United States District Court, W.D. Wisconsin
OPINION AND ORDER
WILLIAM M. CONLEY DISTRICT JUDGE.
AMS, LLC, filed suit against defendant Muzzy, LLC, alleging
that it infringed two of AMS's patents covering bow
fishing arrow components -- U.S. Patent No. 6, 517, 453 (the
“'453 patent”) and U.S. Patent No. 9, 146,
085 (the “'085 patent”). Muzzy moved to
dismiss AMS's complaint for failing to state a claim
pursuant to Federal Rule of Civil Procedure 12(b)(6), arguing
that: (1) necessary claim elements are “conspicuously
absent” from the allegations of infringement, such that
AMS's direct and indirect infringement claims are
implausible; and (2) AMS failed to sufficiently state a claim
for willful infringement. (See dkt. ##5, 6.) While
Muzzy's motion to dismiss will be granted, plaintiff may
have fourteen days to replead.
survive a motion to dismiss, a complaint “must contain
sufficient factual matter, accepted as true, to state a claim
to relief that is plausible on its face.” Ashcroft
v. Iqbal, 556 U.S. 662, 678 (2009) (internal quotation
marks omitted). Rule 12(b)(6) motions in patent cases are
governed by the law of the regional circuit, rather than the
Federal Circuit. In re Bill of Lading Transmission &
Processing Sys. Patent Litig., 681 F.3d 1323, 1331
(Fed.Cir. 2012); Niazi v. Pressure Prod. Med. Supplies,
Inc., No. 16-cv-670-jdp, 2017 WL 108114 (W.D. Wis. Jan.
11, 2017), and Palmer Hamilton, LLC v. AmTab Mfg.
Corp., No. 16-cv-522-jdp, 2016 WL 6775458 (W.D. Wis.
Nov. 15, 2016).
Direct Infringement Claims
initial matter, a plaintiff is not required to plead direct
patent infringement on an element-by-element basis.
Palmer Hamilton, 2016 WL 6775458, at *1. Generally,
identifying the claims asserted and the accused products will
be sufficient to get over the low hurdle of plausibility.
Id. However, a patent plaintiff must have a
“good faith basis for bringing suit in the first place,
” meaning that the plaintiff must “have conducted
an element-by-element analysis of the accused instrumentality
before filing a complaint.” Id. Accordingly,
there may be grounds for dismissal where an element
is “conspicuously absent” from a complaint or
infringement is otherwise implausible on the face of the
complaint and patent claims. Id. Here, Muzzy argues
that AMS's complaint conspicuously lacks a necessary
element from each of the two patents-in-suit.
The '453 Patent
AMS alleges that Muzzy infringed Claim 14 of the '453
patent, either literally or under the doctrine of
equivalents. (Compl. (dkt. #1) ¶ 19.) Claim 14 requires
“a slide stop having a pad to absorb the
impact of the slide when the slide slides back.”
('453 patent (dkt. #1-1) 6:23-24 (emphasis added).) In
its complaint, AMS states that “these claim elements
are satisfied by the stop and screw that accompany
Muzzy's Bottle Slide, as shown below.” (Compl.
(dkt. #1) ¶ 11.)
at 4.) While this picture plainly depicts three unidentified,
disassembled parts that would appear to be part of
Muzzy's Bottle Slide, the final object is not identified.
More importantly, conspicuously absent from the complaint is
any allegation that Muzzy's Bottle Slide also
includes a pad.
an element-by-element pleading is not required, a claim for
literal infringement requires every limitation set forth in a
claim to be found in an accused product exactly. Atlas
IP, LLC v. City of Naperville, No. 15 C 10744, 2016 WL
3907029, at *3 (N.D. Ill. Jul. 19, 2016). Furthermore, a
claim for infringement under the doctrine of equivalents
requires that the accused product contain an equivalent for
each limitation not literally satisfied by the accused
product. Id. As a result, Muzzy's argument that
an element of Claim 14 is conspicuously absent would appear
to be valid, or at least sufficiently plausible to call into
question plaintiff's ability to plead otherwise in good
faith. Indeed, the absence of any affirmative assertion that
a pad is present in the accused product is highlighted by the
fact that AMS explicitly mentions the use of a
“stop” and “screw” in Muzzy's
course, it may very well be that Muzzy's product contains
a pad, but it is reasonable to direct the plaintiff to either
plead the presence of a pad or allege its equivalent is
present in the accused product if for no other reason than
the efficient administration of justice. Fed.R.Civ.P. 1.
Accordingly, AMS will be granted leave to amend the complaint
to plead the presence of a pad or its equivalent in one or
more of Muzzy's products or show good cause why dismissal
of its infringement claims under the ‘453 patent is not
appropriate at this time.
The '085 Patent
also alleges that Muzzy infringed Claim 1 of the '085
patent, either literally or under the doctrine of
equivalents. (Compl. (dkt. #1) ¶ 34.) Claim 1 requires
“an eye portion attached to an arm portion . . .
wherein the arm portion extends from the eye portion at
an offset from a line of radius of a center of the hole
so that the arm portion is removed from interference.”
('085 patent (dkt. #1-2) 6:54-59 (emphasis added).) In
the complaint AMS says Claim 1 requires that “when the
arrow tip is in the forward position, an arm portion of the
arrow barb is removed from interference with the rear edge of
the arrow tip when the barb is in the forward position."