United States District Court, D. Arizona
G. CAMPBELL, UNITED STATES DISTRICT JUDGE
initiating this suit, Plaintiff sent Defendant a letter
asserting various contract and tort claims, and indicating
that Plaintiff was “looking into” possible patent
infringement claims. The Court must decide whether this
letter was a “patent notification” within the
meaning of Wis.Stat. § 100.197. The Court holds that it
December 4, 2013, Plaintiff Sidi Spaces, LLC and Defendant
CGS Premier, Inc. entered a License and Sales Agreement
(“Agreement”) whereby Plaintiff granted Defendant
the exclusive right to manufacture and sell mobile stores
using its patented BizBox design. Doc. 1-1 at 10-19.
Defendant agreed to pay royalties on each BizBox it sold and
to refrain from selling these products below a specified
minimum price. Id. at 11-12. Defendant also agreed
that Plaintiff would retain “exclusive ownership rights
to the [BizBox] design and all other intellectual property
rights . . . with respect to the [BizBox].”
Id. at 13.
April 22, 2016, Plaintiff sent a letter to Defendant
explaining that it had retained counsel “to take all
legal action necessary to get [Defendant] to cease and desist
from breaching the parties’ agreements” and
“to recover damages for these breaches.” Doc. 6-1
at 3. The letter stated that Plaintiff was aware of
“numerous instances where [Defendant’s] design
and/or manufacturing of trailers . . . was in direct
violation of the [Agreement].” Id. The letter
claimed that “[Defendant’s] employees . . . have
been involved in stealing designs by copying measurements and
other specifications from BizBox products to build . . .
letter included additional detail about Plaintiff’s
contract claims, and also described a claim for tortious
interference with business relations. Id. at 3-5.
The penultimate paragraph stated:
We are also looking into the serious concerns [Plaintiff] has
regarding multiple counts of patent infringement. If the
Company takes additional action for patent infringement,
there is a strong possibility that all products sold by
[Defendant] to its clients that infringe the BizBox 20 year
Utility Patent will represent illegal sales. As such, these
units may be removed from the possession of your clients.
Id. at 5. The letter concluded by demanding an
initial payment of $1, 766, 000 to satisfy Plaintiff’s
contract and tort claims. Id. at 5.
responded to this demand letter on April 27, 2016. Doc. 6-2
at 2-6. Defendant asserted that the letter was a patent
notification, subject to the requirements of Wis.Stat. §
100.197. Id. at 3-4. Defendant informed Plaintiff
that, in its view, the letter violated § 100.197 because
it failed to include certain required information and made
certain false, misleading, or deceptive statements.
Id. Defendant demanded that Plaintiff cure these
deficiencies within 30 days. Id. Plaintiff made no
effort to do so. Doc. 6, ¶ 8.
subsequently initiated this action, asserting the contract
and tort claims outlined in its demand letter. Doc. 1-1 at
4-9. Defendant counterclaimed under § 100.197. Doc. 6,
¶¶ 4-5. Plaintiff moves to dismiss the
counterclaim. Doc. 18. The motion has been fully briefed
(Docs. 21, 23) and no party has requested oral argument.
100.197 applies to “patent notifications” –
written communications that “attempt in any manner to
enforce or assert rights in connection with a patent or
pending patent.” § 100.197(1)(a). A patent
notification must include certain information, including (1)
the number of each patent subject to the notification; (2) a
copy of each such patent; (3) the name and address of the
owner of the patent; (4) “[a]n identification of each
claim of each patent or pending patent being asserted and the
target’s product, service, process, or technology to
which that claim relates”; (5) “[f]actual
allegations and an analysis setting forth in detail the
person’s theory of each claim identified”; and
(6) an identification of all pending or completed judicial
and administrative proceedings related to such patent. §
100.197(2)(a). Such a notification must not include false,
misleading, or deceptive information. § 100.197(2)(b).
statute, passed in 2014, has not yet been subject to judicial
interpretation, and the parties disagree as to its scope.
Plaintiff argues that the statute does not apply to its
demand letter because the letter did not set forth any patent
claim or demand payment for such a claim. Doc. 18 at 5.
Defendant contends that the statute does not require
“an overt statement that a patent right is being
enforced or asserted, ” and that a reference to a
potential patent claim is sufficient to bring a communication
within the statute’s purview. Doc. 21 at 5.
has the better argument. The statute does not apply to every
communication that refers to possible patent violations; it
applies to communications that seek “to enforce or
assert [patent] rights.” Thus, the statute applies to
communications that “state positively” a patent
claim, or attempt “[t]o invoke or enforce” a
patent claim, or attempt “to compel a person to pay
damages” or provide other relief to discharge such a
claim. See Black’s Law Dictionary (10th ed.
2014) (defining “assert” as “[t]o state
positively” or “[t]o invoke or enforce a legal
right”); id. ...