UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
December 2, 2011
GUZIK TECHINICAL ENTERPRISES, INC.,
PLAINTIFF AND COUNTERCLAIM DEFENDANT,
WESTERN DIGITAL CORPORATION, WESTERN DIGITAL TECHNOLOGIES, INC., AND WESTERN DIGITAL (FREMONT) INC.,
DEFENDANTS AND COUNTERCLAIM PLAINTIFFS,
WESTERN DIGITAL (THAILAND) COMPANY LIMITED AND WESTERN DIGITAL (MALAYSIA) SDN.BHD,
The opinion of the court was delivered by: Paul S. Grewal United States Magistrate Judge
United States District Court For the Northern District of California
ORDER DENYING MOTION TO
(Re: Docket No. 25)
Plaintiff Guzik Technical Enterprises, Inc. ("GTE") charges Defendants Western Digital Corporation, Western Digital Technologies, Inc., Western Digital (Fremont), Inc., Western Digital 22 (Thailand) Company, Ltd., and Western Digital (Malaysia) SDN.BHD (collectively "WD") with 23 patent infringement, including infringement in violation of 35 U.S.C. § 271(g). In response, WD 24 25 moves to dismiss GTE's Section 271(g) claims pursuant to Fed. R. Civ. P. 12(b)(6). Having considered the briefs and the oral argument presented to the court, and for the reasons below, the 27 court DENIES WD's motion. 28
apparatus and process for testing hard disk drive heads and media.*fn1 GTE explains that "[h]ead/disk GTE is the owner of U.S. Patent No. 6,023,145 ("'145 Patent"), which claims both an testers that use the patented process of the '145 Patent can provide more accurate positioning of a 5 magnetic head with respect to the magnetic disk of the tester."*fn2 GTE also owns U.S. Patent No. 6 6,785,085 ("085 Patent"), which is directed to an apparatus and process for arranging multi-7 frequency servo burst patterns on a hard drive disk platter. The platter is then used to test hard 8 drive heads and media.*fn3 "The employment of two different servo bursts on different frequencies . . 9 10 . improve[s] the ability of the read/write head to be positioned on the disk in a hard drive."*fn4
In its complaint, GTE alleges that WD testers practicing the processes of '145 and '085 patents are used in Thailand and Malaysia to "test heads and media as part of Defendants' 13 manufacture of hard drives that are imported into the United States either as standalone hard drives 14 or as components of other devices."*fn5 The specification of the '145 Patent, which the complaint 15 incorporates by reference, provides that "[i]n the manufacture of a disk-based storage system, 16 known as a 'disk-drive,' magnetic heads are usually tested on special magnetic head/disk testers 17 18 with regard to their parameters and performance characteristics.*fn6 No further details are provided regarding WD's use of the claimed processes in the manufacture of its imported hard drives.
II. LEGAL STANDARDS
Pursuant to Rule 12(b)(6), a complaint may be dismissed against a defendant for failure to 2 state a claim upon which relief may be granted against that defendant. "Dismissal can be based on 3 the lack of a cognizable legal theory or the absence of sufficient facts alleged under a cognizable 4 legal theory."*fn7 While "detailed factual allegations" are not required, a complaint must include 5
"more than an unadorned, the-defendant-unlawfully-harmed-me accusation."*fn8 In other words, a 6 complaint must have sufficient factual allegations to "state a claim to relief that is plausible on its 7 face."*fn9 A claim is facially plausible "when the pleaded factual content allows the court to draw the 8 reasonable inference that the defendant is liable for the misconduct alleged."*fn10 9
When evaluating a Rule 12(b)(6) motion, the court must accept all material allegations in 10 the complaint as true and construe them in the light most favorable to the non-moving party.*fn11
Review of a motion to dismiss is limited to the face of the complaint, materials incorporated into 12 the complaint by reference, and matters of which the court may take judicial notice.*fn12 The court is 13 not required to accept "legal conclusions cast in the form of factual allegations if those conclusions 14 cannot reasonably be drawn from the facts alleged."*fn13 Further, the court need not accept as true 15 allegations that contradict matters that are either subject to judicial notice or attached as exhibits to 16 the complaint.*fn14
2 3 a sample complaint for direct infringement, meets the Supreme Court's pleading standard set forth The Federal Circuit has held that Fed. R. Civ. P. Form 18 (formerly Form 16), setting forth in Twombly.*fn15 That standard requires only the following: (1) an allegation of jurisdiction; (2) a 5 statement that the plaintiff owns the patent; (3) a statement that defendant has been infringing the 6 patent by one or more of the activities proscribed under 35 U.S.C. § 271; (4) a statement that the 7 plaintiff has given the defendant notice of its infringement; and (5) a demand for an injunction and 8 damages.*fn16 Form 18 uses for example an allegation that the defendant violates Section 271(a) by 9 10 "making, selling, and using" electric motors; no further detail is provided.
The parties do not dispute that Section 271(g) is a form of direct infringement.*fn17 Because GTE's complaint provides the bare level of detail for allegations of direct infringement suggested 13 by Form 18, it therefore must pass muster.*fn18 "That form, which provides an example of alleging 14 direct infringement, requires essentially nothing more than conclusory statements."*fn19 To be sure, it 15 is difficult to reconcile Form 18 with the Supreme Court's guidance in Twombly, and, later, Iqbal.*fn20 16
In recognition of the primacy of Congress and "under Rule 84 of the Federal Rules of Civil Procedure, however, a court must accept as sufficient any pleading made in conformance with the 1 2 forms."*fn21
The court nevertheless appreciates that the complaint fails to disclose how WD's alleged 4 use of the claimed testing processes can render the imported products "made by" those processes, 5 in a manner consistent with both the plain language of Section 271(g) and Federal Circuit 6 precedent defining that language.*fn22 It is noteworthy, for instance, that many details missing from 7 the complaint are discussed at length in GTE's brief, with no explanation as to why such 8 9 information was not disclosed absent the filing of a motion with the court.*fn23 While perhaps small consolation, WD may of course pursue this issue in discovery, including one or more contention interrogatories, in advance of an appropriate motion pursuant to Fed. R. Civ. 56.
WD's motion to dismiss is DENIED.
IT IS SO ORDERED.