Honeywell Int'l Inc. v. Cree, Inc.
Decision Date | 12 January 2015 |
Docket Number | Civil Action No.: 14-2004 (JLL) |
Parties | HONEYWELL INTERNATIONAL INC., Plaintiff, v. CREE, INC., Defendant. |
Court | U.S. District Court — District of New Jersey |
NOT FOR PUBLICATION
This matter comes before the Court by way of Defendant Cree, Inc., ( "Defendant")'s partial motion to dismiss Plaintiff Honeywell International Inc., ("Plaintiff")'s Complaint (ECF No. 1) pursuant to Federal Rule of Civil Procedure 12(b)(6). (ECF No. 11). The Court has considered the parties' submissions in support of and in opposition to the instant motion and decides this matter without oral argument pursuant to Federal Rule of Civil Procedure 78. For the reasons set forth below, the Court denies Defendants' motion.
Plaintiff is a corporation organized under the laws of the state of Delaware, with its principal place of business in New Jersey. (Comp. at ¶ 1). Defendant is a corporation, with its principal place of business in North Carolina. (Id. at ¶ 3). Plaintiff is the owner of U.S. PatentNo. 6,373,188 B1 (the "'188 Patent") and U.S. reissued Patent No. RE41,685 ( ). (Id. at ¶ 2).
On April 16, 2002, the United States Patent and Trademark Office ("USPTO") issued the '188 patent, which Plaintiff owns all substantial rights in. (Id. at ¶ 8-9). The Patent was entitled "Efficient Solid-State Light Emitting Device With Excited Phosphors For Producing a Visible Light Output." (Id. at ¶ 8). Moreover, on January 11, 2011, the USPTO issued an ex parte reexamination certificate for the '188 patent. (Id. at ¶ 10). Similarly, on December 23, 2003 the USPTO issued the '567 patent, which was later reissued as the '685 reissue on September 14, 2010. (Id. at ¶ 11). This patent and subsequent reissue was entitled "Light Source With Non-White and Phosphor-Based White LED Devices, and LCD Assembly." (Id.). Plaintiff owns all substantial rights in the '567 reissue, as well. (Id. at ¶ 12).
Plaintiff alleges that Defendant has infringed and continues to infringe the '188 Patent by making, using, offering to sell, and/or selling in the United States phosphor-based LEDs and/or products incorporating the same, that are covered by claim 28 of the '188 Patent. (Id. at ¶ 14). Moreover, Plaintiff asserts that Defendant has indirectly infringed and continues to indirectly infringe the '188 Patent; Defendant's customers also directly infringe the '188 Patent by their use of Defendant's phosphor-based LED products in the United States; Defendant has knowingly induced infringement and has had specific intent to induce infringement of the '188 Patent by its activities relating to the marketing, sales, support, and distribution of its phosphor-based LED products; Defendant has committed and intended to commit contributory infringement of the '188 Patent; and Defendant knew of the alleged contributory infringement. (Id. at ¶ 15). Plaintiff contends that Defendant has had actual knowledge of the '188 patent since no later than October 19, 2007, when Plaintiff filed an original Complaint against Defendant inthe United States District Court for the Eastern District of Texas, alleging infringement of the '188 Patent. (Id. at ¶ 16). Regardless of Defendant's knowledge of the '188 Patent, as well as Plaintiff's allegations of infringement and the confirmation of the '188 Patent claims in reexamination, Defendant has allegedly continued to infringe, directly and indirectly, the '188 Patent, sufficient to entitle Plaintiff to treble damages. (Id. at ¶ 16-17).
Similarly, Plaintiff alleges that Defendant has infringed and continues to infringe the '188 Patent by making, using, offering to sell, and/or selling in the United States, LED systems and arrays of LEDs and/or products incorporating the same, that are covered by claim 10 of the '685 Reissue. (Id. at ¶ 20). Plaintiff asserts that Defendant has indirectly infringed and continues to indirectly infringe the '685 Reissue as well. (Id. at ¶ 21). What is more, Plaintiff alleges that Defendant's customers also directly infringe the '685 Reissue by their use of Defendant's LED system products; Defendant has knowingly induced infringement and has had specific intent to induce infringement of the '685 Reissue by its activities relating to the marketing, support, and distribution of its LED system products; Defendant had committed and intended to commit contributory infringement of the '685 Reissue; and Defendant knew that its LED system products, and/or any components thereof, were especially made or adapted for use in infringing the '685 Reissue. (Id.) Finally, Defendant has contributed to the infringement of the '685 Reissue by marketing, supporting, distribution, offering for sale and/or selling the phosphor-based LED products, and/or components thereof, to its customers. (Id.) Plaintiff contends that Defendant has had actual knowledge of the '685 Reissue since no later than the date of the filing of the Complaint. (Id. at ¶ 22).
