Schuyleman v. Barnhart Crane and Rigging Co et al, No. 2:2023cv00562 - Document 39 (W.D. Wash. 2023)
Court Description: ORDER granting in part and denying in part Defendants' 32 Motion to Dismiss for Failure to State a Claim. The court GRANTS Barnhart's motion to dismiss Mr. Schuyleman's contributory infringement claim and DISMISSES that claim without prejudice and with leave to amend. Mr. Schuyleman shall file his amended complaint, if any, by no later than 12/18/2023. Signed by Judge James L. Robart. (SS)
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Schuyleman v. Barnhart Crane and Rigging Co et al Doc. 39 1 2 3 4 5 6 7 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE 8 9 10 CASE NO. C23-0562JLR JAY SCHUYLEMAN, ORDER Plaintiff, 11 v. 12 13 BARNHART CRANE AND RIGGING CO., et al., 14 Defendants. 15 I. INTRODUCTION 16 Before the court is Defendants Barnhart Crane and Rigging Co. and Barnhart 17 Crane and Rigging, LLC’s (together, “Barnhart”) motion to dismiss Plaintiff Jay 18 Schuyleman’s second amended complaint. (Mot. (Dkt. # 32); Reply (Dkt. # 37); see 19 SAC (Dkt. # 31).) Mr. Schuyleman opposes the motion. (Resp. (Dkt. # 35).) The court 20 has considered the motion, the submissions of the parties, the relevant portions of the 21 22 ORDER - 1 Dockets.Justia.com 1 record, and the governing law. Being fully advised,1 the court GRANTS in part and 2 DENIES in part Barnhart’s motion to dismiss. 3 II. 4 BACKGROUND This action arises from Barnhart’s alleged infringement of Mr. Schuyleman’s 5 patent covering a “novel device related to a hoisting apparatus . . . for use with a crane in 6 positioning an object at a desired distance inside an opening of a building.” (SAC ¶ 16.) 7 Below, the court summarizes the factual and procedural background relevant to 8 Barnhart’s motion to dismiss. 9 A. Factual Background 10 Mr. Schuyleman is a former ironworker who worked on constructing large 11 commercial and governmental buildings. (Id. ¶ 14.) He states that he “personally 12 observed the difficulties and dangers of inserting large materials—such as glass or 13 walls—through openings of high-rise buildings by using hanging platforms or fixed 14 beams, which could cause drifting loads.” (Id.) In 2008, he “came up with the idea of 15 using a movable boom for hoisting heavy loads” and “combin[ed] the movable boom 16 with offsetting counterweights” to enable a crane to “raise loads to the desired height 17 with ease.” (Id. (attaching photos of Mr. Schuyleman’s “Flying Forklift”).) 18 19 On November 27, 2012, the U.S. Patent and Trademark Office awarded Mr. Schuyleman U.S. Patent No. 8,317,244 (the “’244 Patent”), entitled “Apparatus and 20 21 22 1 Neither party has requested oral argument (see Mot. at 1; Resp. at 1) and the court finds that oral argument would not be helpful to its resolution of the motion, see Local Rules W.D. Wash. LCR 7(b)(4). ORDER - 2 1 Method for Positioning an Object in a Building.” (Id. ¶ 17; id., Ex. 1 (“’244 Patent”).) 2 Mr. Schuyleman “is the exclusive owner of all rights, title, and interest in the ’244 3 Patent.” (Id. ¶ 19.) The patent is “directed to . . . an improvement for an apparatus used 4 to lift a load during, for example, construction of a building.” (Id. ¶ 18 (citing ’244 5 Patent at 2:13-14).) It consists of one independent claim and 16 dependent claims. (See 6 generally ’244 Patent.) Claim 1 of the ’244 Patent covers: 7 8 1. An improvement for an offset hoisting apparatus having at least a top side, a bottom side, a front side, and a rear side, the offset hoisting apparatus for use with a crane apparatus to lift a load, the improvement comprising: 9 a rigid boom having a distal end and a proximal end, the distal end including a hook means for supporting the load; 10 11 12 13 14 15 16 17 18 