Dermafocus LLC v. Ulthera, Inc.

• Decision Date: 11 August 2016
• Docket Number: Civ. No. 15-654-SLR
• Citation: 201 F.Supp.3d 465
• Parties: DERMAFOCUS LLC, Plaintiff, v. ULTHERA, INC., Defendant.
• Court: U.S. District Court — District of Delaware

201 F.Supp.3d 465

DERMAFOCUS LLC, Plaintiff,

v.ULTHERA, INC., Defendant.

Civ. No. 15-654-SLR

United States District Court, D. Delaware.

Signed August 11, 2016

Brian E. Farnan, Esquire and Michael J. Farnan, Esquire of Farnan LLP, Wilmington, Delaware. Counsel for Plaintiff. Of Counsel: Jonas Jacobson, Esquire and Richard E. Lyon, III, Esquire of Dovel & Luner, LLP.

John C. Phillips, Jr., Esquire and Megan C. Haney, Esquire of Phillips, Goldman, McLaughlin & Hall, P.A., Wilmington, Delaware. Counsel for Defendant. Of Counsel: John B. Sganga, Esquire, Justin Gillett, Esquire, and Matthew S. Bellinger, Esquire of Knobbe, Martens, Olson & Bear, LLP.

MEMORANDUM OPINION

ROBINSON, District Judge

I. INTRODUCTION

On July 29, 2015, plaintiff DermaFocus LLC ("plaintiff") filed a patent infringement complaint against defendant Ulthera, Inc. ("defendant") alleging direct, induced, contributory, and willful infringement.¹ (D.I. 1) Plaintiff filed an amended complaint on October 6, 2015. (D.I. 11) Presently before the court is defendant's motion to dismiss the first amended complaint ("FAC") for failure to state a claim (D.I. 12).² The court has jurisdiction over this dispute pursuant to 28 U.S.C. §§ 1331 and 1338(a).

II. BACKGROUND

As noted, the FAC includes claims of direct, induced, contributory, and willful infringement of United States Patent No. 6,113,559 ("the '559 patent"). (D.I. 11 at ¶ 1) The '559 patent, entitled "Method and Apparatus for Therapeutic Treatment of Skin with Ultrasound," issued on September 5, 2000, and describes a method

of reducing human skin wrinkles, including applying a focused ultrasound beam to a region of human skin to stimulate or irritate a dermis layer in the region of the skin without adversely damaging an epidermis layer in the region of the skin so as to cause a change in the dermis layer of the skin that results in a change in a smoothness of the epidermis layer of the skin. In particular, relatively low power, low frequency focused ultrasound is applied to the dermis layer for a period of time sufficient to cause a biological response in the body wherein the biological response causes synthesis and/or production of new connective tissue that results in reduction or elimination of human skin wrinkles.

(Id. , ex. A, abstract)

In the FAC, plaintiff alleges that defendant's "Ulthera System" or "Ultherapy" are used for the "non-invasive lifting and tightening of the skin using focused ultrasound technology." (D.I. 11 at ¶ 10) As described by defendant, "the Ulthera® System is a multi-component system consisting of a cart, a control unit with an integrated touchscreen, a handpice with a cable, and various transducers that are purchased individually and that can be interchangeably attached to the handpiece." (D.I. 13 at 8) The various transducers are used to treat skin at different depth levels. (Id. ) The products are "purchased, leased, or otherwise obtained" by medical professionals from defendant. (D.I. 11 at ¶ 11) Prior to purchasing the products, medical professionals ("users") may schedule a demonstration or set up a meeting with an "Ultherapy specialist." (D.I. 11 at ¶ 12) Plaintiff alleges defendant "instruct[s] users to use the Ulthera System in its intended manner." (D.I. 11 at ¶ 12)

In September 2004, defendant's founder and current board member, Michael Slayton ("Slayton"), was listed as an inventor on Patent Application No. 10/944,499 ("the '499 application"), entitled "Method and System for Ultrasound Treatment with a Multi-Directional Transducer." (D.I. 11 at¶ 13) The assignee of the '499 application was Guided Therapy Systems, L.L.C. In February 2005, an Information Disclosure Statement ("IDS") was filed in connection with the '499 application; the '559 patent was one of seven listed "material references" for determining patentability. (Id. , at ex. D)

III. STANDARD OF REVIEW

A motion filed under Federal Rule of Civil Procedure 12(b)(6) tests the sufficiency of a complaint's factual allegations. Bell Atl. Corp. v. Twombly , 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ; Kost v. Kozakiewicz , 1 F.3d 176, 183 (3d Cir.1993). A complaint must contain "a short and plain statement of the claim showing that the pleader is entitled to relief, in order to give the defendant fair notice of what the ... claim is and the grounds upon which it rests." Twombly , 550 U.S. at 545, 127 S.Ct. 1955 (internal quotation marks omitted) (interpreting Fed. R. Civ. P. 8(a) ). Consistent with the Supreme Court's rulings in Twombly and Ashcroft v. Iqbal , 556 U.S. 662, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009), the Third Circuit requires a three-part analysis when reviewing a Rule 12(b)(6) motion. Connelly v. Lane Const. Corp. , 809 F.3d 780, 787 (3d Cir.2016). In the first step, the court "must tak[e] note of the elements a plaintiff must plead to state a claim." Next, the court "should identify allegations that, because they are no more than conclusions, are not entitled to the assumption of truth." Lastly, "[w]hen there are well-pleaded factual allegations, a court should assume their veracity and then determine whether they plausibly give rise to an entitlement for relief." Id. (citations omitted).

