Summary
deeming inadequate, for willful infringement claim, allegation that "[p]rior to the filing of this suit, [Plaintiff] had informed [Defendant] of the Patents-in-Suit and [Defendant's] infringement of those patents"
Summary of this case from SoftView LLC v. Apple Inc.Opinion
NO. C 12-00068 JW
07-10-2012
Robert Bosch Healthcare Systems, Inc., Plaintiff, v. Express MD Solutions, LLC, Defendant.
ORDER GRANTING MOTION TO DISMISS WITH LEAVE TO AMEND
I. INTRODUCTION
Robert Bosch Healthcare Systems, Inc. ("Plaintiff") brings this patent infringement action against Express MD Solutions LLC ("Defendant"), alleging that Defendant directly and willfully infringes four of Plaintiff's patents in violation of 35 U.S.C. § 271. Three of the patents pertain to networked systems for interactive communication and remote monitoring of individuals, while the fourth pertains to patient control of health-related data in a remote patient monitoring system.
The patents-in-suit are as follows: (1) U.S. Patent No. 5,997,476 (the "'476 Patent"); (2) U.S. Patent No. 6,368,273 B1 (the "'273 Patent"); (3) U.S. Patent No. 6,968,375 B1 (the "'375 Patent"); and (4) U.S. Patent No. 7,827,040 B2 (the "'040 Patent").
Presently before the Court is Defendant's Motion to Dismiss. The Court conducted a hearing on July 9, 2012. Based on the papers submitted to date and oral argument, the Court GRANTS Defendant's Motion to Dismiss.
(ExpressMD's [sic] Notice of Motion and Motion to Dismiss for Failure to State a Claim for Willful Infringement, hereafter, "Motion," Docket Item No. 49.)
II. BACKGROUND
A. Factual Allegations
In an Amended Complaint filed on May 11, 2012, Plaintiff alleges as follows:
(First Amended Complaint, hereafter, "Complaint," Docket Item No. 45.)
Plaintiff is a Michigan corporation with its principal place of business in Palo Alto, California. (Complaint ¶ 1.) Defendant is a Delaware corporation with its principal place of business in New Jersey. (Id. ¶ 2.) Between 1999 and 2010, the four patents-in-suit were issued by the United States Patent and Trademark Office. (Id. ¶¶ 5-8.) Plaintiff is the owner by assignment of each of the patents-in-suit. (Id. ¶ 9.)
Defendant makes, sells, offers for sale or uses in the United States a remote health monitoring system which can perform a number of functions, including, inter alia, collecting patient vital signs, communicating with web service and allowing care providers to remotely customize sessions for their patients. (Complaint ¶ 10.) This remote health monitoring system infringes one or more claims of each of the patents-in-suit. (Id. ¶¶ 11, 14-29.)
Prior to the filing of this suit, Plaintiff had informed Defendant of both the patents-in-suit and Defendant's infringement of those patents. (Complaint ¶ 12.) Defendant's infringement of the patents-in-suit is willful and deliberate. (Id. ¶ 13.)
On the basis of the allegations outlined above, Plaintiff alleges a single cause of action for patent infringement as to each of the four patents-in-suit. B. Procedural History
On January 5, 2012, Plaintiff filed its initial Complaint. (Docket Item No. 1.) On May 10, 2012, the Court granted Plaintiff's Motion to Amend. In particular, the Court found good cause to allow Plaintiff to amend its Complaint so as to "modify the scope of its infringement allegations" and to "withdraw its assertion of two [patents] and to assert one new patent." (Id. at 3 n.3.)
(Order Granting Plaintiff's Motion for Leave to File an Amended Complaint, Docket Item No. 44.)
III. STANDARDS
The Federal Rules of Civil Procedure require only "a short and plain statement of the claim showing that the pleader is entitled to relief." Fed. R. Civ. P. 8(a). While brevity is encouraged, the complaint must say enough to give the defendant "fair notice of what the plaintiff's claim is and the grounds upon which it rests." Dura Pharm., Inc. v. Broundo, 544 U.S. 336, 346 (2005).