19 20 21 22 a front mount having a front boom aperture adapted for confining the boom to slidable movement therethrough, the front mount fixed with the offset hoisting apparatus, the distal end cantilevered from the front mount to extend the load through an opening in a wall; and a rear mount having a rear boom aperture adapted for confining the boom to slidable movement therethrough, the rear mount fixed with the offset hoisting apparatus; whereby the boom may be selectively slid between a retracted and an extended position, or therebetween, and the load may then be secured to the hook means at the distal end of the boom, the crane apparatus then able to lift the load. (’244 Patent at 6:5-23.) Barnhart has equipment rental locations in this District, including in Kent and Mount Vernon, Washington, and operates the website www.barnhartcrane.com, which includes information and videos regarding its products. (SAC ¶ 10.) Mr. Schuyleman alleges that Barnhart is infringing the ’244 Patent by making, using, selling, offering to sell, and importing into the U.S., certain equipment with a moveable boom, including the Moveable Counterweight ORDER - 3 1 2 3 Cantilever System (“MOCCS”) (e.g., Standard Movable Counterweight Cantilever System and Movable Counterweight Double Beam), Mini-MOCCS, and Mega-MOCCS [together, the “Accused Products”], through at least its website at https://www.barnhartcrane.com/locations/ and offices located throughout the United States. 4 (Id. ¶ 6.) Mr. Schuyleman alleges that the Accused Products “have a slidable boom that 5 can slide between a retracted position and an extended position, confined by a front 6 mount and a rear mount fixed with an offset hoisting apparatus” and includes screenshots 7 from videos on Barnhart’s website showing each Accused Product’s slidable boom in its 8 retracted and extended position. (Id. ¶¶ 23-25.) He also alleges that “[t]he extendable 9 and retractable boom in the Accused Products allow [sic] for extension of the load 10 through an opening in a wall” and includes a screenshot from a video on Barnhart’s 11 website showing an example of the boom in action. (Id. ¶ 26.) Mr. Schuyleman has 12 attached to the complaint a claim chart for each Accused Product. (Id. ¶ 35, Ex. 2 13 (Movable Counterweight Double Beam claim chart); id., Ex. 3 (Mini-MOCCS claim 14 chart); id., Ex. 4 (Mega-MOCCS claim chart) (together, the “SAC Claim Charts”).) Each 15 claim chart lists the elements of Claim 1 of the ’244 Patent, describes how Mr. 16 Schuyleman alleges the Accused Product practices each element, and includes 17 screenshots from and links to videos on Barnhart’s website that display the relevant 18 features of the Accused Product. (See generally SAC Claim Charts.) 19 On December 9, 2022, Mr. Schuyleman sent Barnhart a letter notifying it of its 20 infringement of the ’244 Patent. (SAC ¶ 29.) On December 19, 2022, Barnhart 21 confirmed it had received the letter “with allegations of patent infringement,” and stated 22 that it would investigate the allegations and “respond as soon as possible.” (Id. ¶ 31.) ORDER - 4 1 Barnhart, however, failed to respond further to Mr. Schuyleman’s letter. (Id.) Mr. 2 Schuyleman alleges that Barnhart has since continued to infringe the ’244 Patent. (Id. 3 ¶ 32.) 4 B. Procedural Background 5 Mr. Schuyleman filed his original complaint in this action on April 11, 2023. (See 6 Compl. (Dkt. # 1).) On May 24, 2023, Barnhart moved to dismiss the original complaint 7 for failure to state a claim. (1st MTD (Dkt. # 16).) On June 10, 2023, however, Mr. 8 Schuyleman filed an amended complaint as a matter of course pursuant to Federal Rule 9 of Civil Procedure 15(a)(1)(B). (Am. Compl. (Dkt. # 20).) The court then denied 10 11 Barnhart’s first motion to dismiss as moot. (6/12/23 Order (Dkt. # 21).) On June 26, 2023, Barnhart moved to dismiss Mr. Schuyleman’s amended 12 complaint. (2d MTD (Dkt. # 22).) On August 23, 2023, the court granted Barnhart’s 13 motion and dismissed Mr. Schuyleman’s claims for direct infringement of the ’244 Patent 14 in violation of 35 U.S.C. § 271(a) (Am. Compl. ¶¶ 26-34) and induced infringement of 15 the ’244 Patent in violation of 35 U.S.C. § 271(b) (id. ¶¶ 35-39) with leave to amend. 