Lutron Electronics v. Crestron Electronics et al

Filing 319

MEMORANDUM DECISION and Order-granting 206 Motion to Dismiss for Failure to State a Claim. See order for details. Signed by Judge Clark Waddoups on 8/6/12. (jmr)

IN THE UNITED STATES DISTRICT COURT
DISTRICT OF UTAH, CENTRAL DIVISION

LUTRON ELECTRONICS CO., INC.,

MEMORANDUM DECISION
AND ORDER

Plaintiff,
v.

Case No. 2:09-cv-707

CRESTRON ELECTRONICS, INC.,

Judge Clark Waddoups

Defendant.

INTRODUCTION
Defendant Crestron Electronics, Inc. (“Crestron”) filed an amended counterclaim against
Lutron Electronics Co., Inc. (“Lutron”), alleging false patent marking in violation of 35 U.S.C. §
292 (“§ 292” or “the false marking statute”) (Dkt. No. 197). Before the court is Lutron’s motion
to dismiss Crestron’s counterclaim for failure to state a claim upon which relief can be granted
pursuant to Federal Rules of Civil Procedure 9(b) and 12(b)(6) (Dkt. No. 206). For the reasons
stated herein the court GRANTS Lutron’s motion to dismiss.1
FACTUAL BACKGROUND
Crestron and Lutron are alleged to be corporate competitors in the electric and electronic
control products industry. Two of Lutron’s brochures, the Specification Guide and the Wallbox
Lighting Controls Catalogue (“the product brochures”), list over 450 products and state that the
products listed therein “may be covered by one or more” of 99 or 136 listed patents. The

1

The court denies Lutron’s motion to strike response to notice of supplemental authority
(Dkt. No. 145). The response did not inform the court’s decision on the motion to dismiss.

product brochures were published at www.lutron.com. Amended Complaint, ¶¶ 16-25, and
attached exhibits (Dkt. No. 197).

Lutron’s product installation sheets, packaged with the

products and accessible on the Lutron Website, also state that Lutron dimmers “may be covered”
by certain patents. Finally, Creston alleges that Lutron’s Radio RA RA-6D product is marked
with U.S. Patent No. 5,905,442 (“the ‘442 patent”), but that the patent does not cover that
product. Creston alleges in summary that Lutron has falsely marked “numerous of its products
with the numbers of unexpired but inapplicable Lutron patents that do not cover the products on
which they are marked.” Id. ¶ 12. Based on the patents listed in the product brochures and
installation sheets, Creston alleges a violation of § 292 through false use in advertising. As to
the RA RA-6D product, Creston alleges false marking, claiming that the product is outside the
scope of the ‘442 patent.
DISCUSSION
I.

STANDARD FOR A MOTION TO DISMISS
When evaluating a motion to dismiss under Rule 12(b)(6), the court “must accept all the

well-pleaded allegations of the complaint as true and must construe them in the light most
favorable to the plaintiff.” David v. City & Cnty. of Denver, 101 F.3d 1344, 1352 (10th Cir.
1996). The court need not consider, however, allegations which are conclusory, or that “do not
allege the factual basis” for the claim. Brown v. Zavaras, 63 F.3d 967, 972 (10th Cir. 1995); see
also Hall v. Bellmon, 935 F.2d 1106, 1110 (10th Cir. 1991) (“[C]onclusory allegations without
supporting factual averments are insufficient to state a claim on which relief can be based.”).
Moreover, the court is not bound by a complaint’s legal conclusions, deductions, and opinions
couched as facts. See Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007) (citations
omitted).

2

Although all reasonable inferences must be drawn in favor of the non-moving party, a
complaint will only survive a motion to dismiss if it contains “enough facts to state a claim to
relief that is plausible on its face.” Ridge at Red Hawk, LLC v. Schneider, 493 F.3d 1174, 1177
(10th Cir. 2007) (quoting Twombly, 550 U.S. at 570). “A claim has facial plausibility when the
plaintiff pleads factual content that allows the court to draw the reasonable inference that the
defendant is liable for the misconduct alleged.” Aschroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009).
Under this standard, a claim need not be probable, but there must be facts showing more than a
“sheer possibility” of wrongdoing. Id.
II.

