United States District Court, N.D. California
ORDER GRANTING MOTION TO DISMISS, RE: DKT. NO.
William H. Orrick United States District Judge
K IP Assets, LLC (“J & K”) accuses Armaspec,
Inc. (“Armaspec”) of infringing U.S. Patent No.
8, 800, 424 (“the '424 patent”) by
manufacturing, advertising, and selling its “Stealth
Recoil Spring” buffer assembly. It adequately
identifies the accused product, but it fails to sufficiently
plead how the Stealth Recoil Spring infringes the '424
patent. While it need not identify the specific claim or
provide an element-by-element comparison at this stage, it
must provide some allegations to provide Armaspec with notice
of how its product infringes J & K's patent. Its
claims are DISMISSED WITH LEAVE TO AMEND. J & K shall
file an amended complaint within 20 days.
K holds the rights to the intellectual property of JP
Enterprises, Inc., which manufactures and sells a broad range
of firearms and firearm components. Compl. ¶ 8 (Dkt. No.
1). It alleges that Armaspec infringes the '424 patent,
entitled “Capture Spring Assembly for a Firearm,
” by manufacturing, advertising, and selling its
“Stealth Recoil Spring” buffer assembly.
Id. ¶¶ 9-12. It also alleges that Armaspec
has used the “Stealth Recoil Spring” buffer
assembly “for purposes of demonstrations to customers
and potential customers.” Id. ¶ 12. It
brings claims for direct infringement, Compl. ¶ 17,
indirect infringement by inducement, id.
¶¶ 19-23, and indirect contributory infringement,
id. ¶¶ 24-25. It alleges willful
infringement based on Armaspec's actual knowledge of its
patent since at least June 6, 2017. Id. ¶¶
18, 20, 25.
Federal Rule of Civil Procedure 12(b)(6), a district court
must dismiss a complaint if it fails to state a claim upon
which relief can be granted. To survive a Rule 12(b)(6)
motion to dismiss, the plaintiff must allege “enough
facts to state a claim to relief that is plausible on its
face.” See Bell Atl. Corp. v. Twombly, 550
U.S. 544, 570 (2007). A claim is facially plausible when the
plaintiff pleads facts that “allow the court to draw
the reasonable inference that the defendant is liable for the
misconduct alleged.” See Ashcroft v. Iqbal,
556 U.S. 662, 678 (2009) (citation omitted). There must be
“more than a sheer possibility that a defendant has
acted unlawfully.” Id. While courts do not
require “heightened fact pleading of specifics, ”
a plaintiff must allege facts sufficient to “raise a
right to relief above the speculative level.” See
Twombly, 550 U.S. at 555, 570.
state a claim for patent infringement, “a patentee need
only plead facts sufficient to place the alleged infringer on
notice. This requirement ensures that the accused infringer
has sufficient knowledge of the facts alleged to enable it to
answer the complaint and defend itself.”
Phonometrics, Inc. v. Hosp. Franchise Sys., Inc.,
203 F.3d 790, 794 (Fed. Cir. 2000).
court dismisses the complaint, it “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.” See Lopez
v. Smith, 203 F.3d 1122, 1127 (9th Cir. 2000). In making
this determination, the court should consider factors such as
“the presence or absence of undue delay, bad faith,
dilatory motive, repeated failure to cure deficiencies by
previous amendments, undue prejudice to the opposing party
and futility of the proposed amendment.” See Moore
v. Kayport Package Express, 885 F.2d 531, 538 (9th Cir.
argues that J & K's complaint must be dismissed
because it “inadequately identifies the accused
product(s)[.]” Mot. to Dismiss at 3 (Dkt. No.
21)(capitalization omitted). After citing a bevy of cases for
the proposition that J & K must identify the specific
product accused of infringement, id. at 3-4,
Armaspec acknowledges that J & K has identified a
specific product (the Stealth Recoil Spring), but contends
that “[i]t is not clear whether [p]laintiff is alleging
that the ‘Stealth Recoil Spring' is the only
Accused Product or whether Armaspec's other products also
infringe.” Id. at 4. At this stage, J & K
need not disclose each known accused product. E.g.,
Windy City Innovations, LLC v. Microsoft Corp., 193
F.Supp.3d 1109, 1115 (N.D. Cal. 2016)(“Additionally,
defendant's argument that it should be entitled to notice
at the pleading stage of which specific products infringed on
which specific claims in the patents is belied by both the
local patent rules and Federal Circuit authority.”).
That information is required by the initial disclosures due
not later than 14 days after the initial case management
conference. Patent L. R. 3-1(b).
insists that J & K's allegations fail to state a
claim for direct infringement because they “essentially
regurgitate the requirements in 35 U.S.C. section 217[,
]” do not include an explanation of how the Stealth
Recoil Spring “contains each and every limitation of
the asserted claims[, ]” and include conclusory
allegations that Armaspec itself has used the Stealth Recoil
Spring in demonstrations to potential customers. Mot. at 4-5.
J & K's complaint sufficiently alleged what
Armaspec did to infringe the '424 patent as required
under 35 U.S.C. section 217, but it does not adequately plead
how Armaspec's Stealth Recoil Spring infringes.
J & K need not allege how the Stealth Recoil Spring
contains each and every limitation of the asserted claims
(that specificity is reserved for initial disclosures), but
it must allege some facts about the scope of the
patent claims and how the Stealth Recoil Spring infringes.
Compare Compl. ¶¶ 17, 19 (alleging only
that certain products including the Stealth Recoil Spring are
“within the scope of one or more claims of the '424
Patent), with Lifetime Indus., Inc. v. Trim-Lok,
Inc., 869 F.3d 1372, 1379 (Fed. Cir. 2017)(finding
allegations sufficient to state a claim for patent
infringement when they included the where, when, who, and why
of infringement); Windy City Innovations, LLC v.
Microsoft Corp., Case No. 16-cv-01729-YGR, 193 ...