16 (8/23/23 Order (Dkt. # 30) at 9-10.) The court concluded that Mr. Schuyleman’s 17 amended complaint “relie[d] only on conclusory allegations and therefore fail[ed] to state 18 a plausible claim for relief.” (Id. at 7 (citing Am. Compl. ¶¶ 26-34; id., Ex. D).) Relying 19 on Bot M8 LLC v. Sony Corp. of America, 4 F.4th 1342, 1352 (Fed. Cir. 2021), the court 20 held that it was “not enough for Mr. Schuyleman to simply recite the claim elements and 21 conclude that the accused Products have those elements.” (8/23/23 Order at 7.) Rather, 22 Mr. Schuyleman “must include factual allegations that ‘articulate why it is plausible that ORDER - 5 1 the accused product infringes the patent claim.’” (Id. (quoting Bot M8, 4 F.4th at 1353).) 2 Because Mr. Schuyleman failed to do so, the court dismissed the direct infringement 3 claim and, by extension, the induced infringement claim. (Id. at 7-8.) 4 Mr. Schuyleman timely filed his second amended complaint on September 5, 5 2023. (SAC.) He renewed his claims against Barnhart for direct infringement and 6 induced infringement of the ’244 Patent and added a new claim for contributory 7 infringement. (Id. ¶¶ 33-44.) Barnhart filed its third motion to dismiss on September 19, 8 2023. (Mot.) Mr. Schuyleman filed a timely response, and Barnhart filed a timely reply. 9 (See Resp.; Reply; 10/2/23 Order (Dkt. # 34) (granting Mr. Schuyleman’s motion for a 10 two-week extension of time to file his response).) The motion is now ripe for decision. 11 III. 12 ANALYSIS The court sets forth the relevant standard of review before turning to Barnhart’s 13 motion to dismiss Mr. Schuyleman’s second amended complaint. 14 A. 15 Standard of Review Federal Rule of Civil Procedure 12(b)(6) provides for dismissal when a complaint 16 “fail[s] to state a claim upon which relief can be granted.” Fed. R. Civ. P. 12(b)(6). 17 Under this standard, the court construes the claim in the light most favorable to the 18 nonmoving party, Livid Holdings Ltd. v. Salomon Smith Barney, Inc., 416 F.3d 940, 946 19 (9th Cir. 2005), and asks whether the claim contains “sufficient factual matter, accepted 20 as true, to ‘state a claim to relief that is plausible on its face,’” Ashcroft v. Iqbal, 556 U.S. 21 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). The 22 court need not accept as true legal conclusions, “formulaic recitation[s] of the elements of ORDER - 6 1 a cause of action,” Chavez v. United States, 683 F.3d 1102, 1008 (9th Cir. 2012) (quoting 2 Twombly, 550 U.S. at 555), or “allegations that are merely conclusory, unwarranted 3 deductions of fact, or unreasonable inferences,” Sprewell v. Golden State Warriors, 266 4 F.3d 979, 988 (9th Cir. 2001). “A claim has facial plausibility when the plaintiff pleads 5 factual content that allows the court to draw the reasonable inference that the defendant is 6 liable for the misconduct alleged.” Iqbal, 556 U.S. at 678. 7 Review is generally limited to the contents of the complaint. Sprewell, 266 F.3d at 8 988. Courts may, however, “consider certain materials—documents attached to the 9 complaint, documents incorporated by reference in the complaint, or matters of judicial 10 notice—without converting the motion to dismiss into a motion for summary judgment.” 11 United States v. Ritchie, 342 F.3d 903, 908 (9th Cir. 2003). Accordingly, the court 12 considers the ’244 Patent and Mr. Schuyleman’s claim charts, which are attached to the 13 second amended complaint and incorporated by reference therein. (See SAC, Exs. 1-4.) 14 The court also considers the videos from Barnhart’s website about the Accused Products. 15 (See SAC ¶¶ 23-28 (including links to videos on Barnhart’s website); SAC Claim Charts 16 (same).) 17 B. 18 Motion to Dismiss Barnhart asserts that the court must dismiss Mr. Schuyleman’s second amended 19 complaint in full because it fails to state a plausible claim for relief. (See generally Mot.) 20 The court considers each of Mr. Schuyleman’s claims below. 21 22 ORDER - 7 1 1. Direct Infringement 2 A defendant is liable for direct infringement if it, without authorization, “makes, 3 uses, offers to sell, or sells any patented invention” in the United States or imports a 4 patented invention into the United States. 35 U.S.C. § 271(a). “A plaintiff is not 5 required to plead infringement on an element-by-element basis.” Bot M8, 4 F.4th at 1352 6 (citing Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337, 1350 (Fed. Cir. 2018)). “Instead, it 7 is enough ‘that a complaint place the alleged infringer on notice of what activity is being 8 accused of infringement.’” Id. (quoting Lifetime Indus., Inc. v. Trim-Lok, Inc., 869 F.3d 9 1372, 1379 (Fed. Cir. 2017) (internal quotation marks and edits omitted)); see also Disc 10 Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3d 1256, 1260 (Fed. Cir. 2018) (holding that 11 the allegations in the complaint need only give the defendant “fair notice of 12 infringement”). To assert a plausible claim, however, the plaintiff “must do more than 13 merely allege entitlement to relief; it must support the grounds for that entitlement with 14 sufficient factual content.” Bot M8, 4 F.4th at 1352 (citing Iqbal, 556 U.S. at 678). “The 15 level of detail required in any given case will vary depending upon a number of factors, 16 including the complexity of the technology, the materiality of any given element to 17 practicing the asserted claim(s), and the nature of the allegedly infringing device.” Id. at 18 1353. “Accordingly, a plaintiff cannot assert a plausible claim for infringement under the 19 Iqbal/Twombly standard by reciting the claim elements and merely concluding that the 20 accused product has those elements.” Id. Instead, “[t]here must be some factual 21 allegations that, when taken as true, articulate why it is plausible that the accused product 22 infringes the patent claim.” Id. ORDER - 8 1 Barnhart contends that Mr. Schuyleman’s direct infringement claim fails because 2 it is based on conclusory allegations, depends on “implausible” or “inconsistent” theories 3 of claim construction, and omits several claim elements. (Mot. at 5-19.) The court 4 disagrees, and denies Barnhart’s motion to dismiss the direct infringement claim. 5 In his second amended complaint, Mr. Schuyleman alleges that Barnhart has 6 infringed and continue[s] to infringe one or more of the claims of the ’244 [P]atent under 35 U.S.C. § 271(a), either literally or under the doctrine of equivalents, by making, using, selling, offering for sale, and/or importing into the United States products encompassed by those claims, including (as non-limiting examples) the MOCCs, Mega-MOCCS, and Mini-MOCCS. 7 8 9 (SAC ¶ 35.) He further alleges, citing the SAC Claim Charts, that Barnhart infringes 10 Claim 1 of the’244 Patent because each of the Accused Products incorporates each of the 11 elements of that claim. (Id. ¶ 36 (alleging that the Accused Products include the elements 12 of Claim 1 and listing those elements); see also SAC Claim Charts (showing how each 13 Accused Product allegedly incorporates each element of Claim 1).) 