Complaint Survives Motion to Dismiss Based on Facts Outside the Complaint

December 8, 2011

In a patent case filed in the Eastern District of Wisconsin by Illinois Tool Works ("ITW") against Elektromanufaktur Zangenstein Hanauer GmbH & Co. KGaA ("EMZ"), EMZ moved to dismiss for failure to state a claim under Rule 12(b)(6) as well as for lack of personal jurisdiction under Rule 12(b)(2). EMZ alternatively moved for a more definite statement under Rule 12(e).

EMZ's motion to dismiss for failure to state a claim rested on its assertion that ITW's failure to identify an accused product in the complaint rendered ITW's infringement claims ambiguous and conclusory. Specifically, EMZ argued that "the complaint's reference to unspecified and generically-labeled 'latching mechanisms' as the allegedly infringing product is not sufficient to provide EMZ fair or adequate notice as to what ITW's claim of infringement is and the grounds upon which it rests." In response, ITW argued that the complaint was sufficient because it alleged that the infringing products "are latching mechanisms for washing machines sold to manufacturers, such as Whirlpool, that EMZ knew were bound for the United States."

The court began its analysis by reciting four recent cases, three of which were from the Northern District of California, finding complaints failed to state a claim based on their failure to identify the allegedly infringing product. See Hewlett-Packard Co. v. Intergraph Corp., 2003 WL 23884794 (N.D.Cal. Sept. 6, 2003) (dismissing without prejudice plaintiff's complaint that defendant's "software and hardware products" infringed the patent, because defendant implemented "150 core technology platforms" in "over 4000 end-use application products" and the allegations did not provide defendant with "fair notice" as to what claims to defend); Elan Microelectronics Corp. v. Apple, Inc., 2009 WL 2972374 (N.D.Cal. Sept. 14, 2009) (dismissing with leave to amend Apple's infringement counterclaims that identified "touch sensitive input devices or touchpads, including but not limited to the Smart-Pad" for "failure to allege sufficient facts" under Twombly and Iqbal); In re Papst Licensing GMBH & Co. KG Litigation, 602 F.Supp.2d 17, 19-20 (D. D.C. 2009) (holding that allegation of "[u]pon information and belief, the [defendant] made, used, sold or offered to sell...digital cameras which infringe the Patents in Suit" was insufficient, because it "fail[ed] to include any facts in support of [the] bald allegation" of infringement); see also Bender v. LG Electronics U.S.A., Inc., 2010 WL 889541, at *3 (N.D.Cal. Mar. 11, 2010) (finding "without identifying specific products or product parts, [the plaintiff] has not put Defendants on notice as to what products or parts are subject to the infringement claim.")."

Based on the foregoing authority, the court found that the complaint likewise was insufficient based on its failure to identify a specific product that allegedly infringed the asserted patent. In so holding, the court rejected ITW's reliance on Form 18 as the standard for adequately alleging patent infringement. The court stated that it "finds it is difficult to reconcile the guidelines set forth in Twombly and Iqbal with Form 18 as it does not cover all manners of patent infringement." Significantly, ITW also opposed the motion to dismiss by referencing facts that were alleged in correspondence ITW had with EMZ both before and after the complaint was filed, including that ITW provided EMZ with a claim chart showing a specific EMZ latch infringed ITW's patent. Because EMZ was on notice of ITW's infringement claims, ITW argued that a bare-bones allegation of infringement in its complaint was sufficient to state a claim.

Citing Reynolds v. CB Sports Bar, Inc., 623 F.3d 1143, 1146-47 (7th Cir. 2010), the court recognized that the Seventh Circuit has condoned plaintiffs' reference to facts outside the complaint to show that their complaints should not be dismissed provided that those facts are consistent with its complaint. Based on the additional facts suggested to the court in ITW's opposition, the court held that ITW's complaint was, in fact, sufficient to state a claim. Finally, the court denied EMZ's motion for a more definite statement because it was clear from the correspondence from EMZ's counsel, which included identification of prior art references that purportedly invalidated claims of ITW's patent, that EMZ had sufficient detail of the alleged infringement in order to answer the charge of infringement.

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This case illustrates that -- at least in the Seventh Circuit -- in determining whether a complaint alleges facts sufficient to state a claim courts can consider facts outside the complaint provided they are consistent with the complaint. This case also illustrates the on-going struggle district courts continue to have reconciling Form 18 with the Supreme Court's decisions in Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009) and Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007).

Illinois Tool Works Inc. v. Elektromanufaktur Zangenstein Hanauer GmbH & Co. KGaA, Case No. 11-cv-262-JPS (E.D. Wisc. November 30, 2011).

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.