Is Identifying An Allegedly Infringed Claim Sufficient To Survive Dismissal?

Not necessarily.

Advanced Screenworks, LLC sued Gold Star Ventures and its owner for alleged infringement of U.S. Patent 8,146,647 for "Screen Clipping System and Clips Therefor."   Advanced alleges that Gold Star infringes the '647 Patent by:

making, using, offering to sell, and selling products, methods, and apparatuses for the screening of windows, doors, pool cages, and patios, including [Defendant's] "Screening Buddy Dual Purpose Screen Retainer System" ... which comes within the scope of the ['647 Patent] without authority or license from [plaintiff].

Advanced further alleges that Gold Star has infringed on "at least claims 1, 2, and 3 of the '647 Patent."  But identifying the patent and the specific claims infringed was not sufficient to survive dismissal:

An allegation of direct patent infringement is “insufficient under Twombly and Iqbal if it simply recites some of the elements of a representative claim and then describes generally how an accused product operates, without specifically tying the operation to any asserted claim or addressing all of the claim requirements.” Blue Water Innovations, LLC v. Fettig, 2019 WL 1904589, *2 (S.D. Fla. Mar. 8, 2019) (citation omitted).

Because Advanced "does not sufficiently tie any specific operation to a patent claim," Gold Star's motion to dismiss is granted.  The Court did grant leave to file a Second Amended Complaint.

Advanced Screeworks, LLC v. Mosher, Case No. 2:19-civ-758-FtM-29MRM (M.D. Fla. Mar. 12, 2020) (J. Steele)

Must A Copyright Holder Attach The Deposit Copy To Its Complaint?

No.  Rule 8 (i.e. notice pleading) is alive and well in the copyright context.

PK Studios, Inc. provided architectural drawings for homes to Stock Development, LLC in connection with development in two communities.  PK provided a release to Stock allowing it to use the architectural drawings for the two communities and for any other projects developed solely by Stock.

Ten years later (in 2014), PK discovered another community being developed by other parties which PK claims are "exact duplicates" of the drawings it had provided to Stock a decade earlier.  PK notified the developers of this new community, who responded that they received a license from Stock.  But PK states that Stock was not authorized to provide such a license.  So PK sued all sets of developers.

The developers of the new community sought dismissal on the pleadings, arguing that PK did not sufficiently identify the work because it did not attach the copy of the drawings it had submitted to the Copyright Office.  According to the defendants, this did not provide sufficient notice to them in order to frame a response.  The Court did not agree:

While the Court agrees with Defendants that PK Studios cannot ultimately prevail on this count without providing the specific materials alleged to have been copied so that they can be compared to the Eagles Landing designs, PK Studios was under no obligation to do so at the pleading stage, In re Southeast Banking Corp., 69 F.3d 1539, 1551 (11th Cir.1995) (Rule 8 does not “impose upon plaintiffs the burden to plead with the greatest specificity they can”), and Defendants will be able to obtain this information during discovery

Motion to dismiss (or for a more definite statement), denied.

PK Studios, Inc. v. R.L.R. Investments, LLC, Case No. 2:15-cv-389 (M.D. Fla. Jan. 4, 2016) (J. Steele)

Do false marking complaints need to satisfy heightened pleading requirements? Court won't answer that question if the complaint falls short of Rule 8

Another false marking post this week. This one comes from the Ft. Myers division. Herengracht sued American Tombow for false marking. The Court ignored the various "shotgun" allegations in the complaint. Tombow asked for dismissal for failure to state a claim, arguing that the plaintiff must plead the heightened requirements of Rule 9(b) because the claim is based on fraud.

First, the Court laid out the elements necessary to survive a motion to dismiss:

(1) that a word or number indicating an article is patented (2) was marked upon, affixed to, or used in advertising in connection with (3) an article which was in fact not covered by the patent, (4) for the purpose of (the intent of) deceiving the public.

* * *

An article whose patent is expired is "unpatented."

Digesting the complaint, the Court found that plaintiff had pleaded that a Tombow product has been marked with U.S. Patent No. 4,851,076. The '075 Patent is currently expired. And Tombow is a sophisticated company. The Court didn't need to delve into whether or not heightened fraud pleading was required here, because these allegations didn't even satisfy Rule 8's notice pleading:

Because the instant Complaint does not even comply with the ordinary pleading rules of Rule 8, there is simply no need to address [the issue of whether heightened pleading requirements should apply.]

The complaint did not allege that Tombow marked its products with an expired patent number after the patent had expired.

Motion to dismiss granted, without prejudice. Plaintiff was given the ability to file an amended complaint. But Plaintiff did not, so the court closed this matter.

Herengracht Group LLC v. American Tombow, Inc., Case No. 2:10-cv-362 (M.D. Fla. Dec. 30, 2010) (J. Steele)