14 These allegations satisfy the pleading standard for direct infringement. In Disc 15 Disease Solutions, Inc. v. VGH Solutions, Inc., the Federal Circuit held that the plaintiff’s 16 allegations met the Iqbal/Twombly pleading standard where (1) the matter involved a 17 “simple technology,” (2) the asserted patents were attached to the complaint and 18 consisted of just four independent claims; (3) the complaint specifically identified the 19 three accused products by name and by attaching photos of the product packaging, and 20 (4) the complaint alleged that the accused products met “each and every element of at 21 least one claim of the . . . Patent, either literally or equivalently.” 888 F.3d at 1260; see 22 also NovaPlast Corp. v. Inplant, LLC, No. 20-7396 (KM) (JBC), 2021 WL 5770264, at ORDER - 9 1 *6 (D.N.J. Dec. 6, 2021) (denying motion to dismiss where plaintiff amended its 2 complaint to include photographs of the accused products, “indications on the respective 3 photographs where each claim limitation is met,” and claim charts with photos and 4 annotations). Here, Mr. Schuyleman’s second amended complaint (1) involves a 5 relatively simple technology; (2) the ’244 Patent is attached to the complaint and consists 6 of one independent claim and 16 dependent claims; (3) the complaint specifically 7 identifies the Accused Products by name, by attaching screenshots taken from Barnhart’s 8 own videos, and by linking to the videos on Barnhart’s website; and (4) the complaint 9 alleges that the Accused Products practice each element of Claim 1 of the ’244 Patent 10 either literally or equivalently. (See generally SAC; ’244 Patent.) In addition, Mr. 11 Schuyleman’s claim charts specifically identify the Accused Products and include photos 12 and annotations mapping the elements of the Claim 1 to features of the Accused 13 Products. (See generally SAC Claim Charts.) The court concludes that Mr. 14 Schuyleman’s second amended complaint meets or exceeds the pleading standards that 15 the Federal Circuit found sufficient in Disc Disease Solutions and is therefore sufficient 16 to provide Barnhart “fair notice of infringement” of the ’244 Patent. Disc Disease Sols., 17 888 F.3d at 1260. 18 Barnhart’s arguments to the contrary are not persuasive. First, Barnhart contends 19 that the court should dismiss the complaint because Mr. Schuyleman failed to “pointedly 20 identify several claim elements in the appended claim charts.” (See Mot. at 10-13.) The 21 Federal Circuit has made clear, however, that “[a] plaintiff is not required to plead 22 infringement on an element-by-element basis.” Bot M8, 4 F.4th at 1352; see also Disc ORDER - 10 1 Disease Sols., 888 F.3d at 1260 (concluding it was enough that the plaintiff “alleged that 2 the accused products meet ‘each and every element of at least one claim of the [patents], 3 either literally or equivalently’”); In re Bill of Lading Transmission & Processing Sys. 4 Pat. Litig., 681 F.3d 1323, 1343 (Fed. Cir. 2012) (“[T]here is no requirement that the 5 facts alleged mimic the precise language used in a claim[.]”). Thus, even if Mr. 6 Schuyleman omitted certain claim limitations from his claim charts, that omission is not 7 fatal to his claims at this stage of the proceedings. 