United States District Court, D. Arizona
DOUGLAS L. RAYES, UNITED STATES DISTRICT JUDGE
Jen-Lung David Tai is the inventor of a fan blade attachment
assembly for ceiling fans that eliminates the typical
nut-and-bolt connection and allows for easy installation and
removal of blades. On May 9, 2000, he was issued a patent for
the invention titled “Impeller and Fan Blade Attachment
Assembly” with patent number 6, 059, 531 (the 531
patent). Plaintiff and Defendant Minka Lighting, Inc. entered
into a licensing agreement on March 1, 2003.
August 22, 2016, Plaintiff filed a complaint against
Defendant that purports to assert three causes of action:
patent infringement, breach of licensing agreement, and
breach of the duty of good faith and fair dealing. (Doc. 1.)
Defendant has filed a motion to dismiss the complaint
pursuant to Federal Rule of Civil Procedure 12(b)(6). (Doc.
22.) The motion is fully briefed. (Docs. 23, 25.) For reasons
stated below, the motion is granted.
successful Rule 12(b)(6) motion must show that the complaint
lacks a cognizable legal theory or fails to allege facts
sufficient to support such a theory. See Balistreri v.
Pacifica Police Dep't, 901 F.2d 696, 699 (9th Cir.
1988). A complaint that sets forth a cognizable legal theory
will survive a motion to dismiss only where it contains
“sufficient factual matter, accepted as true, to
‘state a claim to relief that is plausible on its
face.'” Ashcroft v. Iqbal, 556 U.S. 662,
678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550
U.S. 544, 570 (2007)). “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.” Id.
(citing Twombly, 550 U.S. at 556). Although the
court must take “the well-pled factual allegations in
the complaint as true, [it is] ‘not bound to accept as
true a legal conclusion couched as a factual
allegation.'” Id. (quoting
Twombly, 550 U.S. at 555).
does not dispute that patent infringement, breach of a
licensing agreement, and breach of the duty of good faith and
fair dealing constitute cognizable legal theories. Rather,
Defendant argues that the complaint fails to allege
sufficient factual allegations to state a plausible claim to
relief under any theory. (Doc. 22.) The Court agrees.
infringement occurs when a person, without authority,
“makes, uses, offers to sell, or sells any patented
invention.” 35 U.S.C. § 271(a). To prove
infringement, the patentee “must show that an accused
product embodies all limitations of the claim either
literally or by the doctrine of equivalents.”
Cephalon, Inc. v. Watson Pharms., Inc., 707 F.3d
1330, 1340 (Fed. Cir. 2013). The failure to “meet a
single limitation is sufficient to negate infringement of the
claim[.]” Laitram Corp. v. Rexnord, Inc., 939
F.2d 1533, 1535 (Fed. Cir. 1991).
infringement claim is modeled after Form 18 referenced in
Federal Rule of Civil Procedure 84 and contained in the
appendix to the rules. (Doc. 1 ¶¶ 19-25.) In
addition to a jurisdictional statement and request for
relief, Form 18 required allegations that the plaintiff owns
the patent, that the defendant has infringed the patent by
making, selling, or using a device embodying the patent, and
that the plaintiff has provided notice of infringement.
See In re Bill of Lading Transmission & Processing
Sys. Patent Litig., 681 F.3d 1323, 1334 (Fed. Cir.
2012). “Form 18 provided an ‘example complaint
for patent infringement that merely included an allegation
that the defendant infringed the asserted patent' without
specific factual allegations.'” Beer Barrel,
LLC v. Deep Wood Brew Prods., LLC, No. 16-cv-00440-DN,
2016 WL 5936874, at *3 (D. Utah Oct. 12, 2016) (citation
K-Tech Telecommunications, Inc. v. Time Warner Cable,
Inc., 714 F.3d 1277 (Fed. Cir. 2013), Plaintiff contends
that an infringement claim styled after Form 18
“effectively immunizes a claimant from attack regarding
the sufficiency of the pleading.” (Doc. 23 at 4.) But
this is no longer the case.
December 1, 2015, Rule 84 was abrogated along with the
appendix of forms it referenced, including Form 18. Under the
amended rules, patent infringement claims are now subject to
the heightened pleading standards established by
Twombly and Iqbal, requiring plaintiffs to
demonstrate a “plausible claim for relief.”
Indeed, the majority of courts have found that the
Twombly/Iqbal “pleading standard now applies
to direct patent infringement claims and that complaints
which merely comply with Form 18 are no longer immunized from
attack on that basis.” e.Digitial Corp. v. iBaby
Labs, Inc., No. 15-cv-05790-JST, 2016 WL 4427209, at *2
(N.D. Cal. Aug. 22, 2016) (citing cases). Stated differently,
with “the abrogation of Form 18, so too went the patent
infringement exception to the civil pleading requirements set
forth in Twombly and Iqbal.”
Tannerite Sports, LLC v. Jerent Enters., LLC, No.
6:15-cv-00180-AA, 2016 WL 1737740, at *3 (D. Or. May 2,
2016); see President & Fellows of Harvard College v.
Micron Tech., Inc., ___ F.Supp.3d ___, 2017 WL 404891,
at *1 & n.5 (D. Mass. Jan. 30, 2017) (noting that
“in the absence of Form 18, patent infringement
pleadings now are held to the ‘plausibility'
standard described in Twombly”); Robern,
Inc. v. Glasscrafters, Inc., ___ F.Supp.3d ___, 2016 WL
3951726, at *4 (D.N.J. July 22, 2016) (holding that
“with the abrogation of Rule 84 and Form 18, there is
no longer any credible conflict between Supreme Court
precedent and Form 18”); Scripps Research Inst. v.
Ilumina, Inc., No. 16-cv-611 JLS, 2016 WL 6834024, at *4
(S.D. Cal. Nov. 21, 2016) (noting that “the pleading
standards under Twombly and Iqbal - not
Form 18 - now govern claims for direct infringement of a
argues, correctly, that the patent infringement claim alleged
in the complaint falls far short of the standard for stating
a plausible claim to relief under Twombly and
Iqbal. (Doc. 22 at 6-8.). Plaintiff recites the
terms of the 531 patent and alleges, in conclusory fashion,
that Defendant infringes the patent “by making, using,
selling and offering for sale ceiling fans in the United
States and/or importing into the United States that embody or
use the invention claimed in the 531 patent, including those
sold under the name Minka Aire Fans.” (Id.
¶¶ 17, 20-22.) Since the abrogation of Rule 84 and
Form 18, these general allegations do not suffice to survive
a motion to dismiss. Rather, to meet the pleading
requirements of Twombly and Iqbal and avoid
dismissal, the complaint must “plausibly allege that
the accused product practices each of the limitations found
in at least one asserted claim.” e.Digitial,
2016 WL 4427209, at *3. “This is because ‘the
failure to meet a single limitation is sufficient to negate
infringement of a claim.'” Id. (quoting
Laitram Corp., 939 F.2d at 1535).
patent contains twenty separate claims (Doc. 1-1 at 7-8), but
the complaint fails to specify which claim allegedly is
infringed. Because the failure to practice even a single
limitation is all that separates innovation from
infringement, “there is always an obvious alternative
explanation where a plaintiff does not allege facts about
each element.” Atlas IP, LLC v. Exelon Corp.,
189 F.Supp.3d 768, 775 (N.D. Ill. 2016). Thus, “factual
allegations that do not permit a court to infer that the
accused product infringes each element of at least one claim
are not suggestive of infringement - they are merely
compatible with infringement.” Id. Where a
complaint, like the one in this case, “pleads facts
that are ‘merely consistent ...