United States District Court, W.D. Washington, Tacoma
ORDER DENYING DEFENDANT'S MOTION TO DISMISS DKT.
HONORABLE RONALD B. LEIGHTON JUDGE
MATTER is before the Court on Defendant ITW Polymers Sealants
North America Inc.'s Second Motion to Dismiss [Dkt. #24]
Plaintiff Westech Aerosol Corporation's
Complaint. Westech alleges ITW infringed its patent
for a spray adhesive stored in a canister and applied with a
spray gun. ITW argues Westech has pled no facts showing
direct infringement, and so it asks the Court to dismiss
Westech's complaint under Federal Civil Rule 12(b)(6)
without leave to amend. Westech argues ITW's real issue
is with the merits of Westech's claims, which the Court
cannot resolve on a motion for dismissal. It asks that if the
Court concludes it must plead with more specificity, that it
receive leave to amend.
claims ITW infringed its patent for an “Aerosol
Adhesive and Canister-Based Aerosol Adhesive System, ”
U.S. Patent No. 7, 705, 056. Its system includes “a gas
cylinder canister, a hose, a spray gun, a hydrocarbon
propellant, and an aerosol adhesive comprising a solvent
mixture selected to have volatility characteristics for
producing a specific spray pattern, a polymeric base in said
solvent mixture, and a compressed gas dissolved in the
solvent mixture.” Dkt. #23 (Amended Complaint) at 3
(describing “claim one”). Westech alleges
ITW's STA'-PUT SP80 Canister Adhesive infringes claim
one of Patent ‘056 because it is also an aerosol
adhesive canister system designed to spray an aerosol
adhesive from the canister through a hose and spray gun.
See Id. at 4. More specifically, it “includes
a canister containing a hydrocarbon propellant and an aerosol
adhesive comprising a solvent mixture selected to have
volatility characteristics for producing a specific spray
pattern, a polymeric base in said solvent mixture, and a
compressed gas dissolved in the solvent mixture.”
Id. at 4.
argues Westech's complaint cannot satisfy the new
pleading standard for patent infringement claims because it
neglects describing the STA'-PUT's features. It
suggests Westech omits these descriptions because it knows
ITW's product does not infringe Westech's patent, and
allowing Westech's meritless claims to advance would
expose ITW to billions of dollars of discovery costs. It also
argues that because Westech cannot sustain a direct
infringement claim, its claims for contributory, induced, and
willful infringement also fail.
argues its complaint satisfies the Federal Rules'
pleading requirements because it puts ITW on notice that the
STA'-PUT infringes claim one of Patent ‘056. It
argues any additional and more specific facts are in
ITW's sole control. It asks the Court to leave resolution
of the merits for summary judgment, and if it decides against
Westech, to grant it leave to amend.
Standard of Review.
under Rule 12(b)(6) may be based on either the lack of a
cognizable legal theory or the absence of sufficient facts
alleged under a cognizable legal theory. See Balistreri
v. Pacifica Police Dep't, 901 F.2d 696, 699 (9th
Cir. 1990). A plaintiff's complaint must allege facts to
state a claim for relief plausible on its face. See
Aschcroft v. Iqbal, 129 S.Ct. 1937, 1949 (2009). A claim
has “facial plausibility” when the party seeking
relief “pleads factual content that allows the Court to
draw the reasonable inference that the defendant is liable
for the misconduct alleged.” Id. “[A]
plaintiff's obligation to provide the ‘grounds'
of his ‘entitle[ment] to relief' requires more than
labels and conclusions, and a formulaic recitation of the
elements of a cause of action will not do. Factual
allegations must be enough to raise a right to relief above
the speculative level.” Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 555 (2007) (citations and
footnotes omitted). This requires a plaintiff to plead
“more than an unadorned,
Iqbal, 129 S.Ct. at 1949 (citing Twombly).
12(b)(6) motion, “a district court should grant leave
to amend even if no request to amend the pleading was made,
unless it determines that the pleading could not possibly be
cured by the allegation of other facts.” Cook,
Perkiss & Liehe v. N. Cal. Collection Serv., 911
F.2d 242, 247 (9th Cir. 1990). However, where the facts are
not in dispute, and the sole issue is whether there is
liability as a matter of substantive law, the Court may deny
leave to amend. See Albrecht v. Lund, 845 F.2d 193,
195-96 (9th Cir. 1988).
Direct Infringement Claim.
argues Westech must plead facts describing the
STA'-PUT's features, and if Westech pled those facts,
it would become obvious to the Court that ITW did not
infringe on Westech's patent. For example, ITW alleges
the STA'-PUT uses nitrogen, which is not a hydrocarbon,
as its propellant; its solvent is methyl acetate, which is
not a solvent mixture but a single solvent; and its
compressed gas is nitrogen, but nitrogen does not dissolve in
methyl acetate as Patent ‘056 requires.
argues it need plead nothing more than the name of the
accused product and the allegedly infringed patent claim
number, but that it has gone beyond that requirement by
“expressly stating that each separate limitation of the
asserted claim can be found in the accused product.”
Dkt. #26 (Response) at 5. Westech also disputes ITW's
contentions that it does not use a hydrocarbon propellant or
a solvent mixture and that nitrogen cannot be a compressed
gas dissolved in ITW's solvent mixture.
state a claim for direct patent infringement, a plaintiff
must allege that the defendant, “without authority[, ]
makes, uses, offers to sell, or sells any patented
invention.” 35 U.S.C. § 271(a); see also Joy
Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 773 (Fed. Cir.
1993) (citing Hewlett-Packard Co. v. Bausch & Lomb
Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990), cert.
denied, 493 U.S. 1076 (1990)). “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). “[T]o properly plead direct infringement under
Twombly and Iqbal, a plaintiff must
plausibly allege that a defendant directly infringes each
limitation in at least one asserted claim.” Scripps
Research Inst. v. Illumina, Inc., No. 16-CV-661 JLS
(BGS), 2016 WL 6834024, at *5 (S.D. Cal. Nov. 21, 2016).
pleads ITW's STA'-PUT infringes each limitation of
claim one of Patent ‘056. Patent ‘056 protects a
system where a gas cylinder canister shoots out an aerosol
adhesive using a hose, spray gun, and hydrocarbon propellant.
The adhesive comprises a compressed gas dissolved in a
solvent mixture with a polymeric base. Westech alleges the
STA'-PUT is a canister that uses a hose, spray gun, and
hydrocarbon propellant to shoot an aerosol adhesive. The
adhesive comprises a solvent mixture with a polymeric base in
which a compressed gas is dissolved. Westech also pleads
facts alleging ITW knew of this alleged infringement.