FALSE PATENT MARKING
Crestron brings this counterclaim against Lutron alleging three sets of false marking

claims under § 292. Section 292, which was amended in September of 2011, provides in
relevant part:
[(a)] Whoever marks upon, or affixes to, or uses in advertising in connection with
any unpatented article, the word “patent” or any word or number importing that
the same is patented for the purpose of deceiving the public . . . ;
Shall be fined not more than $500 for every such offense. . . .
35 U.S.C. § 292(a) (2006). The false marking statute is a criminal statute that is punishable by a
civil fine. Pequignot v. Solo Cup Co., 608 F.3d 1356, 1361 (Fed. Cir. 2010). It allows for a
private right of action, however, stating “[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 adequate to compensate for the injury.” Id. § 292(b). “The two
elements of a § 292 false marking claim are (1) marking an unpatented article and (2) intent to
deceive the public.” Fasteners for Retail, Inc. v. Anderson, No. 11C2164, 2011 WL 5130445, at
*2 (N.D. Ill. Oct. 28, 2011) (quoting Forest Group, Inc v. Bon Tool Co., 590 F.3d 1295, 1300

3

(Fed. Cir. 2009)) (noting the two elements of the false marking statute still apply post
amendment).
The September 2011 amendments also require a private individual filing a civil action
pursuant to § 292 to prove competitive injury as an additional element. See Fisher-Price, Inc. v.
Kids II, Inc., No. 10-CV-00988A(F), 2011 WL 6409665, at *8 (W.D.N.Y. Dec. 21, 2011). Prior
to the September 2011 amendments, the statute provided for a qui tam cause of action. Any
individual, whether a competitor or not, could bring suit for a false marking.

Recovery,

however, was limited to $500 per act, which was to be split evenly between the United States
and the qui tam relator. The amendments eliminated the ability of any party other than the
United States to collect the $500 fine, but provided for a civil cause of action for those injured by
false marking. The amendments also clarified that the mark of an expired (but otherwise
relevant) patent did not constitute a false mark. Specifically, the statute states, “[t]he marking of
a product . . . with matter relating to a patent that covered that product but has expired is not a
violation of this section.” 35 U.S.C. § 292(c).
Congress provided that the 2011 amendments “shall apply to all cases, without exception,
that are pending on, or commenced on or after, the date of the enactment of this Act [September
16, 2011].” Pub. L. No. 112–29, § 16(b)(4) (amending notes to § 292). The parties do not
dispute that this includes the current case.2 Because the amendment is relatively recent, nearly
all case law interpreting § 292 involves the previous qui tam statute, and the parties dispute the
extent to which such cases remain relevant.

2

Because of the dismissal of the claims on other grounds, the court does not reach
Lutron’s argument that the new private cause of action recognized in the new amendment does
not extend to conduct that preceded enactment of the amendments.
4

A.

False Marking

Section 292 defines false marking to include “marking upon, affixing to, or using in
advertising the word ‘patent’ or any word or number importing that an article is patented.” 35
U.S.C. § 292. In the present case, Crestron contends that the product brochures and installation
sheets falsely advertise products as patented through the use of conditional language. Am.
Countercl., 3-4 (Dkt. No. 197). Crestron further alleges that the Radio RA RA-D6 product is
outside the scope of the ‘442 patent, and therefore the product is falsely marked.3 Id. at 6-7.
i. Conditional Language
Generally, an article qualifies as unpatented for the purposes of § 292 when “the article
in question is not covered by at least one claim of each patent with which the article is marked.”
See Clontech Laboratories, Inc. v. Invitrogen Corp., 406 F.3d 1347, 1352 (Fed. Cir. 2005).
While Clontech provides a definition for an unpatented article, neither the facts of the case nor
the court’s analysis explicitly deals with conditional language. In Pequignot, however, the court
discusses conditional language in patent marking and concludes that “marking with the ‘may be
covered’ language could legally constitute false marking.” See Pequignot, 608 F.3d at 1365
(noting that conditional language could violate the false marking, but ultimately granting
summary judgment for the defendant as there was no intent to deceive). The helpfulness of the
analysis is limited because the parties agreed “that the contents of some of the packaging
containing the ‘may be covered’ language were unpatented, as the products had never been
protected by any patent or pending patent application.” Id. at 361. This admission seemed to

