Va. Innovation Scis., Inc. v. Samsung Elecs. Co.

• Decision Date: 15 November 2013
• Docket Number: Case No. 2:12cv548.
• Parties: VIRGINIA INNOVATION SCIENCES, INC., Plaintiff, v. SAMSUNG ELECTRONICS CO., LTD., et al., Defendants.
• Court: U.S. District Court — Eastern District of Virginia

983 F.Supp.2d 700

VIRGINIA INNOVATION SCIENCES, INC., Plaintiff,

v.SAMSUNG ELECTRONICS CO., LTD., et al., Defendants.

Case No. 2:12cv548.

United States District Court,

E.D. Virginia,

Norfolk Division.

Nov. 15, 2013.

Aaron W. Purser, Esq., Timothy E. Grochocinski, Esq., W. Ryan Snow, Esq., Anthony M. Vecchione, Esq., Claire A. Henry, Esq., David C. Hartnett, Esq., Edward E. Casto, Jr., Esq., Edward R. Nelson, III, Esq., Jonathan H. Rastegar, Esq., Joseph P. Oldaker, Esq., Thomas C. Cecil, Esq., Thomas J. Ward, Jr., Esq., for Plaintiff.

Brett J. Williamson, Esq., Brian Berliner, Esq., Cameron W. Westin, Esq., Eric S. Namrow, Esq., Marc M. Breverman, Esq., Robert W. McFarland, Esq., Sanjeev B. Mehta, Esq., Sarah K. McConaughy, Esq., Susan van Keulen, Esq., for Defendant.

OPINION AND ORDER

MARK S. DAVIS, District Judge.

This matter is currently before the Court on motions filed by Samsung ElectronicsCo., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively “Samsung” or “Defendants”). In the first motion, Defendants move for an order: “(1) dismissing Count VIII, for Willful Infringement, in the First Amended Complaint (the ‘FAC’), pursuant to Fed.R.Civ.P. 12(b)(6) and (2) striking the allegations and prayer for relief relating to Count VIII, pursuant to Fed.R.Civ.P. 12(f).” ECF No. 124. The second motion before the Court is Defendant's motion requesting judicial notice of a Notice of Allowability upon which Samsung wishes to rely in support of its motion to dismiss. ECF No. 126. The motions have been fully briefed and are therefore ripe for decision.

After examination of the briefs and the record, the Court has determined that a hearing on the instant motions is unnecessary, as the facts and legal arguments are adequately presented, and the decisional process would not be aided significantly by oral argument. SeeFed.R.Civ.P. 78(b); E.D. Va. Loc. Civ. R. 7(J). For the reasons that follow, the Court GRANTS Defendants' Request for Judicial Notice in Support of Samsung's Motion to Dismiss Claim for Willful Infringement; DENIES, in part, and GRANTS, in part, Defendants' Motion to Dismiss Claim for Willful Infringement in First Amended Complaint; and DENIES Defendants' Motion to Strike Allegations and Prayer for Relief Regarding Same.

I. FACTUAL AND PROCEDURAL BACKGROUND

In the instant patent infringement action, plaintiff Virginia Innovation Sciences, Inc. (hereinafter “Plaintiff” or “VIS”) alleges that Defendants have directly, indirectly, and willfully infringed the patents-in-suit by making, using, offering for sale, selling, and/or importing a wide range of accused products, including smartphones, tablets, Blue-ray players, and hubs. Samsung denies VIS's claims of infringement and asserts several affirmative defenses, including invalidity of all patents-in-suit, prosecution history estoppel and other equitable doctrines. Additionally, Samsung asserts counterclaims seeking declarations of non-infringement and invalidity for each of the patents-in-suit.

At issue in this case are the following six patents: U.S. Patent No. 7,899,492 (“the '492 patent”), U.S. Patent No. 8,050,711 (“the '711 patent”), U.S. Patent No. 8,145,268 (“the '268 patent”), U.S. Patent No. 8,224,381 (“the '381 patent”), U.S. Patent No. 7,957,733 (“the '733 patent”), and U.S. Patent No. 8,135,398 (“the '398 patent”). All of the patents-in-suit claim priority to U.S. Application No. 11/165,341, now the ' 492 patent, which itself claimed priority to U.S. Provisional Application No. 60/588,359, filed on July 16, 2004. The '711, '268, and ' 381 patents are continuations of the '492 patent and all four share a substantively identical specification (“the '492 specification”). The '733 and '398 patents are continuations-in-part of the '492 patent. These two patents share a substantively identical specification, which includes all of the '492 specification, along with additional material (“the '733 specification”). Each of the patents-in-suit describes inventions intended to resolve the inconvenience and impracticality of viewing multimedia content on the small screens of mobile terminals.