Pursuant to Federal Rule of Civil Procedure 12(b)(6), a complaint may be dismissed against a defendant for failure to state a claim upon which relief may be granted against that defendant. Dismissal may be based on either the lack of a cognizable legal theory or the absence of sufficient facts alleged under a cognizable legal theory. Balistreri v. Pacifica Police Dep't, 901 F.2d 696, 699 (9th Cir. 1990); Robertson v. Dean Witter Reynolds, Inc., 749 F.2d 530, 533-34 (9th Cir. 1984). For purposes of evaluating a motion to dismiss, the court "must presume all factual allegations of the complaint to be true and draw all reasonable inferences in favor of the nonmoving party." Usher v. City of Los Angeles, 828 F.2d 556, 561 (9th Cir. 1987). Any existing ambiguities must be resolved in favor of the pleading. Walling v. Beverly Enters., 476 F.2d 393, 396 (9th Cir. 1973).
However, mere conclusions couched in factual allegations are not sufficient to state a cause of action. Papasan v. Allain, 478 U.S. 265, 286 (1986); see also McGlinchy v. Shell Chem. Co., 845 F.2d 802, 810 (9th Cir. 1988). The complaint must plead "enough facts to state a claim for relief that is plausible on its face." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). A claim is plausible on its face "when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009). Thus, "for a complaint to survive a motion to dismiss, the non-conclusory 'factual content,' and reasonable inferences from that content, must be plausibly suggestive of a claim entitling the plaintiff to relief." Moss v. U.S. Secret Serv., 572 F.3d 962, 969 (9th Cir. 2009). "[A] plaintiff's obligation to provide the grounds of his entitlement to relief requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do." Twombly, 550 U.S. at 555.
IV. DISCUSSION
Defendant moves to dismiss Plaintiff's claims for willful infringement, on the ground that Plaintiff has not pleaded any of the necessary factual elements required to state such claims. (Motion at 1-8.) Plaintiff responds that its claims for willful infringement should not be dismissed, because it has sufficiently pleaded those claims.
(Plaintiff Robert Bosch Healthcare Systems, Inc.'s Opposition to Defendant's Motion to Dismiss for Failure to State a Claim for Willful Infringement at 1-10, Docket Item No. 50.)
"To willfully infringe a patent, the patent must exist and one must have knowledge of it." State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1986) (emphasis in original). Thus, a party "cannot be found to have 'willfully' infringed a patent of which the party had no knowledge." Gustafson, Inc. v. Intersystems Indus. Prods., Inc., 897 F.2d 508, 511 (Fed. Cir. 1990). Instead, infringement is "willful when the infringer was aware of the asserted patent, but nonetheless acted despite an objectively high likelihood that its actions constituted infringement of a valid patent." i4i Ltd. P'ship v. Microsoft Corp., 598 F.3d 831, 861 (Fed. Cir. 2010) (citation and internal quotations omitted).
"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." McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1355-56 (Fed. Cir. 2007). Thus, courts should apply "the law of the regional circuit" in evaluating such a motion. Id. at 1356 (citation omitted). Within the Northern District, to sufficiently plead a claim for willful infringement, a patentee "must make out the barest factual assertion of knowledge of an issued patent." IpVenture, Inc. v. Cellco P'ship, No. C 10-04755 JSW, 2011 WL 207978, at *2 (N.D. Cal. Jan. 21, 2011). However, a "bare recitation of the required legal elements for willful infringement" is insufficient. Id. Similarly, a mere "allegation of 'actual knowledge,' without more," is not enough to state a claim for willful infringement. Vasudevan Software, Inc. v. TIBCO Software Inc., No. C 11-06638 RS, 2012 WL 1831543, at *4 (N.D. Cal. May 18, 2012).
Here, Plaintiff alleges in pertinent part:
Prior to the filing of this suit, [Plaintiff] had informed [Defendant] of the Patents-in-Suit and [Defendant's] infringement of those patents. (Complaint ¶ 12.) [Defendant's] infringement of the Patents-in-Suit is willful and deliberate. (Id. ¶ 13.)
Based on the allegations above, the Court finds that Plaintiff has failed to adequately plead its claims for willful infringement. In particular, the Court finds that Plaintiff has failed to make out even the "barest factual assertion" that Defendant knew of the patents-in-suit, but instead has made a mere allegation, without more, that Defendant had actual knowledge of those patents. IpVenture, 2011 WL 207978, at *2; Vasudevan, 2012 WL 1831543, at *4. Thus, the Court finds that Plaintiff has failed to sufficiently plead its claims for willful infringement.
