United States District Court, D. Arizona
ORDER
H.
RUSSEL HOLLAND, UNITED STATES DISTRICT JUDGE
Motion
to Dismiss
Defendant
moves to dismiss plaintiff's complaint.[1] This motion is
opposed.[2] Oral argument was requested and has been
heard.
Background
Plaintiff
is ThermoLife International, LLC. Defendant is NeoGenis Labs,
Inc. d/b/a HumanN. Defendant contends however that it is now
known as the Human Power of N Company.
Plaintiff
was founded in 1998 by Ron Kramer.[3] Plaintiff alleges that it
“is a world leader in the use and development of
nitrate technology” and that it “holds several
patents related to the use of amino acids in combination with
nitrates to increase performance.”[4]Plaintiff alleges
that it is “the exclusive licensee of U.S. Patent No.
9, 180, 140 (‘the ‘140 Patent'), ”
which “protects a method of administering nitrate or
nitrite to humans in order to non-therapeutically cause a
reduced oxygen uptake during exercise.”[5]
Plaintiff
alleges that “[d]efendant is a direct competitor of
ThermoLife in the sale of nitrite and nitrate
technology.”[6] Plaintiff alleges that defendant was
“formed in 2009” and that “Joel Kocher, Dr.
Nathan Bryan, [and] Janet Zand are all co-founders of”
defendant.[7]
Plaintiff
alleges that defendant is falsely marking its N-O Indicator
Strips product as “patent pending” and also
falsely advertising the N-O Indicator Strips as patent
pending.”[8]According to defendant's advertising,
the N-O Indicator Strips “are a simple way to see if
you're getting enough dietary nitrate through the foods
that you eat.”[9] Plaintiff alleges that defendant's
“Nitric Oxide Indicator Strips do not enjoy patent
protection and there is no patent pending related to this
technology.”[10] Plaintiff alleges that “[i]n fact,
on August 13, 2013, HumanN's Dr. Nathan Bryan applied for
a patent for a ‘method of determining the level of
nitric oxide (NO) or nitrite (NO2-)” but that
“[t]he United States Patent Office rejected all 35
proposed patent claims.”[11]
Plaintiff
also alleges that “[c]ontrary to [defendant's]
false claims, it is well-settled that you cannot determine
whether an individual is ‘deficient in N-O [Nitric
Oxide]' and/or ‘getting sufficient Nitric Oxide
activating nutrients through [his] diet' simply by
testing [his] saliva.”[12] Plaintiff alleges that the
2015 Clodfelter study tested defendant's N-O Indicator
Strips, along with other similar products, and concluded that
“‘[t]here is no correlation between plasma NO2-
and salivary NO3-. . . . Our results argue against the use of
salivary NO2- as a marker for NO
bioavailability.'”[13]
Plaintiff
alleges that defendant is also falsely marking three of its
other products, BeetElite, SuperBeets, and Neo40. Plaintiff
alleges that defendant formerly “list[ed] six patent
numbers” on the labels of these products but that in
mid-2017, defendant removed three of the patent numbers
because the products never practiced these
patents.[14] Plaintiff alleges, however, that
defendant's “website, Amazon.com, and countless
other websites on the internet where consumers go to actually
purchase the product, still mislead consumers by showing all
six patent numbers.”[15]
As for
the three patents still listed on the products' labels,
the ‘589, ‘570, and ‘999 patents, plaintiff
alleges that BeetElite and SuperBeets “do not
practice” any of these patents.[16] Plaintiff
alleges that all three patents “require a
‘nitrite salt' to practice the patented
inventions” but that defendant “is well aware
that its SuperBeets and BeetElite products do not contain a
nitrite salt[.]”[17] The labels for defendant's
products indicate that they use beetroot[18] and plaintiff
alleges that “[t]he patent[] specifications for each of
the patents marked on [defendant's] products all indicate
that ‘nitrate salts' and nitrites from vegetable
sources are two different things.”[19]
Plaintiff
further alleges that
even if the nitrites in the BeetElite and SuperBeets products
could be considered ‘nitrite salts' (which they
cannot), the products would still also be falsely marked,
falsely advertised, misbranded, and prohibited for sale in
interstate commerce because they are under-dosed (i.e., they
fail to include sufficient quantity of nitrites of any sort
to practice the patented inventions).[20]
Plaintiff
alleges that it did laboratory testing on the BeetElite and
SuperBeets products in 2016 and 2018 and that both tests
showed that the products contained an insufficient amount of
nitrites to practice the ‘589 and ‘570
patents.[21] Plaintiff also alleges that
defendant's “Neo40 products cannot and do not
practice the patents that Neo40 is marked
with.”[22]
Plaintiff
alleges that defendant is also falsely advertising that the
BeetElite, SuperBeets, and Neo40 products “contain
‘patented Nitric Oxide
technology.'”[23] Plaintiff alleges that
defendant's “claims that its products rely on
patented technology for the production of Nitric Oxide is
directly contrary to the United States Patent Office's
decision that [defendant's] co-founder is not entitled to
any patent claims for ‘generating and/or increasing
levels of Nitric Oxide.'”[24]
Plaintiff
also alleges that defendant is falsely advertising that its
employees or founders have won a Nobel Prize for research