3

Whether Lutron’s marking of the Radio RA RA-D6 with the ‘442 patent violated § 292
ultimately turns on deceptive intent. Thus, the ‘442 patent will be discussed at length in the
context of deceptive intent.
5

preclude any argument that the conditional language did not imply patent protection for products
never covered by a patent.
A court also addressed the conditional marking issue in Brinkmeier v. Graco Children’s
Products Inc., 767 F. Supp. 2d 488, 494 (D. Del. 2011). In that case the court denied
defendant’s motion to dismiss a false marking claim, rejecting the defendant’s argument that
conditional marking constitutes a per se bar to a false marking claim. See Id. (noting that the
Federal Circuit in Pequignot recognized the possibility of a false marking violation through the
use of conditional language where products are outside the scope of the patent). Similarly, in
Hollander v. Etymotic Research, Inc., 726 F. Supp. 2d 543, 557 (E.D. Pa. 2010), the court denied
defendant’s motion to dismiss a false marking claim, noting that conditional language can
constitute false marking. The court in Hollander observed that “[o]ne valid patent listed among
several expired patents [does] not suffice to have this Court hold that the markings were not false
under the meaning of § 292.” Id. (noting the fact that conditional markings may be “‘literally
true’ does not negate the fact that they were false in other regards”). Nevertheless, in Open
Innovation LLC v. Char-Broil, LLC, No. 4:11-cv-16, 2011 WL 3664411, at *1 (M.D. Ga. Aug.
19, 2011), the court rejected the argument that a marking that “one or more” of the listed patents
protects the product was a false marking, stating the complaint does not allege a false statement.
Each of these cases is based upon an analysis of the facts alleged in that particular case.
Those analyses have not to date allowed the law to clearly develop the appropriate distinction
between a conditional marking that is sufficient to state a false marking claim and one that does
not.

In this case, it is not necessary to resolve this issue because the court finds that Creston has

failed to allege sufficiently an intent to deceive. The court concludes that the distinctions to be

6

drawn in conditional marking cases are better left to another case when the analysis can be based
upon a more complete record than is presented in this counterclaim.
B. The Applicability of Rule 9(b)
The false marking statute is a specific intent statute that requires a false marker to act
“for the purpose of deceiving the public.” 35 U.S.C. § 292. Accordingly, many courts, both
before and after the September 2011 amendments, have applied Rule 9(b) which imposes a
heightened pleading requirement on claims of fraud. See In re BP Lubricants USA Inc., 637
F.3d 1307, 1311 (Fed. Cir. 2011) (finding Rule 9(b) the applicable pleading standard in qui tam
false marking claims); GL Trade Americas v. Trading Technologies Int’l, No. 11 C 1558, 2012
WL 205909, at *3 (N.D. Ill. Jan. 23, 2012) (applying Rule 9(b) to the false marking statute after
the September 2011 amendments); Blenheim Group v. Golf Gifts & Gallery, No. 1:11-CV-899,
2011 WL 5373992, at *2 (N.D. Ill. Nov. 4 2011) (same); Fasteners, 2011 WL 5130445, at *3
(same); Mikityanskiy v. DMS Holdings, No. 11 Civ. 1243(PGG), 2011 WL 4552350, at *2
(S.D.N.Y. Oct. 3, 2011) (same).
Here, Crestron contends that the Rule 9(b) heightened pleading standard no longer
applies under the amended statute. Opp’n Mot. Dismiss, 1-2 (Dkt. No. 211). It argues that the
question is one of first impression among the courts and turns to the legislative history of the
amendments and nuances of the controlling case law to argue that a heightened pleading
standard is no longer necessary because the statute now requires a showing of harm.4 Id.

4

It is true, as Crestron observes, that the statute no longer allows any person to bring suit
to enforce it, and the need for a gatekeeper standard to deflect frivolous cases might not be as
crucial as it once was. At the same time, however, while Congress amended who could bring
suit, it did not disturb the specific intent requirement. Even a competitor who can prove
competitive harm has no claim to relief under the statute unless it can also prove that the false
marking was accomplished out of purposeful deceit. Congress could have revised this
7

As Lutron points out, however, several courts have already applied Rule 9(b) to postamendment false marking cases. Reply Mem. Supp. Mot. Dismiss, 1-2 (Dkt. No. 213). In
Fasteners, a case upon which Crestron extensively relies for other portions of its arguments, the
court explained that “[t]he bar for proving deceptive intent in false marking cases is particularly
high. . . . Although ‘knowledge’ and ‘intent’ may be averred generally, Federal Circuit
precedent, like that of several regional circuits, requires that the pleadings allege sufficient
underlying facts from which a court may reasonably infer that a party acted with the requisite
state of mind.”

