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Tai v. Minka Lighting, Inc.

United States District Court, D. Arizona

February 13, 2017

Jen-Lung David Tai, an individual, Plaintiff,
Minka Lighting, Inc., a California corporation, Defendant.



         Plaintiff 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.

         On 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.[1]

         I. Legal Standard

         A 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).

         II. Discussion

         Defendant 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.

         A. Patent Infringement

         Patent 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).

         Plaintiff's 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 omitted).

         Citing 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.

         As of 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 patent”).

         Defendant 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).

         The 531 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 ...

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