Under Twombly and Iqbal , the complaint must sufficiently show that the pleader has a plausible claim. McDermott v. Clondalkin Grp., Inc. , 649 Fed.Appx. 263, 266–67, Civ. No. 15–2782, 2016 WL 2893844, at *3 (3d Cir. May 18, 2016). Although "an exposition of [the] legal argument" is unnecessary, Skinner v. Switzer , 562 U.S. 521, 131 S.Ct. 1289, 179 L.Ed.2d 233 (2011), a complaint should provide reasonable notice under the circumstances. Id. at 530, 131 S.Ct. 1289. A filed pleading must be "to the best of the person's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances," such that "the factual contents have evidentiary support, or if so identified, will likely have evidentiary support after a reasonable opportunity for further investigation or discovery." Anderson v. Bd. of Sch. Directors of Millcreek Twp. Sch. Dist. , 574 Fed.Appx. 169, 174 (3d Cir.2014) (quoting Fed. R. Civ. P. 11(b) ). So long as plaintiffs do not use "boilerplate and conclusory allegations" and "accompany their legal theory with factual allegations that make their theoretically viable claim plausible," the Third Circuit has held "pleading upon information and belief [to be] permissible [w]here it can be shown that the requisite factual information is peculiarly within the defendant's knowledge or control." McDermott , 649 Fed.Appx. at 267–68, 2016 WL 2893844, at *4 (quotation marks, citation, and emphasis omitted).

As part of the analysis, a court must accept all well-pleaded factual allegations in the complaint as true, and view them in the light most favorable to the plaintiff. See Erickson v. Pardus , 551 U.S. 89, 94, 127 S.Ct. 2197, 167 L.Ed.2d 1081 (2007) ; Christopher v. Harbury , 536 U.S. 403, 406, 122 S.Ct. 2179, 153 L.Ed.2d 413 (2002) ; Phillips v. Cnty. of Allegheny , 515 F.3d 224, 231 (3d Cir.2008). In this regard, a court may consider the pleadings, public record, orders, exhibits attached to the complaint, and documents incorporated into the complaint by reference. Tellabs, Inc. v. Makor Issues & Rights, Ltd. , 551 U.S. 308, 322, 127 S.Ct. 2499, 168 L.Ed.2d 179 (2007) ; Oshiver v. Levin, Fishbein, Sedran & Berman , 38 F.3d 1380, 1384–85 n. 2 (3d Cir.1994). The court's analysis is a context-specific task requiring the court "to draw on its judicial experience and common sense." Iqbal , 556 U.S. at 663–64, 129 S.Ct. 1937.

In the context of patent litigation,³ it is logical to presume that a defendant has greater access to and, therefore, more information about its accused method.⁴ The degree of public information about any accused method varies widely, as does the degree of specificity with which any asserted invention is claimed. Given the focus of the above articulated standard of review⁵ on reasonable notice of plausible claims under the circumstances, the question a court must address with each case is whether the plaintiff at bar has provided sufficient information to allow the court to determine plausibility⁶ and to allow the named defendant to respond to the complaint. Absent specific guidance from the Federal Circuit directing the court to front-load the litigation process by requiring a detailed complaint in every instance, the court declines to do so.⁷

IV. DISCUSSION

A. Direct Infringement

To prove direct infringement, the patent owner must establish that one or more claims of the patent (as construed by the court) read on the accused method⁸ either literally or under the doctrine of equivalents. See Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc. , 261 F.3d 1329, 1336 (Fed.Cir.2001). A plaintiff may have a plausible claim for direct infringement "sufficient to withstand Iqbal /Twombly scrutiny" by "specifically identifying ... products" which "perform the same unique function as [the] patented system." Robern, Inc. v. Glasscrafters, Inc. , ––– F.Supp.3d ––––, ––––, Civ. No. 16–1815, 2016 WL 3951726, at *4 (D.N.J. July 22, 2016) (citation omitted); see also Bender v. LG Electronics U.S.A., Inc. , Civ. No. 09–2114, 2010 WL 889541, at *6 (N.D.Cal. Mar. 11, 2010). As observed by the Federal Circuit, "[a] defendant cannot shield itself from a complaint ... by operating in such secrecy that the filing of a complaint itself is impossible." K – Tech Telecommunications, Inc. v. Time Warner Cable, Inc. , 714 F.3d 1277, 1286 (Fed.Cir.2013).

As noted above, the FAC includes allegations, e.g., that defendant's "Ulthera System" or "Ultherapy" is used for "non-invasive lifting and tightening of the skin using focused ultrasound technology." (D.I. 11 at ¶ 10) Independent claim 1 of the '559 patent claims a "method of rejuvenating human skin" "comprising" "focusing ultrasound energy in a dermis layer of the region of skin;" and

depositing energy in the dermis layer sufficient to

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