United States District Court, E.D. Wisconsin
DECISION AND ORDER
William C. Griesbach, Chief Judge
Great Lakes Manufacturing, Inc., filed this action in October
2017 alleging that Defendant Londerville Steel Enterprises,
Inc., infringed U.S. Patent Nos. 6, 209, 942 and 6, 468, 008
(the “‘942 patent” and “‘008
patent”). ECF No. 1. Londerville filed an answer and
counterclaim in January 2018. ECF No. 6. Count I in the
counterclaim alleges that, prior to filing this action, Great
Lakes sent Londerville a notice-of-infringement letter that
failed to comply with Wisconsin's Patent Notification
Act, Wis.Stat. § 100.197 (2015-16). ECF No. 6
¶¶ 27-33. Londerville alleges that Great Lakes'
letter failed to articulate in sufficient detail how each
asserted patent claim is infringed by any Londerville
product. This matter comes before the court on Great
Lakes' motion under Federal Rule of Civil Procedure 12(c)
for judgment on the pleadings as to Count I of the
counterclaim. ECF No 9. Great Lakes contends that Count I is
preempted by federal law or, in the alternative, fails to
state a claim for which relief can be granted because it is
clear from the pleadings and documents incorporated by
reference therein that Great Lakes'
notice-of-infringement letter complied with the statute.
Though the preemption grounds for dismissal asserted by Great
Lakes appears to have merit, I find it unnecessary to reach
that issue. Instead, I conclude that the letter sent by Great
Lakes' attorney to Londerville complies with the
Wisconsin's Patent Notification Act and Londerville's
counterclaim therefore fails to state a claim on which relief
can be granted. The motion for judgment on the pleading will
therefore be granted as to Count I of Londerville's
patents at issue in this case involve apparatuses for
constraining logs on trucks and trailers. ECF Nos. 1-2, 1-1.
The counterclaim alleges that on February 6, 2017, Great
Lakes sent Londerville a letter regarding four patents,
including the '942 patent and the ‘008 patent. ECF
No. 6 ¶ 8. In the letter, Great Lakes informed
Londerville that its sale of two products-“Londerville
Aluminum Log Stakes” and “Seemless Stake
Pocket(s)”-infringed at least claims 1-2 of the
‘942 patent and claims 6-7 of the ‘008 patent.
Id. ¶ 9; see also ECF No. 11-3 at 1-2.
Although Great Lakes' letter included as attachments
copies of the four patents that Londerville allegedly
infringed, the counterclaim alleges that the letter did not
set forth in detail Great Lakes' theory of infringement
for each of Londerville's allegedly infringing products.
ECF No. 6 ¶¶ 11-12.
to the counterclaim, Londerville sent Great Lakes a
responsive letter on February 23, 2017. Id. ¶
13; see also ECF No. 11-4. The letter informed Great
Lakes of Londerville's opinion that the February 6 letter
failed to meet the requirements of Wis.Stat. § 100.197.
ECF No. 6 ¶ 13. In particular, Londerville believed the
February 6 letter was deficient because it claimed that
Londerville induced a third-party to infringe Great
Lakes' patents but nevertheless failed to identify any
direct infringer. Id. ¶ 14. As required by
Wis.Stat. § 100.197, Londerville gave Great Lakes 30
days to correct the alleged deficiencies in the notice
letter. ECF No. 6 ¶ 14. Great Lakes responded on March
14, 2017, with a letter explaining its belief that its
February 6 letter complied with Wis.Stat. § 100.197. ECF
No. 6 ¶¶ 15-16. Londerville responded quickly with
a letter on March 16, 2017, articulating its position that
none of its products infringed the patents cited in Great
Lakes' February 6 letter and reiterating its request that
Great Lakes cure the alleged Wis.Stat. § 100.197
deficiencies. ECF No. 6 ¶¶ 17-18. Great Lakes made
no apparent attempt to cure the alleged deficiencies and on
March 21, 2017, sent Londerville another letter withdrawing
its patent infringement notification. Id.
March 21, additional correspondence continued between Great
Lakes and Londerville until Great Lakes filed its complaint
on October 17, 2017. Id. ¶ 22; see
also ECF No. 1. Londerville filed its answer and
counterclaim on January 16, 2018, and Great Lakes in turn
filed its answer and its motion for judgment on the pleadings
as to Count I of the counterclaim on February 6, 2018. ECF
Nos. 6, 9, 12. The motion for judgment on the pleadings is
now fully briefed and ready for decision.
motion for judgment on the pleadings under Rule 12(c) of the
Federal Rules of Civil Procedure is governed by the same
standards as a motion to dismiss for failure to state a claim
under Rule 12(b)(6).” Adams v. City of
Indianapolis, 742 F.3d 720, 727-28 (7th Cir. 2014)
(citing Pisciotta v. Old Nat'l Bancorp, 499 F.3d
629, 633 (7th Cir. 2007)). “To survive a motion for
judgment on the pleadings, a complaint must ‘state a
claim to relief that is plausible on its face.'”
Wagner v. Teva Pharm. USA, Inc., 840 F.3d 355,
357-58 (7th Cir. 2016) (citing Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 570 (2007)). Although the court
must “draw all reasonable inferences and facts in favor
of the nonmovant, ” the court “need not accept as
true any legal assertions or recital of the elements of a
cause of action ‘supported by mere conclusory
statements.'” Vesely v. Armslist
LLC, 762 F.3d 661, 664-65 (7th Cir. 2014) (quoting
Alam v. Miller Brewing Co., 709 F.3d 662, 666 (7th
Cir. 2013)). As when considering a motion to dismiss for
failure to state a claim under Rule 12(b)(6), a court
resolving a motion for judgment on the pleadings may consider
documents incorporated into the pleadings by reference.
United States v. Wood, 925 F.2d 1580, 1582 (7th Cir.
1991) (per curiam) (first citing Goldman v. Belden,
754 F.2d 1059, 1065-66 (2d Cir. 1985); then citing
2013, Wisconsin enacted Wis.Stat. § 100.197, entitled
“Patent Notifications, ” apparently in response
to a series of demand letters sent out by so-called
“patent trolls” to small businesses across the
country threatening frivolous patent litigation unless the
businesses signed licensing agreements requiring substantial
payments. See generally Paul R. Gugliuzza,
Patent Trolls And Preemption, 101 Va.L.Rev. 1579
(2015). Effective April 25, 2014, § 100.197 applies to
“patent notifications, ” meaning any
“letter, e-mail, or other written communication
attempting in any manner to enforce or assert rights in
connection with a patent or pending patent.” Wis.Stat.
§ 100.197(1)(a). The statute requires that a patent
notification contain the following information related to the
patent and the rights asserted related to it:
1. The number of each patent or patent application that is
the subject of the patent notification.
2. A physical or electronic copy of each patent or pending
3. The name and physical address of the owner of each patent
or pending patent and all other persons having a right to
enforce the patent or pending patent.
4. An identification of each claim of each patent or pending
patent being asserted and the target's product, service,
process, or ...