related to Nitric Oxide.[25] For example, plaintiff alleges that
defendant makes the following statement on its website:
[o]ur research on Nitric Oxide first began with the discovery
of its unique impact on cardiovascular health. Its immense
importance as a biological signaling molecule resulted in the
awarding of the Nobel Prize in 1998. Realizing that the
discovery of Nitric Oxide had immense potential, it
didn't take long for our interest in N-O to become our
passion.[26]
Plaintiff
alleges that defendant had nothing to do with the 1998 Nobel
Prize to which it refers.[27] Plaintiff alleges that
defendant “falsely advertises itself as a Nobel Prize
winner in order to falsely convey to consumers that its owns
a monopoly on ‘patented Nitric Oxide
technology.'”[28]
Plaintiff
alleges that defendant also falsely advertises that it is the
only company “that can practice ‘patented N-O
platform technology.'”[29] Plaintiff alleges that
this is a false statement because there are many other
dietary supplements that “practice Nitric Oxide
technology[, ]” including products that use Creatine
Nitrate which is “supplied by”
plaintiff.[30]
Finally,
plaintiff alleges that defendant is falsely advertising all
of its products as Foods or Dietary
Supplements.[31] Plaintiff alleges that this means
defendant's products are misbranded because their labels
contain false or misleading information.[32]
Plaintiff
commenced this action on September 20, 2018. Plaintiff
asserts three causes of action in its complaint. In its first
cause of action, plaintiff asserts false marking claims
pursuant to 35 U.S.C. § 292. In its second cause of
action, plaintiff asserts Lanham Act false advertising
claims. And, in its third cause of action, plaintiff asserts
common law unfair competition claims.
Pursuant
to Rule 12(b)(6), Federal Rules of Civil Procedure, defendant
now moves to dismiss plaintiff's complaint.
Discussion
\
“‘To
survive a [Rule 12(b)(6)] motion to dismiss, a complaint must
contain sufficient factual matter, accepted as true, to state
a claim to relief that is plausible on its face.'”
Zixiang Li v. Kerry, 710 F.3d 995, 999 (9th Cir.
2013) (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678
(2009)). “A claim is facially plausible ‘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. (quoting
Iqbal, 556 U.S. at 678). “The plausibility
standard requires more than the sheer possibility or
conceivability that a defendant has acted unlawfully.”
Id. “‘Where a complaint pleads facts
that are merely consistent with a defendant's liability,
it stops short of the line between possibility and
plausibility of entitlement to relief.'”
Id. (quoting Iqbal, 556 U.S. at 678).
“[T]he complaint must provide ‘more than labels
and conclusions, and a formulaic recitation of the elements
of a cause of action will not do.'” In re Rigel
Pharmaceuticals, Inc. Securities Litig., 697 F.3d 869,
875 (9th Cir. 2012) (quoting Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 555 (2007)). “In evaluating
a Rule 12(b)(6) motion, the court accepts the complaint's
well-pleaded factual allegations as true and draws all
reasonable inferences in the light most favorable to the
plaintiff.” Adams v. U.S. Forest Srvc., 671
F.3d 1138, 1142-43 (9th Cir. 2012). “However, the trial
court does not have to accept as true conclusory allegations
in a complaint or legal claims asserted in the form of
factual allegations.” In re Tracht Gut, LLC,
836 F.3d 1146, 1150 (9th Cir. 2016).
“When
ruling on a Rule 12(b)(6) motion, if ‘matters outside
the pleadings are presented to and not excluded by the court,
the motion must be treated as one for summary judgment under
Rule 56.'” Hicks, 897 F.3d at 1117
(quoting Fed.R.Civ.P. 12(d)). “The
‘pleadings' include more than just the
complaint.” Id. The court may “consider
‘exhibits attached to the Complaint or matters properly
subject to judicial notice.'” Id. (quoting
Daniels-Hall, 629 F.3d at 998). “Moreover,
” the court “‘may also consider documents
whose contents are alleged in a complaint and whose
authenticity no party questions, but which are not physically
attached to the [plaintiff's] pleading.'”
Id. (quoting Northstar Fin. Advisors Inc. v.
Schwab Invs., 779 F.3d 1036, 1043 (9th Cir. 2015)).
Defendant has offered thirteen exhibits in support of its
motion to dismiss and argues that the court can consider all
of them without converting the instant motion into a motion
for summary judgment.
Exhibit
1 is an October 12, 1998 press release about the Nobel Prize
being awarded to three individuals for “their
discoveries concerning ‘nitric oxide as a signaling
molecule in the cardiovascular
system.'”[33] Defendant argues that the court could
take judicial notice of this exhibit, but there is no reason
for the court to do so. Plaintiff has alleged that
“[t]he Nobel Prize” at issue in this case
“was awarded in 1998 to Robert Francis Furchgott, Louis
J. Ignarro, and Ferid Murad for their discoveries concerning
nitric oxide as a signaling molecule in the cardiovascular
system.”[34] The court assumes this allegation is
true for purposes of the instant motion.
Exhibit
2 is a copy of the Clodfelter study. The court may consider
this exhibit without converting the instant motion into a
motion for summary judgment because ...