The Court held its Markman hearing in this matter on June 11, 2013 and issued its Markman opinion on September 25, 2013, 976 F.Supp.2d 794, 2013 WL 5410013 (E.D.Va.2013). Since this hearing, there have been numerous filings in this matter and several motions remain pending before the Court, in various stages of briefing. By Order of October 25, 2013, the Court joined for trial this matter and Virginia Innovation Sciences, Inc. v. Samsung Electronics Co., Ltd., et al., Case No. 2:13cv322. ECF No. 353. The trial of the two matters is now set for April 21, 2014. After reciting the applicable standards of review, the Court first addresses Defendants' Motion and Memorandum in Support of Request for Judicial Notice in Support of Samsung's Motion to Dismiss Claim for Willful Infringement. ECF No. 126. The Court then addresses the Defendants' Motion to Dismiss Claim for Willful Infringement in First Amended Complaint, and to Strike Allegations and Prayer for Relief Regarding Same. ECF No. 124.

II. STANDARD OF REVIEW

A. F.R.E. 201(b)(2) Request for Judicial Notice

Federal Rule of Evidence 201 “governs judicial notice of ... adjudicative fact[s].” Fed.R.Evid. 201(a). The rule permits the court to “judicially notice a fact that is not subject to reasonable dispute because it: (1) is generally known within the trial court's territorial jurisdiction; or (2) can be accurately and readily determined from sources whose accuracy cannot be reasonably questioned.” Fed.R.Evid. 201(b). The Court is permitted to take judicial notice “on its own.” Fed.R.Evid. 201(c)(1). However, the Court “must take judicial notice if a party requests it and the court is supplied with the necessary information.” Fed.R.Evid. 201(c)(2).

B. Rule 12(b)(6) Motion to Dismiss

A complaint should be dismissed under Rule 12(b)(6) where it appears that the facts alleged fail to state a “plausible” claim for relief. Ashcroft v. Iqbal 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007)). “Factual allegations must be enough to raise a right to relief above the speculative level ... on the assumption that all the allegations in the complaint are true (even if doubtful in fact).” Twombly, 550 U.S. at 555, 127 S.Ct. 1955. “And, of course, a well-pleaded complaint may proceed even if it strikes a savvy judge that actual proof of those facts is improbable, and ‘that a recovery is very remote and unlikely.’ ” Id. at 556, 127 S.Ct. 1955. The Fourth Circuit recently explained the standard as follows: “To survive a Rule 12(b)(6) motion to dismiss, a complaint must establish ‘facial plausibility’ by pleading ‘factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.’ ” Clatterbuck v. City of Charlottesville, 708 F.3d 549, 554 (4th Cir.2013) (quoting Iqbal, 556 U.S. at 678, 129 S.Ct. 1937).

In assessing the merits of a Rule 12(b)(6) motion to dismiss, a district court “ ‘must accept as true all of the factual allegations contained in the complaint’ and ‘draw all reasonable inferences in favor of the plaintiff.’ ” Kensington Volunteer Fire Dept., Inc. v. Montgomery County, Md., 684 F.3d 462, 467 (4th Cir.2012) (quoting E.I. du Pont de Nemours & Co. v. Kolon Indus., 637 F.3d 435, 440 (4th Cir.2011)). However, while a district court must construe well-pled facts in the light most favorable to the plaintiff, “legal conclusions, elements of a cause of action, and bare assertions devoid of further factual enhancement fail to constitute well-pled facts for Rule 12(b)(6) purposes.” Nemet Chevrolet, Ltd. v. Consumeraffairs.com, Inc., 591 F.3d 250, 255 (4th Cir.2009). If a plaintiff fails to allege facts sufficient to plausibly infer that such plaintiff is entitled to relief, then dismissal must be granted.

Plaintiff cites McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1357 (Fed.Cir.2007) and argues that, in order to sufficiently plead infringement of a patent, the “patentee need only plead facts sufficient to place the alleged infringer on notice as to what he must defend.” Although Plaintiff cites Twombly and Iqbal in its brief, the citation to, and reliance on, McZeal requires the Court to clarify the appropriate standard in order to avoid any confusion on the point.

In McZeal, 501 F.3d at 1357, the Federal Circuit was faced with the question of whether a pro se plaintiff's complaint, following the requirements of Form 18 in the Appendix of Forms to the Federal Rules of Civil Procedure (Form 16 at the time of that case), can survive a motion to dismiss under Rule 12(b)(6). This Court, in previously examining McZeal, “agree[d] with the post-Twombly holding in McZeal that a litigant who complies with the provisions of Form 18 has sufficiently stated a claim for direct infringement as contemplated by Rule 12(b)(6), and, to the extent Twombly and Iqbal require more, need not meet the more stringent Twombly and Iqbal plausibility standard.” ¹W.L. Gore & Assocs., Inc. v. Medtronic, Inc., 778 F.Supp.2d 667, 675 (E.D.Va.2011). This Court went on to hold that “[s]ince the Federal Rules state that compliance with the forms is sufficient, and the Supreme Court's decisions in Twombly and Iqbal could not have amended the Federal Rules, a complaint alleging literal infringement that tracks Form 18 is sufficient to withstand a motion to dismiss under Rule 12(b)(6).” Id. The Federal Circuit recently addressed this same issue, finding that, “to the extent the parties argue that Twombly and its progeny conflict with the forms and create differing pleading requirements, the forms control,” and therefore the sufficiency of a claim for “direct infringement is to be measured by the specificity required by Form 18.” In re Bill of Lading...