United States District Court, D. Nevada
C. JONES UNITED STATES DISTRICT JUDGE
case arises out of the alleged infringement of a patent for
an audio-video doorbell system. Pending before the Court are
two motions to dismiss.
FACTS AND PROCEDURAL HISTORY
Ey k365, LLC is a North Carolina entity with its principle
place of business in that state. (Compl. ¶ 2, ECF No.
1). Plaintiff is the assignee of U.S. Patent No. 9, 432, 638
(“the Patent”) entitled “Communication and
Monitoring System, ” which issued on August 30, 2016.
(Id. ¶¶ 11-12). Defendant Zmodo Technology
Corp. Limited is a Nevada entity with its principle place of
business in Illinois. (Id. ¶ 3).
sued Defendant in the Western District of North Carolina,
alleging direct infringement of claims 1 and 6 of the Patent
in violation of 35 U.S.C. § 271(a) “by making,
using, offering for sale, selling, and/or importing
[infringing] devices in the United States, ”
(id. ¶ 13), as well as inducing infringement of
those claims in violation of 35 U.S.C. § 271(b),
(id. ¶ 21). Defendant answered and filed
counterclaims for declaratory judgment of non-infringement
and invalidity under §§ 101, 102, 103, and 112.
(Answer & Countercl., ECF No. 15). Both parties demanded
moved to dismiss for failure to state a claim under 35 U.S.C.
§ 101. Plaintiff answered the Counterclaim and moved to
dismiss Defendant's fourth through ninth affirmative
defenses for failure to satisfy Rule 8(c). Chief Judge
Whitney of the Western District of North Carolina denied the
dispositive motions without prejudice as premature.
after the Supreme Court decided TC Heartland,
Defendant filed a motion to dismiss or transfer because it
resided in Nevada and had no regular and established place of
business in the Western District of North Carolina.
See 28 U.S.C. § 1400(b); TC Heartland LLC
v. Kraft Foods Grp. Brands LLC, 137 S.Ct. 1514, 1520-21
(2017). Chief Judge Whitney granted the motion in part,
transferring the case to this District. The case was randomly
assigned to Judge Dorsey but immediately randomly reassigned
to this Court because Judge Dorsey was not a patent pilot
program judge. Claim construction briefing was completed
before transfer, but the parties and the Magistrate Judge
have not yet determined whether to consolidate claim
construction in the related cases. Before construing the
claims, the Court will decide the motions to dismiss filed
before transfer, as the parties indicated should be done at a
recent status conference before the Magistrate Judge. The
Court will not consider the previously filed motion for
partial summary judgment until after claim construction.
Rule of Civil Procedure 8(a)(2) requires “a short and
plain statement of the claim showing that the pleader is
entitled to relief” in order to “give the
defendant fair notice of what the . . . claim is and the
grounds upon which it rests.” Conley v.
Gibson, 355 U.S. 41, 47 (1957). A motion to dismiss
under Rule 12(b)(6) tests the complaint's sufficiency,
see N. Star Int'l v. Ariz. Corp. Comm'n, 720
F.2d 578, 581 (9th Cir. 1983), and dismissal is appropriate
only when the complaint does not give the defendant fair
notice of a legally cognizable claim and the grounds on which
it rests. See Bell Atl. Corp. v. Twombly, 550 U.S.
544, 555 (2007).
treats factual allegations as true and construes them in the
light most favorable to the plaintiff, NL Indus., Inc. v.
Kaplan, 792 F.2d 896, 898 (9th Cir. 1986), but does not
accept as true “legal conclusions . . . cast in the
form of factual allegations.” Paulsen v. CNF
Inc., 559 F.3d 1061, 1071 (9th Cir. 2009). A plaintiff
must plead facts pertaining to his case making a violation
“plausible, ” not just “possible.”
Ashcroft v. Iqbal, 556 U.S. 662, 677-79 (2009)
(citing Twombly, 550 U.S. at 556) (“A claim
has facial plausibility when the plaintiff pleads factual
content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct
alleged.”). That is, a plaintiff must not only specify
or imply a cognizable legal theory (Conley review),
he must also allege the facts of his case so that the court
can determine whether he has any basis for relief under the
legal theory he has specified or implied, assuming the facts
are as he alleges (Twombly-Iqbal review).
a district court may not consider any material beyond the
pleadings in ruling on a Rule 12(b)(6) motion. However,
material which is properly submitted as part of the complaint
may be considered on a motion to dismiss.” Hal
Roach Studios, Inc. v. Richard Feiner &
Co., 896 F.2d 1542, 1555 n.19 (9th Cir. 1990) (citation
omitted). Similarly, “documents whose contents are
alleged in a complaint and whose authenticity no party
questions, but which are not physically attached to the
pleading, may be considered in ruling on a Rule 12(b)(6)
motion to dismiss” without converting the motion to
dismiss into a motion for summary judgment. Branch v.
Tunnell, 14 F.3d 449, 454 (9th Cir. 1994). Also, under
Federal Rule of Evidence 201, a court may take judicial
notice of “matters of public record” if not
“subject to reasonable dispute.” United
States v. Corinthian Colls., 655 F.3d 984, 999 (9th Cir.
2011). Otherwise, if the district court considers materials
outside of the pleadings, the motion to dismiss is converted
into a motion for summary judgment. See Arpin v. Santa
Clara Valley Transp. Agency, 261 F.3d 912, 925 (9th Cir.
Court has addressed the standards for stating affirmative
defenses in patent cases. See Rockwell Automation, Inc.
v. Beckhoff Automation, LLC, 23 F.Supp.3d 1236, 1241-42
(D. Nev. 2014). “The key to determining the sufficiency
of pleading an affirmative defense is whether it gives
plaintiff fair notice of the defense.” Wyshak v.
City Nat'l Bank, 607 F.2d 824, 827 (9th Cir. 1979)
(citing Conley, 355 U.S. at 47-48). But there are
differences between the pleading standards of claims and
defenses under Rules 8(a) and 8(c). Iqbal is based
on the Supreme Court's reading of Rule 8(a), which
requires “a short and plain statement of the claim
showing that the pleader is entitled to relief, ” but
affirmative defenses under Rule 8(c) must simply be
“affirmatively state[d].” See Bank of Beaver
City v. Sw. Feeders, L.L.C., No. 4:10CV3209, 2011 WL
4632887, at *5-6 (D. Neb. Oct. 4, 2011). That court noted
that the Eighth Circuit had found the bare assertion of a
statute of limitations defense to be sufficient. See
Id. at *6 (quoting Zotos v. Lindbergh Sch.
Dist., 121 F.3d 356, 361 (8th Cir. 1997) (quoting
Daingerfield Island Protective Soc'y v. Babbitt,
40 F.3d 442, 445 (D.C. Cir. 1994))). An “affirmative
state[ment]” need not contain facts making the defense
plausible, as under Iqbal, because Rule 8(c) does
not require a “showing, ” as does Rule 8(a), but
an affirmative defense must at least fairly identify the
legal theory ...