaintiff maintains that “other
participants in the work connected with [the NYSDOT contract] . . . use[d] the truck assembly
described in paragraph 9 of this Amended Complaint as a material component in carrying out an
infringing bridge demolition process comprising the steps set forth in paragraph 9 of this Amended
Complaint.” Id. In simply referencing the description from its direct infringement claim, Plaintiff’s
induced and contributory infringement claims suffer the same fate. The Court need not address the

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sufficiency question any further, since the requisite claims of direct infringement have not been
adequately pleaded. 5
CONCLUSION
For the reasons stated, Defendant’s Motion to Dismiss Plaintiff’s Amended Complaint
(ECF No. 20) is GRANTED, and Plaintiff’s Amended Complaint (ECF No. 16) is DISMISSED.
The Clerk of the Court is directed to close this case.
IT IS SO ORDERED.
Dated: October 17, 2017
Rochester, New York
______________________________________
HON. FRANK P. GERACI, JR.
Chief Judge
United States District Court

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Notably, however, the claim that “others” used the process would also need to clearly allege that each participant
performed every element of that claimed process; reliance on a combination of actors would implicate additional
requirements. See Akamai, 797 F.3d at 1022–23.

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