United States District Court, S.D. New York
Charles P. Kennedy, Esq., LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP, Westfield, NJ, Attorneys for the Plaintiff.
Michael A. Albert, Esq., Gregory F. Corbett, Esq., Nathan Speed, Esq., Joshua J. Miller, Esq., WOLF, GREENFIELD & SACKS, P.C., Boston, MA, Attorneys for the Defendant.
ROBERT W. SWEET, District Judge.
Defendant Formlabs, Inc., ("Formlabs" or the "Defendant") has moved to dismiss the induced, contributory and willful patent infringement claims alleged by Plaintiff 3D Systems ("3D Systems, " "3DS" or the "Plaintiff") in its Complaint (the "Complaint") pursuant to Federal Rules of Civil Procedure 12(b)(6). Based on the conclusions set forth below, the motion is granted in part and denied in part.
The parties began their dispute with each other in South Carolina where 3D Systems sued Formlabs and Kickstarter, Inc. ("Kickstarter") for allegedly infringing one patent owned by 3D Systems (the "South Carolina Action"). ( See Def. Br. at 2; Compl. ¶ 26.) After its filing, Formlabs moved to dismiss the South Carolina Action, arguing that it had no connections to South Carolina and that the complaint failed to adequately plead facts to support its infringement allegations. Prior to the district court reaching the merits of the motion, 3D Systems amended its complaint in the South Carolina Action and then voluntarily dismissed its case. ( See Def. Br. at 2.)
Plaintiff filed the Complaint in this District on November 8, 2013. The Complaint alleges that Formlabs directly, actively induced, contributorily and willfully infringed 3D Systems' patents regarding a method of printing three-dimensional objects called stereolithography.
Defendant filed the instant motion to dismiss on December 23, 2013. Briefing was submitted and oral arguments were held. The matter was marked fully submitted on January 29, 2014.
Facts Alleged In the Complaint
Because this is a motion to dismiss under Fed.R.Civ.P. 12(b)(6), the following facts, which this Court assumes to be true, are drawn from the Complaint. See Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308, 322, 127 S.Ct. 2499, 168 L.Ed.2d 179 (2007) ("[F]aced with a Rule 12(b)(6) motion to dismiss. courts must, as with any motion to dismiss for failure to plead a claim on which relief can be granted, accept all factual allegations in the complaint as true.").
The Complaint refers to several patents held by 3D Systems (the "patents-in-suit") for the creation and printing of three-dimensional prototypes and commercial products from digital designs ("3D printers"). 3D Systems is a company that has developed technology for the 3D printing process. (Comp'. ¶ 6.) 3DS' 3D printers create physical three-dimensional objects from a liquid medium involving the application of solid imaging techniques, including stereolithographic techniques. ( Id. ¶ 7.) Stereolithography is a 3D printing technique that produce three-dimensional models or products by curing a photo-reactive resin with a UV laser or other power source.
The patents-in-suit issued to 3D Systems are the following: