United States District Court, W.D. New York
DECISION AND ORDER
ELIZABETH A. WOLEORD UNITETF STATES DISTRICT JUDGE
Everdry Marketing and Management, Inc. ("Plaintiff)
commenced this action on October 4, 2017, alleging that
Defendants Delves & Giufre Enterprises, Inc., d/b/a
Never-Wet Basement Waterproofing ("Never-Wet"),
Neil Delves ("Delves"), and Kevin Giufre
("Giufre") (collectively "Defendants")
have infringed certain claims of United States Patent No. 6,
634, 144 (the '"144 Patent"), entitled
"Home Waterproofing System" and issued on October
23, 2003. (Dkt. 1 at ¶ 15). According to Plaintiff,
Defendants infringed the '144 Patent by "making,
using, offering for sale, selling, and/or importing into the
United States . . . home waterproofing systems [that] meet
each and every element in at least claim 1" thereof.
(Id. at ¶ 16).
deny infringing the '144 Patent and, on November 7, 2017,
filed a motion to dismiss Plaintiffs Complaint pursuant to
Federal Rule of Civil Procedure 12(b)(6) for failure to state
a claim. (Dkt. 10). That same day, Plaintiff filed, as of
right, an Amended Complaint. (Dkt. 12). On November 20, 2017,
Defendants filed a second motion seeking dismissal of the
Amended Complaint. (Dkt. 13). For the reasons set forth
below, Defendants' motions to dismiss (Dkt. 10; Dkt. 13)
following facts are taken from the Amended Complaint, the
operative pleading in this matter. As required on a Rule
12(b)(6) motion, the Court treats these facts as true.
is a "leading franchisor in the basement waterproofing
business," providing homeowners with waterproofing
systems that prevent water damage and protect a home's
foundation. (Dkt. 12 at ¶ 9). Plaintiff owns the'
144 Patent, which issued on October 21, 2003, and describes
"[a] waterproof system for draining water away from a
building located in ground having a surface above which a
portion of the building extends." (Dkt. 12-1 at 2).
and Giufre are former employees of Everdry Waterproofing of
Upstate New York ("Everdry Upstate"), Plaintiffs
franchisee in the Rochester, New York area. (Dkt. 12 at
¶ 10). While employed by Everdry Upstate, Delves and
Giufre were trained to install Plaintiffs waterproofing
systems. (Id.). Delves and Giufre subsequently
voluntarily resigned from Everdry Upstate and formed
Never-Wet, which directly competes with Plaintiff in the
basement waterproofing industry. (Id. at ¶ 11).
17, 2014, Plaintiffs counsel sent a letter to Delves warning
him to refrain from unauthorized use of Plaintiffs patented
technology. (Id. at ¶¶ 12-13).
this warning, Delves and Giufre, through Never-Wet, have
installed one or more waterproofing systems using Plaintiffs
patented technology. (Id. at ¶ 13).
Defendants have installed waterproofing systems that meet
each and every element of at least claim 1 of the' 144
Patent. (Id. at ¶ 16).
of the' 144 Patent claims "[a] waterproofing system
for draining water away from a building located in ground
having a surface above which a portion of the building
extends the building having a footer and at least one wall
extending vertically from said footer. . . ." (Dkt. 12-1
at 10). The claimed system comprises:
a first drain member located in a first trench provided in
the ground outside the building, said first drain member
extending adjacent at least a portion of said at least one
wall; and a membrane comprised of a first portion secured to
a second portion, said first portion and second portion
having different thicknesses, said first portion forming a
liner which lines at least a portion of said first trench to
form a trough for capturing water flowing from the ground
surface into said trench and for preventing water from
flowing downwardly along said wall, said second portion being