Fasteners, 2011 WL 5130445, at *3 (internal quotations and alterations

omitted). Moreover, the court has found no cases that conclude the amendment changed the
requirement so that false marking claims no longer must be pled with particularity. Thus, the
court concludes that Rule 9(b) continues to apply to claims under § 292, and, thereby, deceptive
intent must be pled with sufficient particularity.
Finally, nothing in the September 11 amendments changed the purpose for requiring that
deceptive intent must be pled with particularity. The rationale for the requirement is the same as
in the particularity requirements for pleading fraud. A defendant should fairly be given detailed
notice of the factual basis for the claim to allow him to defend against the claim and to deter the
damaging and disruptive impacts flowing from an unsupported claim of fraud or deception.
Amending the application of the right for a private party to proceed qui tam did not alter in
anyway the prudential need for these protections.

requirement. Instead, it chose to strengthen it by providing that no claims could be brought
against a company marking with expired, but otherwise applicable, patents. What the legislative
history shows is that Congress knew courts were requiring that false marking claims satisfy Rule
9(b), but it did not act to change this when amending the statute. Opp’n Mot. Dismiss, 2-4 (Dkt.
No. 211).
8

C.

Deceptive Intent

Lutron argues that under the required Rule 9(b) standard for pleading deceptive intent,
Crestron fails to plead sufficient facts to support the claim that the patent markings in the
product brochures, and on the ‘442 patent, were meant to deceive the public. Mem. Supp. Mot.
Dismiss, 3-8 (Dkt. No. 207).

Under § 292, a claimant must generally “allege sufficient

underlying facts from which a court may reasonably infer that a party acted” to deceive. BP
Lubricants, 637 F.3d at 1311. Nonetheless, because the evidence showing deceptive intent may
be in the hands of the patent marker, the requirement may be satisfied, when alleged with
sufficient details, the claimant pleads facts which show that the patents were marked with
knowledge that they were false. Id. Such an allegation, however, allows only a rebuttable
presumption of deceptive intent. At the pleading stage, a general allegation that the patent
holder “knew” the facts were false is not sufficient to plead deceptive intent with particularity.
As the court explained in Pequignot, “the statute requires that the false marker act ‘for the
purpose of deceiving the public,’ a purpose of deceit, rather than simply knowledge that a
statement is false, is required.” 608 F.3d at 1363. Relying upon this distinction, the court in BP
Lubricants recognized that while the “Pequignot presumption informs the determination of
whether a false marking plaintiff has met rule 9(b), . . . [t]he bar for proving deceptive intent [in
false marking cases] is particularly high.” The plaintiff must allege facts to show “a purpose of
deceit,” not “simply knowledge that a statement is false.” 637 F.3d at 1313. The fact that a
plaintiff has alleged facts sufficient to “activate the Pequignot presumption is simply a factor in
determining whether Rule 9(b) is satisfied, it does not, standing alone, satisfy Rule 9(b)’s
particularity requirement.” Id. Creston’s allegations in this case fail to meet the bar required to
allege deceptive intent.

9

Creston’s allegations that Lutron had the required deceptive intent consist of the
following assertions: (1) Lutron is a large sophisticated company that retains legal counsel, (2)
Lutron has experience with the patent process and knows that patents have a limited scope, (3)
Lutron marks products extensively with conditional marking and engages in false marking, (4)
Lutron engaged in false marking to deceive competitors and customers and to gain a competitive
edge, (5) Lutron knew that the conditional marking of over 450 products would prevent
competitors and customers from determining which patents cover which products, and (6)
Lutron has sued Crestron and others for patent infringement, thus, heightening the likelihood that
consumers will be improperly influenced by Lutron’s false marking. Am. Countercl., 18-20
(Dkt. No. 197). No additional more particularized facts are pled.5
5

