United States District Court, D. Oregon
E. Davis, John D. Vandenberg, and Kristin L. Cleveland,
Klarquist Sparkman LLP, Attorneys for Plaintiff.
H. Norman, David B. Jinkins, Steven E. Garlock, and Matthew
A. Braunel, Thomas Coburn LLP, One U.S. Bank Plaza, St Louis,
Attorneys for Defendant.
OPINION AND ORDER
MICHAEL H. SIMON UNITED STATES DISTRICT JUDGE
InVue Security Products Inc. (“InVue” or
“Plaintiff”) brings this action against Mobile
Tech, Inc. (“MTI” or “Defendant”).
InVue alleges that MTI manufactured and sold products and
components of products that infringed upon InVue's valid
patents and seeks enhanced damages. Before the Court is
Defendant's motion to dismiss all claims. For the
following reasons, the Court DENIES Defendant's motion.
patent cases, a district court applies the law of the
regional circuit (rather than that of the Federal Circuit) to
procedural questions such as whether to grant a Rule 12(b)(6)
motion to dismiss. See, e.g., C&F Packing
Co., Inc. v. IBP, Inc., 224 F.3d 1296, 1306 (Fed. Cir.
2000). In the Ninth Circuit, a motion to dismiss for failure
to state a claim may be granted only when there is no
cognizable legal theory to support the claim or when the
complaint lacks sufficient factual allegations to state a
facially plausible claim for relief. Shroyer v. New
Cingular Wireless Servs., Inc., 622 F.3d 1035, 1041 (9th
Cir. 2010). When evaluating the sufficiency of a
complaint's factual allegations, the Court must accept as
true all well-pleaded material facts alleged in the complaint
and construe them in the light most favorable to the
non-moving party. Wilson v. Hewlett-Packard Co., 668
F.3d 1136, 1140 (9th Cir. 2012); Daniels-Hall v.
Nat'l Educ. Ass'n, 629 F.3d 992, 998 (9th Cir.
2010). To be entitled to a presumption of truth, allegations
in a complaint “may not simply recite the elements of a
cause of action, but must contain sufficient allegations of
underlying facts to give fair notice and to enable the
opposing party to defend itself effectively.” Starr
v. Baca, 652 F.3d 1202, 1216 (9th Cir. 2011). In patent
infringement cases, this amounts to “facts sufficient
to place the alleged infringer on notice as to what he must
defend.” McZeal v. Sprint Nextel Corp., 501
F.3d 1354, 1357 (Fed. Cir. 2007). The court must draw all
reasonable inferences from the factual allegations in favor
of the plaintiff. Newcal Indus. v. Ikon Office
Solution, 513 F.3d 1038, 1043 n.2 (9th Cir. 2008). The
court need not, however, credit the plaintiff's legal
conclusions that are couched as factual allegations.
Ashcroft v. Iqbal, 556 U.S. 662, 678-79 (2009).
complaint must contain sufficient factual allegations to
“plausibly suggest an entitlement to relief, such that
it is not unfair to require the opposing party to be
subjected to the expense of discovery and continued
litigation.” Starr, 652 F.3d at 1216. “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.” Iqbal, 556 U.S. at 678 (citing
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 556
(2007)). “The plausibility standard is not akin to a
probability requirement, but it asks for more than a sheer
possibility that a defendant has acted unlawfully.”
Mashiri v. Epstein Grinnell & Howell, 845 F.3d
984, 988 (9th Cir. 2017) (quotation marks omitted). If a
complaint fails to state a claim, the court should grant
leave to amend unless it is clear that the complaint's
deficiencies are incurable. Lucas v. Dep't of
Corr., 66 F.3d 245, 248 (9th Cir.1995).
and MTI compete in the manufacture and sale of retail
merchandise security systems. InVue brings this action to
recover on claims of alleged direct patent infringement,
contributory infringement, and induced infringement. InVue
seeks injunctive relief, monetary damages, and enhanced
damages for willful infringement.
patents-in-suit are U.S. Patent No. 9, 830, 787 (the '787
patent) and U.S. Patent No. 10, 055, 954 (the '954
patent). The '954 patent is a continuation of the
application that issued as the '787 patent. Both patents
are entitled “Merchandise Security System Including
Retractable Alarming Power Cord.” Three elements
comprise the patents-in-suit: (1) a continuous alarming power
cord with at least one electrical conductor; (2) a reel and
housing for receiving and storing at least a portion of the
alarming power cord; and (3) circuity that monitors the
electrical signal running through the alarming power cord for
interruptions. One end of the alarming power cord attaches to
the reel, and the other end attaches to merchandise. Removing
the merchandise interrupts the electrical signal running
through the power cord. The monitoring circuitry detects the
interruption and can trigger an alarm.
Direct Infringement Claims
party who “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” without permission commits direct
patent infringement. 35 U.S.C § 271. A complaint need
only put the “potential infringer . . . on notice of
what activity . . . is being accused of infringement.”
Nalco v. Chem-Mod LLC, 883 F.3d 1337, 1350 (Fed.
Cir. 2018) (quotation marks omitted).
First Amended Complaint (“FAC”), InVue alleges
that MTI directly infringed on both the '787 patent and
the '954 patent. InVue defines the category of MTI's
products the sale of which directly infringes on InVue's
patents as the “Accused Products.” See
FAC ¶ 16. It lists examples of the Accused Products,
including the “Round Freedom Micro, ” the
“Freedom Micro” (FAC ¶ 18), and the
“Freedom Micro DI” (FAC ¶ 19). InVue also
includes the “AirTether” in the category of
Accused Products. See FAC ¶ 20. The complaint
later states that “MTI's manufacture, offer for
sale, sale, importation, and/or use of the Accused Products