United States District Court, D. Delaware
before me is a motion to dismiss for failure to state a claim
under Fed.R.Civ.P. 12(b)(6) and lack of subject matter
jurisdiction under Fed.R.Civ.P. 12(b)(1) by Defendants Aurora
SFC Systems, Inc. and Agilent Technologies, Inc.
(collectively, "Defendants"). (D.I. 170). I have
considered the parties' briefing. (D.I. 171; D.I. 177;
D.I. 181). I held oral argument on July 10, 2017.
August 11, 2011, Plaintiff Waters Technologies Corp. filed
this action alleging that Defendant Aurora SFC Systems, Inc.
infringed U.S. Patent Nos. 6, 561, 767 (the '"767
patent") and 6, 648, 609 (the "'609
patent"). (D.I. 1). On January 25, 2013, Plaintiff
Waters filed an amended complaint adding Defendant Agilent to
the case. (D.I. 150). The amended complaint asserts the
following causes of action: (1) infringement of the '767
patent by Aurora, (2) infringement of the '609 patent by
Aurora, (3) infringement of the '767 patent by Agilent,
(4) infringement of the '609 patent by Agilent. (D.I.
19, 2016, the USPTO cancelled all claims of the '767
patent. (D.I. 171-1 at 3). On October 14, 2016, the USPTO
issued a inter partes reexamination certificate. The
inter partes reexamination certificate cancelled
claims 1, 2, 4, and 9-11 of the '609 patent; determined
that claims 3, 5, and 6 were patentable as amended;
determined that claims 7 and 8, as dependent on an amended
claim, were patentable; and added new claims 12 and 13 (the
"New Claims"). (D.I. 171-1 at 6). Amended claims 3,
5, 6, 7 and 8 (the "Amended Claims") include a
differential pressure transducer, a limitation that is at
least not expressly present in their respective original
claims. (Compare D.I. 171-1 at 6, with D.I.
150 at 35). The New Claims also include a differential
pressure transducer and the additional limitation
"wherein the flow stream comprises CO2." (D.I.
171-1 at 6). The CO2 limitation appeared in none of the
original claims. (Compare D.I. 171-1 at 6,
with D.I. 150 at 35). Original, and now cancelled,
claim 4 expressly contained the differential pressure
transducer limitation. (D.I. 150 at 35).
requires a complainant to provide "a short and plain
statement of the claim showing that the pleader is entitled
to relief" Fed.R.Civ.P. 8(a)(2). Rule 12(b)(6) allows
the accused party to bring a motion to dismiss the claim for
failing to meet this standard. A Rule 12(b)(6) motion may be
granted only if, accepting the well-pleaded allegations in
the complaint as true and viewing them in the light most
favorable to the complainant, a court concludes that those
allegations "could not raise a claim of entitlement to
relief." Bell Atl. Corp. v. Twombly, 550 U.S.
544, 558 (2007).
'detailed factual allegations' are not required, a
complaint must do more than simply provide 'labels and
conclusions' or 'a formulaic recitation of the
elements of a cause of action.'" Davis v.
Abington Mem 7 Hosp., 765 F.3d 236, 241 (3d
Cir. 2014) (quoting Twombly, 550 U.S. at 555). I am
"not required to credit bald assertions or legal
conclusions improperly alleged in the complaint." In
re Rockefeller Ctr. Props., Inc. Sec. Litig., 311 F.3d
198, 216 (3d Cir. 2002). A complaint may not be dismissed,
however, "for imperfect statement of the legal theory
supporting the claim asserted." See Johnson v. City
of Shelby, 135 S.Ct. 346, 346 (2014).
complainant must plead facts sufficient to show that a claim
has "substantive plausibility." Mat 347. That
plausibility must be found on the face of the complaint.
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). "A
claim has facial plausibility when the [complainant] pleads
factual content that allows the court to draw the reasonable
inference that the [accused] is liable for the misconduct
alleged." Id. Deciding whether a claim is
plausible will be a "context-specific task that requires
the reviewing court to draw on its judicial experience and
common sense." Id. at 679.
argue that the '767 claims should be dismissed because
the claims of the '767 patent were cancelled. Counts I
and III of the amended complaint are dismissed in light of
Plaintiffs stipulation. (D.I. 177 at p. 8).
argue that under either the first or second paragraph of 35
U.S.C. § 252, the '609 patent should be dismissed as
failing to state a claim under Rule 12(b)(6) and as moot
under Rule 12(b)(1).
language of 35 U.S.C. § 252 is as follows.
The surrender of the original patent shall take effect upon
the issue of the reissued patent, and every reissued patent
shall have the same effect and operation in law, on the trial
of actions for causes thereafter arising, as if the same had
been originally granted in such amended form, but in so far
as the claims of the original and reissued patents are
substantially identical, such surrender shall not affect any
action then pending nor abate any cause of action then
existing, and the reissued patent, to the extent that its
claims are substantially identical with the original patent,
shall constitute a continuation thereof and have effect
continuously from the date of the original patent.
A reissued patent shall not abridge or affect the right of
any person or that person's successors in business who,
prior to the grant of a reissue, made, purchased, offered to
sell, or used within the United States, or imported into the
United States, anything patented by the reissued patent, to
continue the use of, to offer to sell, or to sell to others
to be used, offered for sale, or sold, the specific thing so
made, purchased, offered for sale, used, or imported unless
the making, using, offering for sale, or selling of such
thing infringes a valid claim of the reissued patent which
was in the original patent. The court before which such
matter is in question may provide for the continued
manufacture, use, offer for sale, or sale of the thing made,
purchased, offered for sale, used, or imported as specified,
or for the manufacture, use, offer for sale, or sale in the
United States of which substantial preparation was made
before the grant of the reissue, and the court may also
provide for the continued practice of any process patented by
the reissue ...