United States District Court, W.D. Washington, Tacoma
ORDER DENYING DEFENDANT'S MOTION TO DISMISS DKT.
B. Leighton United States District Judge
MATTER is before the Court on Defendant Wilsonart LLC's
Second Motion to Dismiss [Dkt. #24] Plaintiff Westech Aerosol
Corporation's Complaint. Westech alleges Wilsonart
infringed its patent for a spray adhesive stored in a
canister and applied with a spray gun. Wilsonart 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 Wilsonart'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
claims Wilsonart 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
Wilsonart's 730/731 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 730/731 Adhesive's features. It
suggests Westech omits these descriptions because it knows
Wilsonart's product does not infringe Westech's
patent, and allowing Westech's meritless claims to
advance would expose Wilsonart 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 Wilsonart on notice
that the 730/731 Adhesive infringes claim one of Patent
‘056. It argues any additional and more specific facts
are in Wilsonart'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 730/731
Adhesive's features, and if Westech pled those facts, it
would become obvious to the Court that Wilsonart did not
infringe on Westech's patent. For example, Wilsonart
alleges the 730/731 Adhesive's 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
Wilsonart's contentions that it does not use a solvent
mixture and that nitrogen cannot be a compressed gas
dissolved in that 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 Wilsonart's 730/731 Adhesive 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 730/731 Adhesive 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 Wilsonart knew of this
alleged infringement. ...