The opinion of the court was delivered by: JAMES WARE, District Judge
ORDER GRANTING MARATHON'S MOTION TO DISMISS COUNTERCLAIMS
Marathon Coach, Inc. ("Marathon" or "Plaintiff") filed a patent
infringement action against Phase Four Industries, Inc. ("Phase
Four"), and Monaco, Inc. ("Monaco") (collectively "Defendants"),
in November 2004. Currently before this Court is Marathon's
Motion to Dismiss Defendants' Counterclaims for failure to state
a claim upon which relief may be granted pursuant to Rule
12(b)(6) of the Federal Rules of Civil Procedure. This Court
deemed Plaintiff's motion submitted pursuant to Civil Local Rule
7-1(b). Based on the briefs filed to date, this Court GRANTS
Plaintiff's Motion to Dismiss Counterclaims.
Marathon is an Oregon corporation with its principal place of
business in Coburg, Oregon. Marathon is involved in the business
of producing hand built, high-end RV's from the chassis up.
Marathon is the owner-by-assignment of the U.S. Patent No.
6,607,009 (hereinafter '009), entitled "Sewage Systems for
Vehicles." The patent was issued on August 19, 2003. Phase Four
is a California corporation with its principal place of business in Hollister, California.
Phase Four is also involved in the RV industry. In October 2002,
Phase Four filed a provisional application for an automatic sewer
hose. Monaco is an Oregon corporation with its principal place of
business in Oregon. Monaco is a developer and manufacturer of
RVs. Pursuant to a business relationship with Phase Four, Monaco
purchases RV parts from Phase Four and incorporates them into its
This case essentially involves the technology development of
the RV waste disposal system. RV waste disposal is typically done
manually, through the manipulation of valves and a sewer hose.
The user must manually connect a sewer hose from the RV to a
sewer receptacle. After the waste has been emptied from the RV,
the hose is manually disconnected and stored within the RV. This
process is generally thought to be an unpleasant experience. Both
Marathon and Phase Four have developed and claim inventorship to
automated waste disposal systems that use a pre-attached sewer
hose that extends and retracts without the need for manual
manipulation of the hose.
Marathon contends that Defendants manufacture, use, sell and or
offer to sell the "Waste Master" sewage system, which infringes
on Marathon's '009 patent. On October 29, 2004, Marathon sent a
"cease and desist" letter to Monaco. The letter informed Monaco
that the "Waste Master" product infringed on Marathon's patents
and requested an accounting of sales. In late November 2004,
Marathon filed a patent infringement suit against Defendants in
the District Court in Oregon. The lawsuit was later transferred
to the Northern District of California and is currently before
this Court. Defendants have filed separate counterclaims against
Marathon's infringement claims. Specifically, Phase Four's
counterclaims include (1) intentionalinterference with business
relationships, (2) intentionalinterference with existing
contractualrelations, (3) intentional interference with
prospective contractual relations, (4) defamation, and (5) libel.
Monaco has asserted only one counterclaim for intentional
interference with business relationship against Marathon.
Marathon now moves to dismiss all of Defendants' counterclaims
pursuant to Rule 12(b)(6). Fed.R.Civ.P. 12(b)(6).
Anticipating that Marathon would sue it for patent
infringement, on November 11, 2004, Phase Four filed a preemptive
action against Marathon in the Northern District of California,
seeking a declaratory judgment that it does not infringe the '009
patent and that the '009 patent is invalid. (See C 04-4801-JW.)
Two of the bases for claimed invalidity urged by Phase Four are
priority of inventorship and derivation. On October 20, 2005, this Court granted Marathon's Motion for Partial Summary
Judgment as to the affirmative defenses of invalidity based on
priority of inventorship and derivation and orders these
affirmative defenses dismissed. (See C 04-4801-JW, Docket Item
A. Dismissal under Rule 12(b)(6)
A complaint may be dismissed for failure to state a claim upon
which relief can be granted. FED. R. CIV. P. 12(b)(6). A claim
may be dismissed as a matter of law for: "(1) lack of a
cognizable legal theory or (2) insufficient facts under a
cognizable legal theory." Robertson v. Dean Witter Reynolds,
Co., 749 F.2d 530, 534 (9th Cir. 1984). "A complaint should not
be dismissed for failure to state a claim unless it appears
beyond doubt that the plaintiff can prove no set of facts in
support of his claim which would entitle him to relief." Conley
v. Gibson, 355 U.S. 41, 45-46 (1957). The court "must presume
all factual allegations of the complaint to be true and draw all
reasonable inferences in favor of the nonmoving party." Usher v.
City of Los Angeles, 828 F.2d 556, 561 (9th Cir. 1987). In
determining the propriety of a FED. R. CIV. P. 12(b)(6)
dismissal, a court may not look beyond the complaint. Schneider
v. California Dept. of Corrections, 151 F.3d 1194, 1197 (9th
Cir. 1998) ("The focus of any Rule 12(b)(6) dismissal . . . is
the complaint"). A court may dismiss a case without leave to
amend if the Plaintiff is unable to cure the defect by amendment.
Lopez v. Smith, 203 F.3d 1122, 1129 (9th Cir. 2000).
Title 28 U.S.C. § 1404(a) permits a party to a litigation to
request transfer of any civil action to any other district court
or division where it might have been brought.
28 U.S.C. § 1404(a). The United States Supreme Court has, however, held that
a transfer of venue under § 1404(a) should effect only a change
of court and not a change of law. Van Dusen v. Barrack,
376 U.S. 612 (1964). Thus, the transferee court should apply the law
that the transferor court would have applied if the case had not
been transferred. Hence, this Court will apply the law that the
Oregon court would have applied, had the case not been
transferred to California. IV. DISCUSSION
As a preliminary matter, the Court finds that Marathon, the
owner of the '009 Patent, has a statutory right to enforce its
patent by contacting possible infringers and advising them of
possible infringement suits. A patentee who has a good faith
belief that its patents are being infringed violates no protected
right when it notifies infringers. Mallinckrodt, Inc. V.
Mediapart, Inc., 976 F.2d 700
, 709 (Fed. Cir. 1992). Patents
would be of little value if infringers of them could not be
notified of the consequences of infringement or proceeded against
in the courts. Id. Marathon is the owner of the U.S. Patent No.
6,607,009 (the '009 Patent), describing a novel automatic sewer
hose for RVs. As the owner of this Patent, Marathon is granted a
statutory presumption of validity and therefore has the right to
enforce its Patent. 35 U.S.C. § 282. The federal circuit has held
that "threatening alleged infringers with suit" is contained
within a patent owner's right to enforce his patent. Concrete
Unlimited, Inc. V. Cementcraft, Inc., 776 F.2d 1537
, 1539 (Fed.
Cir. 1985). Thus, Marathon clearly had a right to send an
infringement letter to Monaco, informing them of a possible
lawsuit. The letter was sent from the law firm of Chernoff,
Vilhauer, McClung & Stenzel, LLP, and addressed to Mr. John
Nepute, President, CEO of Monaco. The letter reads, in pertinent
We represent Marathon Coach, Inc., in its
intellectual property mattes. It has come to our
attention that Monaco Coach equips its coaches with
Waste Master products from Phase Four Industries. The
Waste Master product infringes U.S. Patent No.
6,607,009, assigned to Marathon Coach. Accordingly,
your resale of this product ...