•
•

•

•

•

Crestron’s complete allegations read:

Lutron is a large, sophisticated company that, upon information and belief, has, or
regularly retains, legal counsel.
Upon information and belief, Lutron has extensive experience and expertise with
the patent process, as well as with marking goods sold and offered for sale with
respect to its patents and pending patents, and is aware that its patents have
limited scope.
Lutron falsely marks its products extensively with conditional marking language,
in some cases advertising hundreds of its products as conditionally covered by
about a hundred different patents. Lutron’s extensive use of this conditional
marking language is evidence of its bad faith and intent to deceive the public,
including competitors and potential competitors and customers and potential
customers, by falsely exaggerating the apparent scope of its patent coverage.
Lutron’s bad faith and intent to deceive the public, including competitors and
potential competitors and customers and potential customers, are further
demonstrated by the extensive false marking in which it has engaged and
continues to engage, marking its products with patents that do not cover the
products. . . .
Despite the fact that Lutron has been or should have been aware that various of its
patents were inapplicable and did not protect the products with which they were
identified, Lutron falsely marked products with those patents and/or falsely
10

Lutron argues that Crestron’s general allegations do not satisfy the pleading requirements
of Rule 9(b). Mem. Supp. Mot. Dismiss, 2 [Dkt. No. 207).

Lutron further asserts that the

conditional marking of patents in the product brochures undermine any claim of deceptive intent.
Id. at 6. The court will address each of these arguments in turn.
i.

Generality

Rule 9(b) provides “[m]alice, intent, knowledge, and other conditions of mind of a person
may be averred generally.” Fed. R. Civ. Pro. 9(b). A pleading may satisfy Rule 9(b) when it
“sets forth the specific facts upon which the belief is reasonably based,” when the “essential
information lies uniquely within another party’s control.” Exergen Corp. v. Wal-Mart Stores,
Inc., 575 F.3d 1312, 1330 (Fed. Cir. 2009).

•

•

advertised on the Lutron Website that those products may have been covered by
those patents and/or included product inserts with those products claiming that
those products may have been covered by those patents, in an apparent attempt,
upon information and belief, falsely, intentionally, and in bad faith to deceive
Crestron, other competitors and potential competitors, customers, and potential
customers into believing that those products were protected by the inapplicable
patents and thereby obtain an improper competitive advantage.
Upon information and belief, Lutron knew that its extensive and repeated
conditional marking of over 450 products with about a hundred U.S. patents
would effectively prevent competitors, potential competitors, customers, potential
customers, and members of the public in general from determining which, if any,
patents actually cover which products. . . .
Lutron has sued Crestron customers for patent infringement. Lutron’s
demonstrated willingness to sue customers of its competitors for patent
infringement heightens the likelihood that customers and potential customers of
Crestron and other Lutron competitors have been and will be improperly
influenced in their purchasing decisions by Lutron’s false and extensive listings
of inapplicable patents in connection with its products.

11

Here, Crestron’s six allegations pertaining to deceptive intent are appropriately
summarized to include that Lutron is a large sophisticated company that retains legal counsel,
that it is experienced in patent matters, that it uses conditional marking and that it has sued
Crestron and others for patent infringement, thus, heightening the likelihood that consumers will
be improperly influenced by Lutron’s false marking. Am. Countercl., 18-20 (Dkt. No. 197).
BP Lubricants addresses the issue of whether an allegation that a company is
sophisticated is enough to meet the particularity requirement.

In BP Lubricants, the plaintiff

alleged the false marking of the motor oil product Castrol, claiming that it had adequately
pleaded deception by alleging that the defendant was a sophisticated company and knew the
patent had expired. The Federal Circuit granted a mandamus dismissing the complaint, finding
the plaintiff’s assertion “that BP is a sophisticated company and has experience applying for,
obtaining and litigating patents” is insufficient under Rule 9(b). BP Lubricants, 637 F.3d at
1312 (quotations and citations omitted). The BP Lubricants court observed that such conclusory
allegations are not entitled to an assumption of truth at any stage of the litigation. Id. The court
finds the BP Lubricants holding controlling and finds the allegation that Lutron is a sophisticated
company insufficient to plead deceptive intent under Rule 9(b).