Federal Rule of Civil Procedure 8(a)(2) requires that a complaint set forth "a short and plain statement of the claim showing that the pleader is entitled to relief." For a complaint to survive dismissal, it "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) (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007)). The plaintiff's short and plain statement of the claim must "give the defendants fair notice of what the . . . claim is and the grounds upon which it rests." Twombly, 550 U.S. at 545 (quoting Conley v. Gibson, 355 U.S. 41, 47, 78 S.Ct. 99, 2 L.Ed.2d 80 (1957)).
In evaluating the sufficiency of a complaint, a court must accept all well-pleaded factual allegations as true and draw all reasonable inferences in favor of the non-moving party. See Phillips v. County of Allegheny, 515 F.3d 224, 234 (3d Cir. 2008). "Factual allegations must be enough to raise a right to relief above the speculative level." Bell Atl. Corp. v. Twombly, 550 U.S. at 555 (2007). Further, "[a] pleading that offers 'labels and conclusions' or 'a formulaic recitation of the elements of a cause of action will not do. Nor does a complaint suffice if it tenders 'naked assertion[s]' devoid of 'further factual enhancement.'" Iqbal, 556 U.S. at 678 (citing Bell Atl. Corp. v. Twombly, 550 U.S. at 555, 557 (2007)). However, this '"does not impose a probability requirement at the pleading stage,' but instead 'simply calls for enough facts to raise a reasonable expectation that discovery will reveal evidence of the necessary element." West Penn Allegheny Health Sys. Inc. v. UPMC, 627 F.3d 85, 98 (3d Cir. 2010) (quoting Phillips v. County of Allegheny, 515 F.3d 224, 234 (3d Cir.2008)).
Defendant argues that dismissal of Count II of Plaintiff's Complaint is warranted upon the following grounds: (1) The '685 reissue patent enlarged the scope of the claims of '567 patent; and (2) the application for the '685 reissue patent was filed over two years after the '567 patent issued.
In opposition to the instant motion, Plaintiff argues: (1) Plaintiff timely filed its reissue application within the two-year window, and then properly used a divisional reissue application to continue its examination; (2) Plaintiff fulfilled any requirement to reference the parent application in the divisional; and (3) Defendant's motion is particularly meritless in the procedural context of a motion to dismiss.
Defendant argues that Claim 10 of the '685 reissue is facially invalid and therefore, Defendant cannot be liable for any alleged infringement. As a result of this, Defendant contents that Count II of Plaintiff's Complaint fails to state a plausible claim for relief and must be dismissed. Defendant asserts that claim 10 of the '685 reissue is facially invalid because while the '567 patent was issued on December 23, 2003, the reissue application was not filed until April 19, 2007, over three years after the '567 patent issued. Defendant points to the language of 35 U.S.C. § 251(d), for the proposition that "no reissue patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent." 35 U.S.C. §251 (d) (Emphasis added). Moreover, Defendant notes that under 35 U.S.C. §120, for a later-filed application to claim priority to an earlier application, theapplication must contain or be amended to contain a specific reference to the earlier filed application, which Defendant argues, Plaintiff has failed to satisfy. Encyclopedia Britannica, Inc. v. Alpine Elecs. Of Am., Inc., 609 F.3d 1345, 1349-1350 (Fed. Cir. 2010).
Plaintiff responds to Defendant's arguments by stating that Plaintiff filed an application for a reissue of '567 patent on December 22, 2005, within two years of the issuance of the '567 patent. Plaintiff sought to correct an error originally issued in the '567 parent by adding twenty one (21) new claims in the patent reissue application. Plaintiff contends that the USPTO reviewed the '597 parent reissue application and determined that the new claims were sufficiently distinct from the original nine claims and that they should be included in separate, but related applications, called "divisional" applications. Plaintiff states that pursuant to the USPTO's instructions, on April 19, 2007, Plaintiff amended the '597 patent by cancelling claims 10-30, without prejudice, and concurrently filed two divisional applications. The USPTO then suspended the examination of '597 parent reissue application and commenced examination of the '399 divisional application, where it eventually determined that the claims were allowable and could issue into a patent. Plaintiff, following the USPTO's...
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