8 Second, the court rejects Barnhart’s assertion Mr. Schuyleman’s claim must be 9 dismissed because it alleges “implausible constructions of the claim limitations ‘front 10 mount’ and ‘rear mount.’” (Mot. at 13-18.) As Barnhart acknowledges, “claim 11 construction is generally not proper for a Rule 12(b)(6) motion.” (Id. at 13; see Reply at 12 7); see also In re Bill of Lading, 681 F.3d at 1343 n.13 (noting that “claim construction at 13 the pleading stage—with no claim construction processes undertaken—was 14 inappropriate” and that the Federal Circuit “afford[s] the claims their broadest possible 15 construction at this stage of the proceedings”). Nevertheless, Barnhart contends that 16 under Ottah v. Fiat Chrysler, the court “may dismiss a complaint prior to claim 17 construction when the complaint rests on an implausible claim construction.” (Mot. at 18 13-14 (citing Ottah, 884 F.3d 1135, 1141-42 (Fed. Cir. 2018)).) In Ottah, however, the 19 “implausible construction” was obvious: the accused product was a camera holder, while 20 the plaintiff’s patent was “explicitly limited to books.” Ottah, 884 F.3d at 1141. 21 Barnhart cites no case in which a court properly dismissed a complaint based on the type 22 of detailed claim construction analysis that Barnhart asks the court to perform here. (See ORDER - 11 1 generally Mot.; Reply.) Mindful of its duty to take the allegations in the complaint as 2 true when deciding a motion to dismiss, see Iqbal, 556 U.S. at 678, the court declines 3 Barnhart’s invitation to construe the terms of Claim 1 at this stage of the proceedings. 4 Finally, the court disagrees with Barnhart that the complaint must be dismissed 5 because it alleges facts inconsistent with direct infringement. (See Mot. at 18-19.) 6 Viewing the complaint in the light most favorable to Mr. Schuyleman, the court cannot 7 conclude that the claim language and features are “sufficiently incongruous as to make 8 the complaint implausible on its face.” Qwikcash, LLC v. Blackhawk Network Holdings, 9 Inc., No. 4:19-CV-876-SDJ, 2020 WL 6781566, at *3 (E.D. Tex. Nov. 17, 2020) (citing 10 Mosaic Brands, Inc. v. Ridge Wallet LLC, No. 2:20-cv-04556, 2020 WL 5640233, at *4-5 11 (C.D. Cal. Sept. 3, 2020)). The court denies Barnhart’s motion to dismiss Mr. 12 Schuyleman’s direct infringement claim. 13 2. 14 To prevail on an induced infringement claim under 35 U.S.C. § 271(b), a plaintiff Induced Infringement 15 must establish that there has been direct infringement of its patent and show that the 16 defendant “took certain affirmative acts to bring about the commission by others of acts 17 of infringement and had ‘knowledge that the induced acts constitute patent 18 infringement.’” TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1286 (Fed. Cir. 2020) 19 (quoting Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 765-66 (2011)). 20 “[W]illful blindness can satisfy the knowledge requirement for active inducement . . . 21 even in the absence of actual knowledge.” Warsaw Orthopedic, Inc. v. NuVasive, Inc., 22 824 F.3d 1344, 1347 (Fed. Cir. 2016) (citing Global-Tech, 563 U.S. at 769). “Evidence ORDER - 12 1 of active steps taken to encourage direct infringement such as advertising an infringing 2 use or instructing how to engage in an infringing use show an affirmative intent that the 3 product be used to infringe.” GlaxoSmithKline LLC v. Teva Pharms. USA, Inc., 7 F.4th 4 1320, 1333 (Fed. Cir. 2021) (quoting Metro-Goldwyn-Mayer Studios Inc. v. Grokster, 5 Ltd., 545 U.S. 913, 936 (2005)). 6 Barnhart argues that the court must dismiss Mr. Schuyleman’s induced 7 infringement claim because the complaint “provides no facts sufficient to plausibly 8 demonstrate Barnhart’s intent to encourage infringement by third parties.” (Mot. at 21-24 9 (internal edits omitted).) Again, the court disagrees with Barnhart. First, Mr. 10 Schuyleman has plausibly alleged that Barnhart’s Accused Products directly infringe the 11 ’244 Patent. (See supra Section III.B.1.) Second, Mr. Schuyleman satisfies the 12 knowledge requirement by alleging that Barnhart was on notice of—and thus was either 13 aware of or willfully blind to—the Accused Products’ infringement of the ’244 Patent as 14 early as December 9, 2022, when Mr. Schuyleman sent his letter to Barnhart. (SAC 15 ¶¶ 29-30; see