United States District Court, W.D. Texas, Austin Division
PITMAN UNITED STATES DISTRICT JUDGE.
the Court is Defendant Dell, Inc.'s (“Dell”)
Partial Motion to Dismiss for Failure to State a Claim. (Dkt.
19). In its motion, Dell asks the Court to dismiss Plaintiff
Iron Oak Technologies, LLC's (“Iron Oak”)
claims for contributory patent infringement. (Id. at
5). Iron Oak responded by filing an amended complaint.
(See Resp. Mot. Dismiss, Dkt. 23, at 2; Second Am.
Compl., Dkt. 24). Having reviewed the parties' filings
and the relevant law, the Court finds that Dell's motion
should be granted.
Oak filed a complaint on October 18, 2017, in which it
alleges that Dell directly and indirectly infringes United
States Patent Nos. 5, 699, 275 (the “‘275
patent”) and 5, 966, 658 (the “‘658
patent”). (Compl., Dkt. 1). Dell responded to Iron
Oak's original complaint with a partial motion to dismiss
pertaining to Iron Oak's induced and contributory
infringement claims. (See First Mot. Dismiss, Dkt.
10, at 7). Iron Oak responded to that motion by amending its
complaint as a matter of course under Federal Rule of Civil
Procedure 15(a)(1)(B). (See Resp. First Mot.
Dismiss, Dkt. 14, at 1; Am. Compl., Dkt. 15). Like the
original complaint, the First Amended Complaint alleged
claims for direct, induced, and contributory infringement of
two patents against Dell. (Am. Compl., Dkt. 15).
then filed another partial motion to dismiss under Federal
Rule of Civil Procedure 12(b)(6), this time pertaining only
to the contributory infringement claims in the amended
complaint. (See Second Mot. Dismiss, Dkt. 19, at 5).
Iron Oak responded by asserting that Rule 15(a)(1)(B)
permitted it to amend its complaint again as a matter of
course and filing another amended complaint. (Resp. Mot.
Dismiss, Dkt. 23, at 2; Second Am. Compl., Dkt. 24).
SECOND AMENDED COMPLAINT
Rule of Civil Procedure 15(a)(1) provides that a party
“may amend its pleadings once as a matter of course . .
. .” Fed.R.Civ.P. 15(a)(1). Rule 15 “allows a
party to amend his pleading only once as a matter of
course.” Carson v. Polley, 689 F.2d 562, 583
(5th Cir. 1982). After amending once as a matter of course, a
party “may amend . . . only with the opposing
party's written consent or the court's leave.”
Oak amended once as a matter of course when it filed its
First Amended Complaint. (Dkt. 15). Having done so, it may
only amend its complaint again upon receiving the opposing
party's written consent or the Court's leave. Because
Iron Oak obtained neither before filing its Second Amended
Complaint, the Court must strike that pleading. The Court
will consider Iron Oak's response to Dell's second
motion to dismiss as a request for leave to file a second
amended complaint. (Resp. Second Mot. Dismiss, Dkt. 23, at
MOTION TO DISMISS
Legal Standard In patent cases, regional circuit law
applies to motions to dismiss under Federal Rule of Civil
Procedure 12(b)(6). McZeal v. Sprint Nextel Corp.,
501 F.3d 1354, 1355-56 (Fed. Cir. 2007). Although Form 18 of
the Federal Rules of Civil Procedure is relevant to the
sufficiency with which a direct infringement claim is
pleaded, K-Tech Telecommunications, Inc. v. Time Warner
Cable, Inc., 714 F.3d 1277, 1284 (Fed. Cir. 2013), the
general principles of Bell Atl. Corp. v. Twombly,
550 U.S. 544 (2007), and Ashcroft v. Iqbal, 556 U.S.
662 (2009), must be applied to indirect infringement claims.
In re Bill of Lading Transmission & Processing Sys.
Patent Litig., 681 F.3d 1323, 1336 (Fed. Cir. 2012).
Accordingly, Iron Oak's First Amended Complaint must
plead “enough factual matter” that, when taken as
true, “state[s] a claim to relief that is plausible on
its face.” Twombly, 550 U.S. at 570. This
plausibility standard is met when “the plaintiff pleads
factual content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct
alleged.” Iqbal, 556 U.S. at 678. Although the
Court “accepts all well-pleaded facts as true”
and “view[s] them in the light most favorable to the
plaintiff, ” In re Katrina Canal Breaches
Litig., 495 F.3d 191, 205 (5th Cir. 2007) (citation and
internal quotation marks omitted), “[t]he tenet that a
court must accept as true all of the allegations contained in
a complaint is inapplicable to legal conclusions.”
Iqbal, 556 U.S. at 678. “Threadbare recitals
of the elements of a cause of action, supported by mere
conclusory statements, do not suffice.” Id.
argues that Iron Oak's contributory infringement claims
should be dismissed because Iron Oak fails to plead facts
that would plausibly establish several elements of a
contributory infringement claim under 35 U.S.C. §
271(c). (Second Mot. Dismiss, Dkt. 19, at 2-5). A party is
liable for contributory infringement if it (1) “offers
to sell or sells a component of a patented machine . . . or a
material or apparatus for use in practicing a patented
process” that (2) constitutes “a material part of
the invention, ” if (3) the party knows the material or
apparatus “to be especially made or especially adapted
for use in an infringement of such patent, and not a staple
article or commodity of commerce suitable for substantial
noninfringing use.” 35 U.S.C. § 271(c); see
also Cross Med. Prods., Inc. v. Medtronic Sofamor Danek,
Inc., 424 F.3d 1293, 1312 (Fed. Cir. 2005) (“In
order to succeed on a claim of contributory infringement, in
addition to proving an act of direct infringement, plaintiff
must show that defendant knew that the combination for which
its components were especially made was both patented and
infringing and that defendant's components have no
substantial non-infringing uses.”) (citation and
internal quotation marks omitted). Dell argues that Iron
Oak's amended complaint does not identify the
“component” that contributes to the infringement
of its patents and that it makes no more than conclusory
allegations that the unspecified component(s) have no
substantial noninfringing uses. (Second Mot. Dismiss, Dkt.
19, at 3-4).
Court agrees with each of Dell's positions. First, Iron
Oak's amended complaint does not identify the component,
material, or apparatus that allegedly contributes to the
direct infringement of either patent. (Am. Compl., Dkt. 15,
at 4, 7). Second, Iron Oak's conclusory allegation that
“[t]he components provided by [Dell] are not staple
articles of commerce suitable for substantial non-fringing
use, ” (id.), is no more than a
“threadbare recital” of one of the elements of a
contributory infringement claim. Iqbal, 556 U.S. at
678. Because the amended complaint fails to allege facts
that, if true, would state a plausible claim for relief, the
Court will dismiss Iron Oak's contributory infringement
claim for each patent.
Oak has requested leave to amend. (Resp. Second Mot. Dismiss,
Dkt. 23, at 2). Rule 15 favors giving leave to amend, and so
the Court will permit Iron Oak to amend its complaint again.
See Lyn-Lea Travel Corp. v. Am. Airlines, 283 F.3d
282, 286 (5th Cir. 2002) (“[Rule] 15(a) requires the
trial court to grant leave to amend freely, and the language
of this rule ...