United States District Court, S.D. California
ORDER GRANTING DEFENDANT’S MOTION TO DISMISS
(ECF NO. 14)
Janis L. Sammartino United States District Judge
before the Court is Defendant Quidel Corporation’s
Motion to Dismiss (“MTD, ” ECF No. 14). Also
before the Court are Plaintiff FluorDx LLC’s Response
in Opposition to (“Opp’n, ” ECF No. 15) and
Defendant’s Reply in Support of (“Reply, ”
ECF No. 17) the Motion. After considering the Parties’
arguments and the law, the Court GRANTS
FluorDx, LLC is a California limited liability corporation
located in Carlsbad, California. First Amended Complaint
(“FAC”) ¶ 3, ECF No. 13. Defendant Quidel
Corporation is a Delaware corporation licensed to do business
in California and headquartered in San Diego, California.
Id. ¶ 4.
is the owner by assignment of U.S. Patent Number 9, 274, 056
B2 (the “’056 Patent”), issued on March 1,
2016. Id. ¶ 5. The ’056 Patent describes
an “assay method for detecting the presence of an
analyte in a sample using a test strip and then analyzing
this strip in a reader that uses an LED light source as the
UV excitation source.” Id. ¶ 12.
Hudak and Ian Buchanan are the named inventors of the
’056 Patent. Id. ¶ 5. Plaintiff allegedly
acquired ownership of the ’056 patent by assignment
from Mr. Hudak and Mr. Buchanan prior to the litigation.
December 20, 2018, Plaintiff filed suit, alleging that that
Defendant infringed upon the ’056 Patent by developing,
manufacturing, distributing, or selling immunoassay test
systems. FAC ¶ 14. On February 7, 2019, Defendant filed
a motion to dismiss. See generally ECF No. 12. On
February 13, 2019, Plaintiff filed the operative FAC. See
generally FAC. Defendant then filed the current Motion
under Federal Rules of Civil Procedure 12(b)(1) and 12(b)(6),
arguing that Plaintiff lacked standing to bring its suit and
failed to state a claim. See generally MTD.
courts are courts of limited jurisdiction and as such have an
obligation to dismiss claims for which they lack
subject-matter jurisdiction. Demarest v. United
States, 718 F.2d 964, 965 (9th Cir. 1983). Because the
issue of standing pertains to the subject-matter jurisdiction
of a federal court, motions raising lack of standing are
properly brought under Federal Rule of Civil Procedure
12(b)(1). White v. Lee, 227 F.3d 1214, 1242 (9th
Cir. 2000). The “party seeking to invoke the
court’s jurisdiction” bears the burden of
establishing jurisdiction. Cedars-Sinai Med. Ctr. v.
Watkins, 11 F.3d 1573, 1584 (Fed. Cir. 1993); see
also Takhar v. Kessler, 76 F.3d 995, 1000 (9th Cir.
1996) (“A plaintiff has the burden of establishing the
elements required for standing.”).
12(b)(1) motions may challenge jurisdiction facially or
factually. Safe Air for Everyone v. Meyer, 373 F.3d
1035, 1039 (9th Cir. 2004). “In a facial attack, the
challenger asserts that the allegations contained in a
complaint are insufficient on their face to invoke federal
jurisdiction. By contrast, in a factual attack, the
challenger disputes the truth of the allegations that, by
themselves, would otherwise invoke federal
jurisdiction.” Id. When a defendant raises a
factual challenge, as is the case here, “only
uncontroverted allegations” in the complaint “are
accepted as true, ” while “[a]ll other facts
underlying the controverted jurisdictional allegations are in
dispute and are subject to fact-finding by the district
court.” Cedars-Sinai, 11 F.3d at 1583–84
(citations omitted). If the court determines that it does not
have proper jurisdiction, the Court must dismiss the action.
Id. at 1585.
contends that “Plaintiff did not have standing to bring
[its] patent infringement lawsuit when it filed the original
complaint” because “Plaintiff did not own [the
’056 Patent] at the time the original complaint was
filed.” MTD at 6. Plaintiff argues that its allegations
in its FAC alone are sufficient to show standing. Opp’n
at 7. Plaintiff also contends that if the Court looks beyond
the pleadings, the evidence it brought forth to oppose
Defendant’s Motion shows that it “was the owner
by assignment [of the ’056 Patent] prior to
filing” its original complaint. Id.
order to seek damages for infringement of a patent, ”
Plaintiff must show it had “standing at the inception
of the lawsuit.” Sky Techs. LLC v. SAP AG, 576
F.3d 1374, 1379 (Fed. Cir. 2009) (citing Arachnid, Inc.
v. Merit Indus., Inc., 939 F.2d 1574, 1579 (Fed. Cir.
1991)). To show standing, Plaintiff “must demonstrate
that it held enforceable title to the patent” when it
filed suit. Paradise Creations, Inc. v. UV Sales,
Inc., 315 F.3d 1304, 1309–10 (Fed. Cir. 2003).
“The Federal Patent Act requires that all assignments
of patent interests be in writing.” Sky
Techs., 576 F.3d at 1379; 35 U.S.C. § 261
(“[P]atents, or any interest therein, shall be
assignable in law by an instrument in writing.”). Thus,
to support standing, Plaintiff has the burden to show the
requisite ownership of the ’056 Patent rights through a
written instrument. See Abraxis Bioscience, Inc. v.
Navinta LLC, 625 F.3d 1359, 1364 (Fed. Cir. 2010).
first contends that its allegations in the FAC are
sufficient, without any supporting evidence, to meet its
burden to show standing. Opp’n at 17. In the FAC,
Plaintiff’s only allegation concerning ownership states
that “[t]he inventors of the ’056 patent are
Robert Hudack and Ian Buchanan, wh[o] both assigned all their
rights in the ’056 patent to [Plaintiff] prior to the
initial filing of this lawsuit.” FAC ¶ 5.
Plaintiff contends it “does not have the burden to
plead the entire timeline and factual basis for the veracity
of its allegation” and that it does not have to prove
its allegations of ownership of the ’056 Patent at the