United States District Court, District of Delaware
REPORT AND RECOMMENDATION
Christopher J. Burke UNITED STATES MAGISTRATE JUDGE
Presently pending in these three related cases are Defendants Rockstar Games, Inc. ("Rockstar"), Take-Two Interactive Software, Inc. ("Take-Two") and 2K Games, Inc.'s ("2K") (collectively, "Defendants") motions to dismiss Plaintiff McRo, Inc., d/b/a Planet Blue's ("Plaintiff or "McRo") direct, induced and willful infringement claims against them, pursuant to Federal Rule of Civil Procedure 12(b)(6). (D.I. 18; Civil Action No. 12-1513-LPS-CJB, D.I. 17; Civil Action No. 12-1519-LPS-CJB, D.I. 17) For the reasons that follow, the Court recommends that Defendants' motions be GRANTED-IN-PART AND DENIED-IN-PART.
Plaintiff commenced these actions on November 21, 2012, alleging that Defendants infringed certain claims of two of its patents, U.S. Patent No. 6, 307, 576 ("the '576 patent") and 6, 611, 278 ("the '278 patent"). (D.I. 1) Before Defendants answered, Plaintiffs filed a First Amended Complaint in all three actions, and in the Take-Two action, thereafter filed a Second Amended Complaint. (D.I. 4, 16; Civil Action No. 12-1513-LPS-CJB, D.I. 15; Civil Action No. 12-1519-LPS-CJB, D.I. 15) In the complaints at issue here, Plaintiff alleges direct infringement (pursuant to 35 U.S.C. §§ 271(a) and 271(g)), induced infringement, and willful infringement of both the '576 and '278 patents by some or all Defendants. (D.I. 16 at
¶¶ 14, 15, 19, 20).
Defendants thereafter each filed the motions to dismiss, pursuant to Rule 12(b)(6). On July 31, 2013, these cases were referred to the Court by Judge Leonard P. Stark to hear and resolve all pretrial matters, up to and including the resolution of case-dispositive motions. (D.I. 25; Civil Action No. 12-1513-LPS-CJB, D.I. 26; Civil Action No. 12-1519-LPS-CJB, D.I. 24)
Defendants' motions allege that Plaintiff has insufficiently pleaded claims of direct and induced infringement (as to all three Defendants) and willful infringement (as to Rockstar and Take-Two). The Court will consider these arguments in turn.
A. Direct Infringement
To properly plead a claim of direct infringement, a complaint must at least comply with Form 18 of the Federal Rules of Civil Procedure. See K-Tech Telecomms., Inc. v. Time Warner Cable, Inc., 714 F.3d 1277, 1283-84 (Fed. Cir. 2013) ("[T]o the extent any conflict exists between Twombly (and its progeny) and the Forms regarding pleadings requirements, the Forms control."); Clouding IP, LLC v. Amazon.com, Inc., C.A. Nos. 12-641-LPS, 12-642-LPS, 12-675- LPS, 2013 WL 2293452, at *2 (D. Del. May 24, 2013). Form 18 provides the following exemplary language relating to the required allegation of infringement:
3. The defendant has infringed and is still infringing the Letters Patent by making, selling, and using electric motors that embody the patented invention, and the defendant will continue to do so unless enjoined by this court.
Fed. R. Civ. P., App. of Forms, Form 18 (emphasis in original). Thus, as a general matter, "Form 18 does not require [plaintiff] to specify 'what functionality infringed, or any facts that show how [defendant] performs even one step of a claimed method.'" Clouding IP, 2013 WL 2293452, at *2 (citation omitted). And with regard to identification of accused products, "Form 18 requires only identification of a general category of products, for example 'electric motors[, ]"' id., or a general identification of an allegedly infringing method, Gammino v. American Tel. & Tel Co., Civ. No. 12-666-LPS, 2013 WL 6154569, at *3 (D. Del. Nov. 22, 2013). In the end, "[t]he touchstones of an appropriate analysis under Form 18 are notice and facial plausibility" and while "these requirements serve as a bar against frivolous pleading, it is not an extraordinarily high one." K-Tech Telecomms., 714 F.3d at 1286 (internal citations omitted).
With regard to its allegations of direct infringement, Plaintiffs complaints allege:
Upon information and belief, [Defendant] has, as part of the development process for its computer and/or video games that include 3-dimensional animated characters, used and continues to use software processes in the United States for automatically adding lip-synchronization and facial expression to the animated characters using the phonetic structure of the words spoken by the characters and has made, used, offered to sell, sold, and/or imported, and continues to make, use, offer to sell, sell, and/or import, computer and/or video games created using those processes in the United States, including this judicial district. By using the aforementioned software processes, [Defendant] has directly infringed the [patent-in-suit] under 35 U.S.C. § 271(a), either literally or under the doctrine of equivalents. By using, offering to sell, selling, and/or importing computer ...