also id. ¶ 31 (alleging that Barnhart responded to the letter on December 16 19, 2022).) Third, Mr. Schuyleman satisfies the affirmative intent element by alleging 17 that Barnhart’s website “provides information and videos regarding the operation and 18 usage of the Accused Products” and by providing direct links to those videos. (Id. ¶¶ 21, 19 27 (first quoting http://www.barnhartcrane.com/videos/148/ (video on Barnhart’s website 20 describing features and benefits of the MOCCS); and then quoting 21 http://www.barnhartcrane.com/videos/mini-moccs-animation/ (video describing features 22 and benefits of the Mini-MOCCS)), 28 (quoting ORDER - 13 1 http://www.barnhartcrane.com/videos/132/ (video describing features and benefits of the 2 Mega-MOCCS)).) These videos “advertis[e] an infringing use” of the Accused Products 3 and thus support the inference that Barnhart “took active steps to encourage direct 4 infringement” and had “an affirmative intent that the product[s] be used to infringe.” 5 GlaxoSmithKline, 7 F.4th at 1333 (quoting Metro-Goldwyn-Mayer Studios, 545 U.S. at 6 936). 7 Barnhart asserts, citing CyWee Group Ltd. v. HTC Corp., 312 F. Supp. 3d 974, 8 979 (W.D. Wash. 2018), that Mr. Schuyleman’s allegations regarding Barnhart’s website 9 and marketing videos are insufficient to satisfy the specific intent requirement. (Mot. at 10 22-23; Reply at 9-10.) In that case, however, the plaintiff “offer[ed] no specific details 11 about those promotional and instructional materials” and thus left the court “without any 12 inkling as to what [the defendant] asserted in those materials.” CyWee Grp., 312 F. Supp. 13 3d at 980. In contrast, Mr. Schuyleman includes screenshots of, quotes from, and links to 14 Barnhart’s website and videos in his complaint. (See, e.g., SAC ¶¶ 22-28.) As a result, 15 the court can “discern whether [Barnhart] ‘touted the benefits of the accused products in 16 ways that track the asserted patents’” in its videos and can reasonably infer that Barnhart 17 had an affirmative intent to induce infringement. CyWee Grp., 312 F. Supp. 3d at 980 18 (quoting Memory Integrity, LLC v. Intel Corp., 144 F. Supp. 3d 1185, 1195-96 (D. Or. 19 2015)). Because Mr. Schuyleman has plausibly alleged that Barnhart induced 20 infringement of the ’244 Patent, the court denies Barnhart’s motion to dismiss this claim. 21 // 22 // ORDER - 14 1 3. Contributory Infringement 2 “Contributory infringement occurs if a party sells or offers to sell, a material or 3 apparatus for use in practicing a patented process, and that ‘material or apparatus’ is 4 material to practicing the invention, has no substantial non-infringing uses, and is known 5 by the party ‘to be especially made or especially adapted for use in an infringement of 6 such patent.’” In re Bill of Lading, 681 F.3d at 1337 (quoting 35 U.S.C. § 271(c)). 7 Barnhart argues that this claim must be dismissed because Mr. Schuyleman has 8 failed to plead facts supporting the elements of the claim. (Mot. at 25-26.) The court 9 agrees with Barnhart that Mr. Schuyleman has failed to plead facts supporting the 10 materiality, non-infringing use, and knowledge elements of a contributory infringement 11 claim. Mr. Schuyleman alleges in Paragraph 40 of his second amended complaint that 12 Barnhart has contributed to infringement by third parties 13 14 15 by making, selling and/or offering for sale in the United States, and/or importing into the United States, the Accused Products, knowing that those products constitute a material part of the inventions of the ’244 Patent, knowing that those products are especially made or adapted to infringe the ’244 Patent, and knowing that those products are not staple articles of commerce suitable for non-infringing use. 16 (SAC ¶ 40.) In his response to