Motion to Dismiss Granted Where Complaint Failed to Allege That One Party Performed Each Step of Method Claim

January 23, 2012

Defendants moved to dismiss a patent infringement complaint pursuant to Fed.R.Civ.P. 12(b)(6) on the theory that the complaint failed to allege facts showing that a single party performed each and every limitation of the method claim.

The district court noted that "the Federal Circuit Court of Appeals has 'instructed that '[d]irect infringement requires a party to perform or use each and every step or element of a claimed method or product.' . . . Nevertheless, '[w]hen a defendant participates in or encourages infringement but does not directly infringe a patent, the normal recourse under the law is for the court to apply the standard for liability under indirect infringement. Indirect infringement requests, as a predicate, a finding that some party amongst the accused actors has committed the entire act of direct infringement.'" Thus, there is no finding of indirect infringement without a finding that there is a direct infringer.

Applying the law to the facts plead by the plaintiff, the district court found that the plaintiff had failed to allege "which Defendant took which action, under each element of each clam." After reviewing plaintiff's complaint, the district court stated "it became apparent that Plaintiffs are attempting to plead in such a manner as to include every possible defendant in any possible legal theory that may support a cause of action. Such pleading is confusing and suffers from the weakness that it does not require Plaintiffs to exercise the discipline of testing whether they in fact have facts sufficient to plead a cause of action."

The district court also determined that it was inappropriate to force the defendants to the incur the expense of litigation with such a pleading. "To impose the expense of litigation, including expensive discovery on a defendant, a plaintiff has the duty to carefully assess what facts support its claim, to clearly and succinctly state those facts as they may apply to each defendant who is named, and to assure itself that the facts indeed support each cause of action that is plead."

Nonetheless, the district court permitted one more opportunity for the plaintiff to amend but gave specific direction on what must be done to correct the problems with the current complaint:

"(1) Plaintiffs have been unclear in referencing the parties (e.g. "Sony" or "Defendants")
throughout the Second Amended Complaint. Plaintiffs must provide particular definition
regarding which specific entity is alleged to have done what action.

"(2) If an entity not named as a party in the complaint is alleged to have taken a violative
action, Plaintiffs must also allege such facts that demonstrate vicarious liability of a
particularly named Defendant. Any additional vague or ambiguous allegations relating to
the identity of the parties will be disregarded in assessing whether a cause of action has
been stated.

"(3) In that the law requires a showing that a "party" committed the infringements, it is not
sufficient to simply state that it was the music pass that did so. Such future references
will also be disregarded in assessing the adequacy of the complaint.

"(4) Plaintiffs are instructed to make each element of each claim, as addressed in their
complaint, completely inclusive. In other words, if the pleading of an element requires
the identification of a party, an allegation of the infringing action, or facts sufficient to
establish a relationship between two entities, all such allegations must be addressed
within that element of the claim with references to such exhibits as appropriate."

Driessen v. Sony Music Entertainment, et al., Case No. 2:09-cv-0140-CW (D. Utah Jan. 17, 2012)

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 Stan Gibson at 310.201.3548 or SGibson@jmbm.com.