Claiming that Lutron is

experienced in patent matters is simply a variation in this same allegation and adds no additional
particularized facts.
As to the allegation that Lutron has sued Crestron and others for patent infringement, the
Federal Circuit in BP Lubricants suggests that suing a third party for patent infringement after
expiration may be sufficient to plead deceptive intent. Id. Similarly, in Berkmeier the United
States District Court for the District of Delaware found that the plaintiff sufficiently pled
deceptive intent as to the ‘437 patent when there were allegations that the defendant had been

12

sued by two competitors for infringement on the ‘437 patent, the ‘437 patent was revised three
times after expiration, and the defendant, nonetheless, continued to include the ‘437 patent on its
products. Berkmeier, 767 F. Supp. 2d at 553.
In the present case Crestron asserts that Lutron has sued on the ‘930 patent, one of the
patents at issue in the present action, on two separate occasions. Opp’n Mot. Dismiss, 11 (Dkt.
No. 211). This case is distinguishable from the suggestion in BP Lubricants, however, because
Lutron is not suing on an expired patent or revising a patent after expiration. BP Lubricants, 637
F.3d at 1312. This case is also distinguishable from Berkmeier because Lutron has sued others
for infringement on the ‘930 patent, but has not been sued by a third party on the ‘930 patent.
Berkmeier, 767 F. Supp. 2d, at 553. This distinction is significant because while a suit against
Lutron on the ‘930 patent may put Lutron on notice as to potential false marking, Lutron’s suit
on the patent asserts the opposite—the application and enforceability of the patent. Suit by
Lutron claiming infringement on the ‘930 patent does not allow an inference of false marking by
Lutron. Practically, Lutron’s listing of the patents in a half page notice may be motivated by
space efficiency and an intent to give notice to would-be infringers rather than an intent to
deceive. Finally, the court finds merit in Lutron’s assertion that “[n]o consumer or competitor is
going to believe that every one of the 99 and 139 patents covers every one of the 450 products.”
Mem. Supp. Mot. Dismiss, 6 [Dkt. No. 207). Embedding a patent number on a product has a
markedly different and more deceptive effect on the consumer than listing patents at the end of a
brochure.

The court, therefore, finds the fact that Lutron has sued on the ‘930 patent is

insufficient to support an inference of deceptive intent.

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ii.

Conditionality

Although the court does not decide whether under the facts of this case a conditional
patent marking may in some circumstances constitute false marking, the allegation of a
conditional marking is nevertheless relevant to whether deceptive intent has been adequately
pled. A conditional marking that is technically true supports the inference that the patent marker
did not intend to deceive the public. For example, the court noted in Pequignot, when discussing
conditional marking, that “it is highly questionable whether such a statement could be made ‘for
the purpose of deceiving the public,’ when the public would not reasonably be deceived into
believing the products were definitely covered by a patent.” Pequignot, 608 F.3d at 1365
(finding defendant successfully rebutted the presumption of intent to deceive where defendant
relied on advice from counsel, and used the conditional phrase, “[t]his product may be covered
by one or more U.S. or foreign pending or issued patents”).

In Pequignot the court granted

summary judgment in favor of the defendant of the false marking claim. That conclusion,
however, was informed by the fact that defendant had relied on advice from counsel to continue
marking products, and evidence that the true intent of the false marks was to reduce costs
associated with removal of the marks. In Open Innovation, a case that is factually and
procedurally similar to the present case, the court relied on Pequignot to conclude that grill
products marked with the phrase, “ [this] grill product is protected under ‘one or more’ of
approximately 100 U.S. patents,” would not deceive the public into believing that the grills were
definitely covered by all of the listed patents. Open Innovation, 2011 WL 3664411, at *3. The
court found the allegation did not plead sufficient fact to meet the requirements of Rule 9(b).
Creston argues that these cases should not be controlling, relying upon the statement
from Berkmeier, that the use of conditional language does not belie intent to deceive the public.