In support of its contention that its claims for willful infringement are adequately pleaded, Plaintiff relies upon Oracle Corp. v. DrugLogic, Inc. However, the Court finds that Plaintiff's reliance on Oracle is misguided. In Oracle, as the court explained, the allegation of willful infringement at issue was brought in a defendant's counterclaim. Id. at 893. There, the defendant supported its argument regarding willful infringement by providing a letter supplying further "evidentiary details" underlying its willful infringement contentions. Id. In addition, the defendant argued that its allegation of willfulness in its counterclaim was "indistinguishable" from the allegation of willfulness made by the plaintiff in its complaint. Id. In this case, by contrast, Plaintiff has not offered any evidentiary details whatsoever in support of its claims for willful infringement. Further, Plaintiff's claim for willful infringement does not arise as a counterclaim to a comparable claim made by Defendant. Thus, the Court finds that Oracle is inapposite.
807 F. Supp. 2d 885 (N.D. Cal. 2011).
The Court observes that the Federal Circuit has recently addressed the plausibility requirement for complaints that allege patent infringement. However, the Court finds that the Federal Circuit's decision in In re Bill of Lading is inapposite. In In re Bill of Lading, the court considered the sample complaints that appear in the Appendix of Forms to the Federal Rules of Civil Procedure. Id. at *6. In particular, it considered Form 18, which "sets forth a sample complaint for direct patent infringement." Id. The court held that whether a complaint for patent infringement "adequately plead[s] direct infringement is to be measured by the specificity required by Form 18," rather than by the more stringent pleading standards articulated by the Supreme Court in Twombly and Iqbal. Id. at *7. However, the court went on to expressly state that its holding was limited to pleading standards for direct infringement. Thus, in considering the claims for indirect infringement that were at issue in the case, the court looked "to Supreme Court precedent"-and in particular, to Twombly and Iqbal-"for guidance regarding the pleading requirements" for those claims. Therefore, the Court concludes that the In re Bill of Lading decision is inapposite to its consideration of the issue presented by the present Motion, namely, whether Plaintiff's willful infringement claim is adequately pleaded.
See In re Bill of Lading Transmission and Processing System Patent Litig., Nos. 2010-1493, 2010-1494, 2010-1495, 2010-1496, 2011-1101, 2011-1102, 2012 WL 2044605, at *6-8 (Fed. Cir. June 7, 2012).
The Court discussed Form 18 in a recent order. See Avocet Sports Tech., Inc. v. Garmin Int'l, Inc., No. C 11-04049 JW, 2012 WL 1030031, at *3 (N.D. Cal. Mar. 22, 2012) (finding, prior to the Federal Circuit's holding to the contrary in In re Bill of Lading, that Form 18 "does not provide adequate notice under the heightened pleading standards articulated in [Twombly and Iqbal].").
See id. at *9 (holding that "Form 18 should be strictly construed as measuring only the sufficiency of allegations for direct infringement") (emphasis added) (citation omitted). As the court explained, the Forms appearing in the Federal Rules of Civil Procedure are "controlling only for causes of action for which there are sample pleadings," and "Form 18 addresses only direct infringement." Id. (emphases added).
See id. at *9; see also id. at *18 (referring to Twombly and Iqbal for the conclusion that certain complaints for inducing infringement "contain[ed] sufficient factual allegations" to "state a claim for relief that is plausible on its face").
Accordingly, the Court GRANTS Defendant's Motion to Dismiss with leave to amend to adduce a sufficient factual basis for its willful infringement claims.
In addition, Defendant requests that the Court strike portions of Plaintiff's request for damages under Fed. R. Civ. P. 12(f). (Motion at 8 n.3.) However, the Ninth Circuit has made clear that "Rule 12(f) does not authorize district courts to strike claims for damages." Whittlestone, Inc. v. Handi-Craft Co., 618 F.3d 970, 974 (9th Cir. 2010). Accordingly, the Court DENIES Defendant's request.
V. CONCLUSION
The Court GRANTS Defendant's Motion to Dismiss with leave to amend.
On or before July 23, 2012, Plaintiff shall file an Amended Complaint pursuant to this Order. Dated: July 10, 2012
/s/_________
JAMES WARE
United States District Chief Judge
THIS IS TO CERTIFY THAT COPIES OF THIS ORDER HAVE BEEN DELIVERED TO:
Douglas F. Stewart stewart.douglas@dorsey.com
Joel N. Bock joel.bock@snrdenton.com
Mark L. Hogge mark.hogge@snrdenton.com
Patricia Anne Welch eFilingPA@dorsey.com
Rachel A Repka rachel.repka@snrdenton.com
Todd S Fairchild fairchild.todd@dorsey.com
Dated: July 10, 2012
Richard W. Wieking, Clerk
By: /s/ JW Chambers
William Noble
Courtroom Deputy