United States District Court, W.D. Washington, Tacoma
ORDER DENYING MOTION TO DISMISS WITHOUT PREJUDICE
B. LEIGHTON UNITED STATES DISTRICT JUDGE
MATTER is before the Court on Defendants 3M's and
NorthStar's Amended Motion to Dismiss Plaintiff
Westech's Amended Complaint [Dkt. #42]. Westech alleges
3M and its subsidiary, NorthStar, have infringed
Westech's patent for a spray glue and the canister that
dispenses it. 3M and NorthStar ask the Court to dismiss
Westech's complaint because (1) it has pled insufficient
facts in support of its direct infringement claim to survive
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009), and
Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 556,
570 (2007), and (2) after the Supreme Court's decision in
TC Heartland LLC v. Kraft Foods Group Brands LLC,
No. 16-341, 2017 U.S. LEXIS 3213 (May 22, 207), venue is
improper. Westech argues its complaint sufficiently puts 3M
and NorthStar on notice of its claims against them. It also
asks for leave to amend its complaint, so it may allege facts
commensurate with TC Heartland.
complaint, Westech lists thirty-eight 3M and NorthStar
products it claims infringe upon claim one of its patent for
an “Aerosol Adhesive and Canister-Based Aerosol
Adhesive System, ” U.S. Patent No. 7, 705, 056. The
patent protects a glue-dispensing system comprised of
“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. #27 (Amended Complaint) at 3.
Westech claims 3M's and NorthStar's products contain
“all of the same ingredients” as its patented
system. See id. at 8, 11.
defendants ask the Court to dismiss Westech's complaint
under Federal Rule 12(b)(6) for its alleged failure to plead
facts sufficient to support its claims for direct
infringement. They also seek dismissal under Rule 12(b)(3)
for improper venue.
Standards 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).
12(b)(3) allows a court to dismiss a case for improper venue.
The Court need not accept the pleadings as true, and it may
consider facts outside of the pleadings. See Argueta v.
Banco Mexicano, S.A., 87 F.3d 320, 324 (9th Cir. 1996).
If it concludes venue is improper, it did not reach the
case's merits, so dismissal must be without prejudice.
See In re Hall, Bayoutree Assocs., Ltd., 939 F.2d
802, 804 (9th Cir. 1991).
Direct Infringement Claims.
NorthStar argue Westech's complaint fails to raise a
plausible claim for direct infringement because it does not
identify how any of their products specifically infringes
Westech's patent. It argues Westech must plead facts
showing that some ingredients or features of an accused
product correspond to the elements making up its patent-that
it must describe what the product's “hydrocarbon
propellant, ” “polymeric base, ”
“solvent mixture, ” and “compressed gas
dissolved in said solvent mixture” consistent of.
Westech argues it properly put the defendants on notice of
its claims against them by listing their accused products,
identifying the allegedly-infringed patent claim by number,
and alleging every limitation of the claim can be found in
each accused product.
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 that each of the thirty-eight products it has
identified infringes each limitation of claim one of its
patent. Its patent 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 each of the accused products
is 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”
intended to be combined with a hose and a spray gun. Dkt. #27
at 8, 11. Westech also alleges 3M and NorthStar knew of this
alleged infringement but sold their products anyway.
complaint sufficiently puts the defendants on notice of how,
where, and to what degree it claims their products infringe
its patent. It presents a cognizable legal theory supported
by factual allegations that raise its right to relief against
them above the speculative level. ...