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Sorenson v. Dorman Products

November 24, 2009


The opinion of the court was delivered by: Honorable Barry Ted Moskowitz United States District Judge


Before the Court are two motions filed by Defendant Dorman Products, Inc.: a Motion to Dismiss for Failure to State a Claim (Doc. 8) and a Motion to Dismiss, Transfer or Stay (Doc. 9). For the reasons explained below, Defendant's Motion to Dismiss is DENIED and the Motion to Dismiss, Transfer or Stay is GRANTED in part and DENIED in part.


Plaintiff is the trustee of Sorensen Research and Development Trust. On June 9, 2009, Sorensen's then counsel sent Defendant Dorman Products, Inc. a demand letter with a notice of patent infringement. The patent at issue was United States Patent Number 4,935,184, which is owned by the Trust.

After further correspondence between Plaintiff and Dorman, on June 26, 2009 Dorman filed suit for declaratory judgment in the Eastern District of Pennsylvania to determine the rights of the parties with respect to the '184 Patent. Pending before the Pennsylvania court are two motions: Sorensen's motion to dismiss for lack of personal jurisdiction, and Dorman's motion to enjoin Sorensen from proceeding with this case.

Almost a month after the Pennsylvania action was filed, Plaintiff filed this suit on July 21, 2009, alleging infringement of the '184 Patent and seeking unspecified damages. On August 20, 2009, Dorman filed its Motion to Dismiss for Failure to State a Claim. On the same day, Dorman filed its Motion to Dismiss, Transfer, or Stay, which invokes the first-to-file rule and seeks one of three alternative forms of relief: (1) dismissal of the present suit, (2) transfer of this suit to the Pennsylvania district court; or (3) stay of this action.


1. Motion to Dismiss for Failure to State a Claim

Under Federal Rule of Civil Procedure 8(a)(2), the plaintiff is required only to set forth a "short and plain statement of the claim showing that the pleader is entitled to relief," and "give the defendant fair notice of what the . . . claim is and the grounds upon which it rests." Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007). When reviewing a motion to dismiss, the allegations of material fact in plaintiff's complaint are taken as true and construed in the light most favorable to the plaintiff. See Parks Sch. of Bus., Inc. v. Symington, 51 F.3d 1480, 1484 (9th Cir. 1995). But only factual allegations must be accepted as true-not legal conclusions. Ashcroft v. Iqbal, 129 S.Ct. 1937, 1949 (2009). "Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice." Id. Although detailed factual allegations are not required, the factual allegations "must be enough to raise a right to relief above the speculative level." Twombly, 550 U.S. at 555. Furthermore, "only a complaint that states a plausible claim for relief survives a motion to dismiss." Iqbal, 129 S.Ct. at 1949.

Dorman's first argument supporting its motion to dismiss is that the allegations in the Complaint are too vague and conclusory, and the Complaint must be dismissed under the heightened standard set forth in Twombly and Iqbal. The Court disagrees, and holds that the allegations in the Complaint, though minimal, are enough to state a claim for relief.

The Federal Circuit, in a post-Twombly decision, stated that the following allegations were sufficient to state a cause of action for patent infringement: "(1) an allegation of jurisdiction; (2) a statement that the plaintiff owns the patent; (3) a statement that defendant has been infringing the patent by making, selling, and using [the device] embodying the patent; (4) a statement that the plaintiff has given the defendant notice of its infringement; and (5) a demand for an injunction and damages." McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1356--57 (Fed. Cir. 2007). Plaintiff has pled facts supporting each of these elements, and has identified two specific products-the "Ergo Stripper" and the "Crimper"-that allegedly infringe on Plaintiff's '184 Patent. The alleged facts are plausible, sufficiently specific, and form an adequate basis for Plaintiff's infringement claim. See Bender v. Broadcom Corp., No. 09cv1147 MHP, 2009 WL 3571286, at *4 (N.D. Cal. Oct. 30, 2009) (denying motion to dismiss under Twombly and Iqbal standard even where complaint listed virtually all defendant's products because list could include infringing products).

Dorman's second argument supporting dismissal is that because Plaintiff notified Dorman of the infringement only after the '184 Patent had already expired, Dorman cannot be held liable for any damages. Dorman relies on 35 U.S.C. § 271(g), which states [w]hoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent . . . .

Dorman also relies on 36 U.S.C. § 287(b)(2), which provides that [n]o remedies for infringement under section 271(g) of this title shall be available with respect to any product in the possession of, or in transit to, the person subject to liability under such section before that person had notice of infringement with respect to that product . . . .

Dorman argues that ยงยง 271(g) and 287(b)(2) apply squarely to this case and because it received a notice of infringement after Plaintiff's patent had ...

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