Dorneanu v. Graco Inc.

• Decision Date: 13 May 2022
• Docket Number: C/A 2:21-cv-1142-DCN-MHC
• Parties: Daniel D. Dorneanu, Plaintiff, v. Graco Inc. and Graco Minnesota Inc., Defendants.
• Court: U.S. District Court — District of South Carolina

Daniel D. Dorneanu, Plaintiff, v. Graco Inc. and Graco Minnesota Inc., Defendants.

C/A No. 2:21-cv-1142-DCN-MHC

United States District Court, D. South Carolina, Charleston Division

May 13, 2022

REPORT AND RECOMMENDATION

Molly H. Cherry, United States Magistrate Judge.

Plaintiff proceeding pro se, filed this action alleging patent infringement against Defendants Graco Inc. and Graco Minnesota Inc. (collectively, “Graco” or “Defendants”). Before the Court is Defendants' Motion to Dismiss the Second Amended Complaint for Improper Venue and for Failure to State a Claim (“Motion to Dismiss”), filed pursuant to Rules 12(b)(3) and 12(b)(6) of the Federal Rules of Civil Procedure. ECF No. 39. Plaintiff filed his Response in Opposition, ECF No. 42, Defendants filed a Reply, ECF No. 44 and Plaintiff filed a Sur-Reply, ECF No. 45. The Motion to Dismiss is ripe for review.^[1]

APPLICABLE LAW

A. Rule 12(b)(3)

Under Rule 12(b)(3) of the Federal Rules of Civil Procedure parties are permitted to file motions to dismiss for improper venue. Fed.R.Civ.P. 12(b)(3); see Pee Dee Health Care, P.A. v. Sanford, 509 F.3d 204, 209 (4th Cir. 2007). “When a defendant objects to venue under Rule 12(b)(3), the plaintiff bears the burden of establishing that venue is proper.” Ameristone Tile, LLC v. Ceramic Consulting Corp., Inc., 966 F.Supp.2d 604, 616 (D.S.C. 2013) (citation and internal quotation marks omitted). However, the plaintiff is required “to make only a prima facie showing of proper venue in order to survive a motion to dismiss.” Aggarao v. MOL Ship Mgmt. Co., Ltd., 675 F.3d 355, 366 (4th Cir. 2012) (citing Mitrano v. Hawes, 377 F.3d 402, 405 (4th Cir. 2004)). “In assessing whether there has been a prima facie venue showing, [the court] view[s] the facts in the light most favorable to the plaintiff.” Id. Moreover, “[o]n a motion to dismiss under Rule 12(b)(3), the court is permitted to consider evidence outside the pleadings.” Id. at 365-66. To grant a motion under Rule 12(b)(3), the court must find that venue is improper. See Fed.R.Civ.P. 12(b)(3).

A case filed in an improper venue must be dismissed, or, if it is in the interest of justice, transferred to a district in which it could have been brought. 28 U.S.C. § 1406(a). Under the general venue statute, a civil action may be brought, and venue is proper, in:

(1) a judicial district in which any defendant resides, if all defendants are residents of the State in which the district is located;

(2) a judicial district in which a substantial part of the events or omissions giving rise to the claim occurred, or a substantial part of property that is the subject of the action is situated; or

(3) if there is no district in which an action may otherwise be brought as provided in this section, any judicial district in which any defendant is subject to the court's personal jurisdiction with respect to such action

28 U.S.C. § 1391(b).

B. Rule 12(b)(6)

Rule 12(b)(6) of the Federal Rules of Civil Procedure permits the dismissal of an action if the complaint fails “to state a claim upon which relief can be granted.” Fed.R.Civ.P. 12(b)(6). “The purpose of a Rule 12(b)(6) motion is to test the sufficiency of a complaint.” Williams v. Preiss-Wal Pat III, LLC, 17 F.Supp.3d 528, 531 (D.S.C. 2014); see Republican Party of N.C. v. Martin, 980 F.2d 943, 952 (4th Cir. 1992) (“A motion to dismiss under Rule 12(b)(6) tests the sufficiency of a complaint; importantly, it does not resolve contests surrounding the facts, the merits of a claim, or the applicability of [affirmative] defenses.”). Pursuant to Rule 8 of the Federal Rules of Civil Procedure, a pleading must contain “a short and plain statement of the claim showing that the pleader is entitled to relief,” Fed.R.Civ.P. 8(a)(2), such that the defendant will have “fair notice of what the claim is and the grounds upon which it rests,” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007) (internal quotation marks omitted). “[T]he facts alleged ‘must be enough to raise a right to relief above the speculative level' and must provide ‘enough facts to state a claim to relief that is plausible on its face.'” Robinson v. Am. Honda Motor Co., 551 F.3d 218, 222 (4th Cir. 2009) (quoting Twombly, 550 U.S. at 555, 570). “The plausibility standard is not akin to a ‘probability requirement,' but it asks for more than a sheer possibility that a defendant has acted unlawfully.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).