14

Berkmeier, 767 F. Supp. 2d at 495-96. Berkmeier is factually distinguishable because the
defendant was marking products themselves, not a catalogue. Id. at 491. Creston also relies
upon the court’s statement in Hollander rejecting a conditional marking as negating a false
marking claim, stating “[a]ccording to Defendant’s logic, the actual language used in its product
markings must be false in its entirety to establish an actual violation of the statute.” Id. In
reaching that conclusion, the court relied upon the Clontech definition of “unpatented” requiring
that an article be considered unpatented when the article in question is not covered by at least
one claim of each patent with which the article is marked. The Hollander court fails, however,
to advance a persuasive argument as to why that general language should be applied in facts
similar to the facts in this case.
The court does not find the discussion of the issue in Berkmeier or Hollander persuasive
when applied to the allegations in this case. The alleged conditional marking appears at the end
of product brochures, each of which lists over 450 products. The supposedly false marking
includes 99 listed patents in the Specifications Guide and 136 in the Wallbox Lighting Controls
catalog. The issue is whether the allegation of such facts is sufficient to plead with particularity
that Lutron, by including that statement in its product brochures, intended to deceive the public
that the 450 products were protected by the patents. First the language is that the products “may
be covered.” “May” is a clear communication that protection is possible but not certain. It
implies more a notice than a false statement. Second, the conditionality of the statement when
combined with the number and variety of products makes it less than plausible that any rationale
fact-finder could reasonably conclude the intent was to deceive rather than give notice. Taking
into account that the purpose of the brochures is to identify products and efficiently give notice,

15

not emphasize patent protection, deception is not a clear inference. On the facts of this case,
these allegations do not meet the pleading requirements.
In sum, Crestron has not sufficiently pled facts that give rise to an inference of deceptive
intent regarding the patent markings in the product brochures. Accordingly, all of Crestron’s
claims concerning the product brochures are dismissed pursuant to Rule 12(b)(6).
D.

The ‘442 Patent

Crestron’s final set of false marking claims involves the marking of Lutron’s Radio RA
RA-6D product with the ‘442 patent. Lutron also argues Crestron cannot plausibly plead this
marking was done with the “intent to deceive the public” because Lutron, in marking the product
with the ‘422 patent, was relying on two court decisions which held the patent was applicable.
Mem. Supp. Mot. Dismiss, 8 (Dkt. No. 207). Crestron responds that this is an argument about
the merits of the case, not the sufficiency of the pleading. Opp’n Mot. Dismiss, 13-15 (Dkt. No.
211).
Lutron’s argument that it had good faith reason to mark the Radio RA RA-6D with the
‘442 patent is not dependent on how the court now interprets the ‘442 patent, rather, it rests upon
the proposition that Lutron had the right to rely upon the previous interpretations. When a party
takes a “legal position” on the scope of a patent which is “sufficiently plausible,” that party
“could not have acted with the deceptive purpose necessary to trigger liability under the false
marking statute.” Max Impact, LLC v. Sherwood Group, Inc., No. 09 Civ. 902 (LAM.), 2011
WL 507600 at *3 (S.D.N.Y. Feb. 14, 2011) (quoting Kevin Foods, L.C. v. Pigments Vegetable
Del Centra S.A. de C.V., 464 F.3d 1339, 1355 (Fed. Cir. 2006)). For instance, the Federal
Circuit has held that when a company marks a patent in reliance on laboratory results, even in
the face of conflicting data from other experiments, it is clearly erroneous for a court to find that

16

the company had the requisite intent to violate § 292. Clontech Laboratories, 406 F.3d at
1353–54. Reliance on a court’s construction of the ‘442 patent is similarly reasonable.
Crestron does not dispute that two earlier decisions of this court construed the ‘442
patent in a way that would render it applicable to the Radio RA RA-6D. Opp’n Mot. Dismiss,
13-15 (Dkt. No. 211). Furthermore, Crestron is no longer alleging, as it previously did, that
Lutron obtained those rulings by making willful misrepresentations to the court.

Am.

Countercl., 8 (Dkt. No. 197). Given this factual basis, Crestron’s allegations that Lutron acted
with intent to deceive when it marked the Radio RA RA-6D product with the ‘442 patent are
legally implausible. Therefore, Creston’s claims as to the ‘442 patent are dismissed for failure to
sufficiently plead deceptive intent.
CONCLUSION
For the reasons set forth above, Lutron’s Motion to Dismiss for failure to state a claim is
GRANTED.
DATED this 6th day of August, 2012
BY THE COURT:

Clark Waddoups
United States District Judge

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