United States District Court, E.D. New York
HENINGER GARRISON DAVIS, LLC, Maureen V. Abbey, New York, NY, Attorneys for Plaintiff.
GOTTLIEB, RACKMAN & REISMAN, PC, Mitchell S. Feller, New York, NY, Attorneys for Defendant.
MEMORANDUM AND ORDER
JOHN GLEESON, District Judge.
Plaintiff Joao Control & Monitoring Systems, LLC ("JCMS") brings this action for patent infringement against Defendant Slomin's, Inc. ("Slomin's"). In its complaint, filed April 24, 2014, JCMS alleges infringement of five patents under the United States Patent Laws, 35 U.S.C. § 1 et seq. Before the Court is Slomin's motion to dismiss for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6), which was filed on August 1, 2014. Slomin's argues that JCMS fails to state claims for direct, induced, and contributory patent infringement. I heard oral argument on October 27, 2014. For the reasons stated below, Slomin's motion is granted in part and denied in part.
JCMS's complaint alleges the following facts, which I assume to be true for purposes of this motion. See Harris v. Mills, 572 F.3d 66, 71 (2d Cir. 2009). JCMS is the owner of five patents that it argues Slomin's has infringed: the 076 Patent, titled "Control, Monitoring and/or Security Apparatus"; the 130 Patent, titled "Control Apparatus and Method for Vehicles and/or for Premises"; the 046 Patent, titled "Monitoring Apparatus and Method"; the 010 Patent, titled "Monitoring Apparatus and Method"; and the 363 Patent, titled "Control and/or Monitoring Apparatus and Method." Compl. ¶ 1, Exs. A-E.
Slomin's business relates to home and business security and loss prevention. Id. ¶ 11. JCMS's explanation of the infringing conduct varies slightly from patent to patent, but generally describes Slomin's three devices that constitute a "control apparatus." See, e.g., id. ¶ 14. The "control apparatus" consists of a keypad control panel, a server, and a user's computer or phone. Id. Slomin's uses the keypad to send a signal to the server, which then signals to the user's phone or computer to alert them about a security event. Id. The user can also send a signal from his or her phone or computer to Slomin's server, which sends another signal back to the control panel to activate an associated "premise system, " like automatic door locks, id. ¶ 40, or equipment at the premises, like small appliances. Id. ¶ 20. Additionally, Slomin's uses monitoring to transmit video information gathered by a camera or recording device to its server, which then transmits the video information to the user's computer or phone. Id. ¶ 26.
JCMS alleges that this conduct directly infringes its patents, and also that Slomin's induces customers to infringe through providing access to, support for, and instructions about the products on Slomin's website. Id. ¶ 15, 21, 27, 34, and 41. Finally, JCMS alleges that Slomin's had knowledge of the patents, at the latest, by the time of service of the complaint. Id. ¶ 9.
A. Direct Infringement
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." 35 U.S.C. § 271(a). The Federal Circuit has found that the adequacy of a pleading of direct infringement is measured by the specificity required in Form 18 of the Federal Rules of Civil Procedure. See In re Bill of Lading Transmission and Processing Sys. Patent Litig., 681 F.3d 1323, 1334-35 (Fed. Cir. 2012) ("As we held in McZeal, Form 18 and the Federal Rules of Civil Procedure do not require a plaintiff to plead facts establishing that each element of an asserted claim is met.... Indeed, a plaintiff need not even identify which claims it asserts are being infringed.") (citing McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1357 (Fed. Cir. 2007)). Although Federal Circuit decisions on the standard for failure to state a claim are not considered binding, "courts have considered the reasoning in those cases as strongly persuasive authority." Pragmatus AV, LLC v. TangoMe, Inc., No. 11-1092-LPS, 2013; WL 571798, at *1, n.1 (D. Del. Feb. 13, 2013;) (quoting In re Bill of Lading, 681 F.3d at 1331) (additional citations omitted); see also Pecorino v. Vutec Corp., 934 F.Supp.2d 422, 445-46 (E.D.N.Y. 2012) (noting that Form 18 likely controls pleading standard for direct infringement).
To comply with the requirements of Form 18, a plaintiff must include:
(1) an allegation of jurisdiction; (2) a statement that the 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 the plaintiff has given the defendant notice of its infringement; and (5) a demand for an injunction and damages.
K-Tech Telecomm., Inc. v. Time Warner Cable, Inc.,
714 F.3d 1277, 1283 (Fed. Cir. 2013;) (quoting ...