Clinicomp Int'l, Inc. v. Cerner Corp., Case No.: 17cv2479-GPC(BLM)

CourtUnited States District Courts. 9th Circuit. United States District Court (Southern District of California)
Decision Date16 May 2018
Docket NumberCase No.: 17cv2479-GPC(BLM)


Case No.: 17cv2479-GPC(BLM)


May 16, 2018


[Dkt. No. 8.]

Defendant filed a motion for dismiss to dismiss certain claims in the complaint alleging patent infringement. (Dkt. No. 8.) Plaintiff filed an opposition, and Defendant filed a reply. (Dkt. Nos. 15, 16.) The Court exercises its discretion and decides the motion without oral argument pursuant to Local Civil Rule 7.1(d)(1). Based on the reasoning below, the Court GRANTS Defendant's motion to dismiss with leave to amend.


On December 11, 2017, Plaintiff Clinicomp International, Inc. ("Plaintiff"), as the owner of U.S. Patent No. 6,665,647 ("the '647 patent") entitled "Enterprise Healthcare Management System and Method of Using Same", filed a complaint against Defendant

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Cerner Corporation ("Defendant") alleging claims for willful patent infringement, direct patent infringement, indirect patent infringement or induced infringement and seeking equitable relief, enhanced damages, and a finding of exceptionality. (Dkt. No. 1.) The '647 patent was filed on June 30, 1999 and issued on December 16, 2003. (Dkt. No. 1-2 at 1.) The '647 patent specifies that it is a continuation-in-part of Application No. 08/977,522 ("the '522 application") which was filed on November 24, 1997 and issued as Patent No. 6,401,072 ("the '072 patent") on June 4, 2002. (Dkt. Nos. 8-3, 8-6, 8-12, D's RJN, Exs. 1, 4, 10.) The '522 application was itself a continuation of Application No. 08/396,004 ("the '004 application") which was filed on February 28, 1995. (Dkt. Nos. 8-7, 8-8, 8-9, D's RJN, Exs. 5, 6, 10.) The '004 Application was eventually abandoned on March 27, 1998 for failure to respond to an Office Action. (Dkt. No. 8-12, D's RJN, Ex. 10); see (last visited May 10, 2018). The complaint alleges that Defendant infringed the '647 patent and obtained actual knowledge of the '647 patent as of the filing of the complaint. (Dkt. No. 1, Compl. ¶¶ 17-20.)

Defendant moves to dismiss the claims for willful patent infringement, indirect patent infringement as well as equitable relief, enhanced damages and a finding of exceptionality arguing that the '647 patent expired on February 28, 2015, two years prior to the filing of the complaint.1 Defendant summarily argues that Plaintiff claimed priority under 35 U.S.C. § 120 to a grandparent application with an earliest effective filing date of February 28, 1995. Therefore, as a matter of law, the '647 patent expired on February 28, 2015, which is 20 years after the earliest effective filed application. However, there are two separate issues in this case. The first issue is whether the patent term of the '647 patent starts on the specifically referenced and earlier filed '522

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Application's filing date of November 24, 1997, and the second issue is whether the '647 patent can obtain the benefit of the grandparent '004 patent application's filing date of February 28, 1995 even though the '004 application is not specifically referenced in the prosecution of the '647 patent. The Court addresses each issue separately.


A. Federal Rule of Civil Procedure 12(b)(b)

Federal Rule of Civil Procedure ("Rule") 12(b)(6) permits dismissal for "failure to state a claim upon which relief can be granted." Fed. R. Civ. P. 12(b)(6). Dismissal under Rule 12(b)(6) is appropriate where the complaint lacks a cognizable legal theory or sufficient facts to support a cognizable legal theory. See Balistreri v. Pacifica Police Dep't., 901 F.2d 696, 699 (9th Cir. 1990). Under Rule 8(a)(2), the plaintiff is required only to set forth a "short and plain statement of the claim showing that the pleader is entitled to relief," and "give the defendant fair notice of what the . . . claim is and the grounds upon which it rests." Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007). A complaint may survive a motion to dismiss only if, taking all well-pleaded factual allegations as true, it contains enough facts to "state a claim to relief that is plausible on its face." Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Twombly, 550 U.S. at 570). "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." Id. "Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice." Id. "In sum, for a complaint to survive a motion to dismiss, the non-conclusory factual content, and reasonable inferences from that content, must be plausibly suggestive of a claim entitling the plaintiff to relief." Moss v. U.S. Secret Serv., 572 F.3d 962, 969 (9th Cir. 2009) (quotations omitted). In reviewing a Rule 12(b)(6) motion, the Court accepts as true all facts alleged in the

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complaint, and draws all reasonable inferences in favor of the plaintiff. al-Kidd v. Ashcroft, 580 F.3d 949, 956 (9th Cir. 2009).

B. Request for Judicial Notice

Defendant requests judicial notice of ten documents comprising the prosecution history of the '647 and '072 patents. (Dkt. No. 8-13, D's RJN.) Plaintiff does not dispute the request.

Courts may take judicial notice of facts that are "capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned." Fed. R. Evid. 201(b)(2). Records from the United States Patent and Trademark Office ("USPTO") may be judicially noticed. See Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 954 n. 27 (Fed. Cir. 1993). Accordingly, the Court GRANTS Defendant's unopposed request for judicial notice.

C. '647 Patent Term Based on Specific Reference to Earlier Filed '522 Application's Filing Date

According to Defendant, because the '647 patent expired at a minimum on November 24, 2017, based on the specific reference to the '522 Application, it cannot be liable for willful and indirect infringement. Plaintiff opposes arguing that a determination whether '647 patent term has expired is a complex question of fact not appropriate on a motion to dismiss.

When a patent expires, it cannot be infringed. Kearns v. Chrysler Corp., 32 F.3d 1541, 1550 (Fed. Cir. 1994) ("Because the rights flowing from a patent exist only for the term of the patent, there can be no infringement once the patent expires."); Sears, Roebuck & Co. v. Stiffel, Co., 376 U.S. 225, 230 (1964) ("when the patent expires the monopoly created by it expires, too, and the right to make the article—including the right to make it in precisely the shape it carried when patented-passes to the public.").

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A party who actively induces infringement is liable as an infringer. 35 U.S.C. § 271(b). Induced infringement as well as willful infringement require Defendant to have knowledge of the infringement prior to the patent's expiration. See In re Bill of Lading Transmission and Processing System Patent Litig., 681 F.3d 1323, 1339 (Fed. Cir. 2012) (To survive a motion to dismiss an induced infringement claim, Plaintiff must allege "facts plausibly showing that [the defendant] specifically intended their customers to infringe the [patent at issue] and knew that the customer's acts constituted infringement."); Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1928 (2016) (as to willful infringement, a plaintiff must allege facts plausibly demonstrating the infringement was "either known or so obvious that it should have been known to the accused infringer."). The complaint alleges that Defendant infringed the '647 patent and obtained actual knowledge of the '647 patent as of the filing of the complaint. (Dkt. No. 1, Compl. ¶¶ 17-20.) Therefore, in both claims, Plaintiff must plead facts that Defendant had knowledge of the patent prior to the patent's expiration date.

The term of a patent is 20 years and the starting point is calculated as follows:

(2) Term.--Subject to the payment of fees under this title, such grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application or applications under section 120, 121, 365(c), or 386(c) from the date on which the earliest such application was filed.

35 U.S.C. § 154(a)(2) (emphasis added). Here, the parties agree that the '647 patent specifically references an earlier filed application, the '522 application, under 35 U.S.C. § 120. 35 U.S.C. § 120 provides,

An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385, which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed

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on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application.

35 U.S.C. § 120.

Both parties agree that the '647 patent term ends 20 years after the "earliest effective filing date." (Dkt. No. 8-1 at 14-152; Dkt. No. 15 at 5.) Defendant asserts that because the '647 patent is a continuation-in-part of the '522 application, its filing date of November 24, 1997 applies. Plaintiff argues that at this stage of the proceedings, it would be improper to grant a motion to dismiss without discovery to determine whether the written description and enablement requirements of § 112(a) are satisfied as...

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