Mallinckrodt Inc. v. E-Z-Em Inc.

• Decision Date: 20 November 2009
• Docket Number: C.A. No. 09-228-JJF.
• Citation: 670 F.Supp.2d 349
• Parties: MALLINCKRODT INC. and Liebel-Flarsheim Company, Plaintiffs, v. E-Z-EM INC. and ACIST Medical Systems, Inc., Defendants.
• Court: U.S. District Court — District of Delaware

670 F.Supp.2d 349

MALLINCKRODT INC. and Liebel-Flarsheim Company, Plaintiffs, v. E-Z-EM INC. and ACIST Medical Systems, Inc., Defendants.

C.A. No. 09-228-JJF.

United States District Court, D. Delaware.

November 20, 2009.

COPYRIGHT MATERIAL OMITTED

Robert G. Krupka, Esquire; Guy Ruttenberg, Esquire; and Allison Buchner, Esquire of Kirkland & Ellis LLP, Los Angeles, CA, Melanie K. Sharp, Esquire, and Megan C. Haney, Esquire of Young, Conaway, Stargatt & Taylor, Wilmington, DE, for Plaintiffs.

Philipe Bennett, Esquire, and William H. Baker, Esquire of Alston & Bird LLP, New York, NY, Richard K. Herrmann, Esquire and Mary B. Matterer, Esquire of Morris James LLP, Wilmington, DE, for Defendants.

MEMORANDUM OPINION

FARNAN, District Judge.

Presently before the Court are the following motions filed by Defendants E-Z-EM, Inc. and ACIST Medical Systems, Inc.: 1) Motion To Dismiss For Failure To State A Claim Under Federal Rule of Civil Procedure Rule 12(b)(6)(D.I. 7); and 2) Motion To Transfer Action Pursuant To 28 U.S.C. § 1404(a)(D.I. 9). For the reasons discussed, the Motion to Transfer will be denied, and the Motion to Dismiss will be granted in part and denied in part. Specifically, the Motion to Dismiss will be granted as to the indirect infringement claims, but denied as to the direct infringement claim. Plaintiffs will be given leave to amend.

I. BACKGROUND

On April 4, 2009, Plaintiffs Mallinckrodt Inc. ("Mallinckrodt") and Liebel-Flarsheim Company ("Liebel-Flarsheim") (collectively, "Plaintiffs") filed suit in this Court against Defendants E-Z-EM, Inc. ("E-Z-EM") and ACIST Medical Systems, Inc. ("ACIST")(collectively, "Defendants"). (D.I. 1.) Plaintiffs allege Defendants are infringing U.S. Patent No. 7,512,434 (the "'434 Patent"), which was issued on March 31, 2009. (Id. at 2.) The '434 Patent relates to remotely powered magnetic resonance ("MR") injectors, and the accused device is E-Z-EM's EmpowerMR injector system. (D.I. 26, at 6.)

The parties to the present action are also involved in ongoing litigation in the Eastern District of Texas. (Id. at 5.) Plaintiffs filed a patent infringement suit against Defendants on June 20, 2007 in the Eastern District of Texas (the "Texas Action") alleging infringement of U.S. Patent No. 5,868,710 (the "'710 Patent"). (Id.) The accused devices in the Texas Action are the EmpowerCT and EmpowerCTA injector systems, which are used in connection with computerized tomography ("CT") procedures (D.I. 10, at 5), as well as the EmpowerMR injector system (D.I. 26, at 20). Discovery has begun in the Texas Action, with a Markman hearing scheduled for January 2010, and a trial scheduled for June 2010. (Id. at 6.) On April 24, 2009, Defendants filed a declaratory judgment action in the Eastern District of Texas seeking declarations of non-infringement and invalidity of the '434 Patent. (D.I. 27, Ex. 1.) On the same day, Defendants concurrently filed the pending Motion to Transfer (D.I. 9) and Motion to Dismiss (D.I. 7) in this Court.

All four parties to the present action are incorporated in Delaware. (D.I. 10, at 2.) E-Z-EM maintained a principal place of business on Long Island, N.Y. until 2008, when ACIST acquired all rights, titles and interests of E-Z-EM, including the property and assets which are the subject of the Texas Action and the present action. (Id. at 3.) ACIST's principal place of business is Eden Prairie, MN. (Id.) Liebel-Flarsheim is a wholly owned subsidiary of Mallinckrodt, and is the assignee of the '434 Patent. (D.I. 26, at 4.) Liebel-Flarsheim is headquartered in Cincinnati, OH, and Mallinkrodt maintains its principal place of business in Hazelwood, MO. (Id.)

II. Defendants' Motion To Dismiss For Failure To State A Claim Under Federal Rule Of Civil Procedure Rule 12(b)(6)

A. Parties' Contentions

By its Motion, Defendants contend this action should be dismissed for failure to state a claim upon which relief can be granted because Plaintiffs have failed to allege essential elements and sufficient facts to meet the minimum pleading requirements for a patent infringement claim. (D.I. 8, at 1.) With regard to the direct patent infringement claim, Defendants contend that Plaintiffs did not, and cannot, allege that Defendants have infringed the patent "by making, selling, and using [the device] embodying the patent." (Id. at 5.) Specifically, Defendants contend that the EmpowerMR injector, standing alone, is not alleged to infringe the '434 Patent because its claims cover multi-component systems, of which an injector is only one portion. (Id. at 6.) Further, Defendants contend that they do not manufacture or sell this multi-component system. (Id.)