When considering a Rule 12(b)(6) motion, the court is required to accept the allegations in the pleading as true and draw all reasonable factual inferences in favor of the party opposing the motion. E.I. du Pont de Nemours & Co. v. Kolon Indus., Inc., 637 F.3d 435, 440 (4th Cir. 2011). Moreover, the court must evaluate “the complaint in its entirety, as well as documents attached or incorporated into the complaint.” Id. at 448. The court may consider a document not attached to the complaint, so long as the document “was integral to and explicitly relied on in the complaint,” and there is no authenticity challenge. Id. (quoting Phillips v. LCI Int'l, Inc., 190 F.3d 609, 618 (4th Cir. 1999)). “A complaint should not be dismissed as long as it provides sufficient detail about the claim to show that the plaintiff has a more-than-conceivable chance of success on the merits.” Goldfarb v. Mayor & City Council of Balt., 791 F.3d 500, 511 (4th Cir. 2015) (internal quotation marks and brackets omitted).

Pro se pleadings are given liberal construction and are held to a less stringent standard than formal pleadings drafted by attorneys. Erickson v. Pardus, 551 U.S. 89, 94 (2007). However, principles requiring generous construction of pro se complaints do “not require courts to conjure up questions never squarely presented to them.” Beaudett v. City of Hampton, 775 F.2d 1274, 1278 (4th Cir. 1985). Giving liberal construction does not mean that the court can ignore a pro se plaintiff's clear failure to allege facts that set forth a cognizable claim. See Weller v. Dept. of Soc. Servs., City of Baltimore, 901 F.2d 387, 391 (4th Cir. 1990) (“Only those questions which are squarely presented to a court may properly be addressed.”). Thus, even under this less stringent standard, a pro se complaint is still subject to summary dismissal. Estelle, 429 U.S. at 106-07.

BACKGROUND FACTS^[2]

Plaintiff is the owner by assignment of all right, title, and interest in and to: (1) U.S. Patent No. 10,426,980 (the “980 Patent”) titled “Smart Spray Foam Respiratory Mask,” which was duly and legally issued on October 1, 2019; and (2) U.S. Patent No. 10,427,703 (the “703 Patent”) titled “Remote Monitoring and Reporting for Mobile Plural Component Manufacturing Rigs,” which was duly and legally issued on September 24, 2019 (collectively, “Patents”). ECF No. 36 ¶ 18. These Patents “describe innovative aspects of remote monitoring, reporting, diagnosing, and controlling systems for plural component spray applicator machines and mobile manufacturing rigs.” Id. ¶ 19. Plaintiff alleges that that the claimed technology of these Patents “is not well understood, conventional, routine, or generic.” Id. According to Plaintiff, the Patents “were written to allow the new developed and improved technology to benefit the safety, efficiency, and performance of the spray foam insulation application industry in the US, for any and all brands of spray foam insulation application equipment manufacturer.” Id. ¶ 24.

Plaintiff alleges that Defendants make, use, offer for sale, sell, and import their Reactor Connect product alone or in combination with spray foam rig equipment in the United States. Id. ¶ 26. According to Plaintiff, Defendants learned in early 2017 of the provisional applications for the 980 Patent and the 703 Patent and that Plaintiff “own[ed] the intellectual property for modification of parameters of a Spray Polyurethane Foam proportioner within a mobile rig using a mobile application.” Id. ¶ 27. Beginning in early 2017, the parties discussed possible options for a business agreement allowing Defendants access to the newly developed technology discussed in the Patents, but no agreement was reached. Id. ¶ 29.

In June 2017, the “JobSight” application product, which Plaintiff owned and designed based on the technologies described in the Patents, was offered for sale to the public. Id. ¶ 31. JobSight “was designed and built for functionality with all spray foam machine brands and models, including Graco machines.” Id. That same month, Defendants informed their agents that JobSight had been released and that they were “working on an app that will be able to control the Reactor 2 system using a phone,” with the goal to release the product in the upcoming months. Id. ¶ 32.

In October 2017, the “Sky” application product, which Plaintiff owned and designed based on the technologies described in the Patents, was offered for sale to the public. Id. ¶ 33. In 2018 Defendants began offering for sale a product called the “Reactor app,” which had similar functionality as JobSight and Sky and described in the Patents. Id. ¶ 34.

Plaintiff alleges that Defendants, after becoming aware of the provisional applications for and technology described in the 980 and 703 Patents, “deliberately altered their patent application . . . titled ‘Remote Monitoring for Fluid Applicator System[,]' which was in the examination phase with the [U.S. Patent and Trade Office (USPTO),] and deliberately introduced a brand new independent claim [Claim 17] which described technology similar to that described in” the 980 and 703 Patents. Id. ¶¶ 41-42. The USPTO granted Defendants' revised Claim 17, which Plaintiff alleges contains a number of anomalies. Id. ¶ 42. Plaintiff alleges that Defendants have used Claim 17 “to...