Barnhart’s motion, Mr. Schuyleman asserts that 17 Paragraphs 23 through 25 “plausibly pled . . . that the Accused Products may be used by 18 Defendants’ customers as part of a system that includes a hoisting apparatus such as a 19 crane . . . [and] that the Accused Products constitute a material part of practicing the ’244 20 Patent.” (Resp. at 19.) These paragraphs, however, state only that the Accused Products 21 “have a slidable boom that can slide between a retracted position and an extended 22 ORDER - 15 1 position, confined by a front mount and a rear mount fixed with an offset hoisting 2 apparatus” and show pictures of the boom in both positions. (SAC ¶¶ 23-25.) They say 3 nothing about materiality. He also asserts that Paragraphs 29 through 31 and 42, which 4 describe the December 2022 correspondence between Mr. Schuyleman and Barnhart, 5 plausibly allege that Barnhart “knew the Accused Products were made to be part of the 6 infringing system.” (Resp. at 19 (citing SAC ¶¶ 29-31, 42).) Although the 7 correspondence supports the inference that Barnhart was on notice that its products 8 infringed the ’244 Patent by December 2022 (see supra Section III.B.1), nothing in the 9 cited paragraphs suggests that Barnhart knew the Accused Products “to be especially 10 made or especially adapted for use in an infringement of such patent.” In re Bill of 11 Lading, 681 F.3d at 1337. Finally, Mr. Schuyleman points only to the conclusory 12 statement in Paragraph 40 to support his argument that he “plausibly pled” that “the 13 Accused Products have no substantial non-infringing use.” (Resp. at 19 (citing SAC 14 ¶ 40).) Because Mr. Schuyleman has not pleaded “sufficient factual matter, accepted as 15 true, to ‘state a claim to relief that is plausible on its face,’” Iqbal, 556 U.S. at 678 16 (quoting Twombly, 550 U.S. at 570), the court grants Barnhart’s motion to dismiss Mr. 17 Schuyleman’s contributory infringement claim. 18 4. 19 Mr. Schuyleman argues in depth that the court should grant him leave to amend Leave to Amend 20 any claims that the court dismisses. (Resp. at 20-25.) On a Rule 12(b)(6) motion, “a 21 district court should grant leave to amend even if no request to amend the pleading was 22 made, unless it determines that the pleading could not possibly be cured by the allegation ORDER - 16 1 of other facts.” Cook, Perkiss & Liehe, Inc. v. N. Cal. Collection Serv., Inc., 911 F.2d 2 242, 247 (9th Cir. 1990). A court, however, has discretion to deny leave to amend on the 3 basis of “bad faith, undue delay, prejudice to the opposing party, futility of amendment, 4 and whether the plaintiff has previously amended the complaint.” Johnson v. Buckley, 5 356 F.3d 1067, 1077 (9th Cir. 2004). Although Mr. Schuyleman has already amended 6 his complaint twice, this order is the court’s first opportunity to consider his contributory 7 infringement claim and the court is not convinced that amendment of that claim would be 8 futile. Furthermore, the court sees no grounds at this time for a finding of bad faith, 9 undue delay, or prejudice. Accordingly, the court grants Mr. Schuyleman leave to amend 10 his contributory infringement claim. 11 IV. CONCLUSION 12 For the foregoing reasons, the court GRANTS in part and DENIES in part 13 Barnhart’s motion to dismiss Mr. Schuyleman’s second amended complaint (Dkt. # 32). 14 The court GRANTS Barnhart’s motion to dismiss Mr. Schuyleman’s contributory 15 infringement claim and DISMISSES that claim without prejudice and with leave to 16 amend. Mr. Schuyleman shall file his amended complaint, if any, by no later than 17 December 18, 2023. 18 Dated this 8th day of December, 2023. 20 A 21 JAMES L. ROBART United States District Judge 19 22 ORDER - 17
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