With regard to the inducement of infringement claim, Defendants contend that Plaintiffs have failed to meet minimum pleading requirements by not explicitly alleging the requisite intent, and by failing to allege that Defendants had knowledge of the patent-in-suit. (Id. at 9-10.) With regard to the claim for contributory infringement, Defendants also contend that Plaintiffs' failure to allege Defendants' knowledge of the '434 Patent equates to a failure to state a claim upon which relief can be granted. (Id. at 11.)

Plaintiffs first respond that an allegation that Defendants have infringed the patents by "making, selling, and using the device embodying the patent" was made in paragraph 12 of the Complaint. Plaintiffs further contend that, although Defendants only manufacture the EmpowerMR injector (and not all components of the multi-components systems claimed in the '434 Patent), Defendants assemble and configure the components so as to make an infringing suite. (D.I. 28, at 4-5.) With regard to the inducement of infringement claim, Plaintiffs contend they have stated a claim upon which relief can be granted because intent to induce infringement need not be explicitly pleaded, as that element can be proven through circumstantial evidence. (Id. at 6.) Plaintiffs contend that public records demonstrate Defendants' awareness of the '434 Patent, and moreover, that Defendants obtained the requisite knowledge of the '434 Patent from the filing of the Complaint. (Id. at 7-8.) For the same reasons, Plaintiffs further contend that the Complaint sufficiently states a claim for contributory infringement. (Id. at 8-9.)

B. Legal Standard

Under Rule 12(b)(6) of the Federal Rules of Civil Procedure, a defendant may move for dismissal based on a plaintiff's "failure to state a claim upon which relief can be granted." Fed.R.Civ.P. 12(b)(6). When reviewing a motion to dismiss under Rule 12(b)(6), the Court must accept all factual allegations in a complaint as true and view them in the light most favorable to the plaintiff. Christopher v. Harbury, 536 U.S. 403, 406, 122 S.Ct. 2179, 153 L.Ed.2d 413 (2002). A complaint must contain "a short and plain statement of the claim showing that the pleader is entitled to relief." Fed.R.Civ.P. 8(a). Assuming the factual allegations are true, even if doubtful in fact, the "factual allegations must be enough to raise a right to relief above the speculative level." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). While the complaint need not make detailed factual allegations, "a plaintiff's obligation to provide the grounds of his entitlement to relief requires more than mere labels and conclusions, and a formulaic recitation of the elements of a cause of action." Id. (internal quotations and citations omitted). Thus, stating a claim upon which relief can be granted "`requires a complaint with enough factual matter (taken as true) to suggest' the required element" of a cause of action. Phillips v. County of Allegheny, 515 F.3d 224, 234 (3d Cir.2008) (citing Twombly, 550 U.S. at 556, 127 S.Ct. 1955.) In sum, if a complaint "pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged," Ashcroft v. Iqbal, ___ U.S. ___, 129 S.Ct. 1937, 1949, 173 L.Ed.2d 868 (2009), then the complaint is "plausible on its face," and will survive a motion to dismiss under Rule 12(b)(6). Twombly, 550 U.S. at 570, 127 S.Ct. 1955.

C. Discussion

The Court concludes that Plaintiffs' Complaint sufficiently states a claim for direct infringement, and to that extent, Defendants' Motion will be denied. "[A] patentee need only plead facts sufficient to place the alleged infringer on notice as to what he must defend," and is "not required to specifically include each element of the claims of the asserted patent." McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1357 (Fed.Cir.2007). Direct infringement claims are governed by 35 U.S.C. § 271(a), which states, "whoever without authority makes, uses, offers to sell, or sells any patented invention ... during the term of the patent therefor, infringes the patent." In McZeal, the plaintiff sufficiently pleaded a cause of action for direct infringement when the Complaint: 1) asserted plaintiff's ownership of the patent-in-suit; 2) named defendants; 3) cited the patent-in-suit as allegedly infringed; 4) described the means by which defendant allegedly infringed; 5) pointed to the specific patent law invoked; and 6) identified the allegedly infringing product manufactured and distributed by defendants. McZeal, 501 F.3d at 1356-57; see also Fed.R.Civ.P. Form 18 (2007) (setting forth a sample complaint for direct patent infringement that states the following elements: 1) an allegation of jurisdiction; 2) a statement that plaintiff owns the patent; 3) a statement that defendant has been infringing the patent "by making, selling, and using [the device] embodying the patent"; 4) a statement that plaintiff has given defendant notice of its infringement; and 5) a demand for an injunction and damages).

Plaintiffs' Complaint clearly alleges jurisdiction (D.I. 1, at ¶¶ 5-6), asserts Plaintiffs' ownership of the patent-in suit (id. at ¶ 8), and cites the patent-in-suit as allegedly...