United States District Court, D. Delaware
R. FALLON, UNITED STATES MAGISTRATE JUDGE.
Wilmington this 21st day of
November, 2017, the court having considered
the parties' briefing on defendant lByOne Products
Inc.'s ("lByOne") motion to dismiss for failure
to state a claim pursuant to Federal Rule of Civil Procedure
12(b)(6) (D.I. 9; D.I. 10; D.I. 11; D.I. 13; D.I. 15), IT IS
HEREBY ORDERED THAT the motion to dismiss (D.I. 9) is denied
as moot for the reasons set forth below.
Telebrands Corp. ("Telebrands") filed this action
for patent infringement on July 21, 2017, alleging
infringement of U.S. Patent Nos. 9, 546, 775 ("the
'775 patent") and 9, 562, 673 ("the '673
patent") (together, the "patents-in-suit").
(D.I. 1) Telebrands is a direct marketing company which
markets and sells a variety of consumer products through
direct response advertising and national retail stores.
(Id. at ¶ 7) Telebrands developed a line of
decorative lighting products marketed and sold under the
trademark Star Shower®, which it introduced during the
2015-2016 holiday season. (Id. at¶8) Telebrands
subsequently introduced the Star Shower Motion™
product, which introduced the ability to move the points of
light in patterns, and the Star Shower Patriot™
product, which introduced new colored lights.
(Id.) The patents-in-suit are assigned to Telebrands
and cover Telebrands' Star Shower® technology.
(Id. at ¶¶ 11-14)
Telebrands accuses lByOne of making, using selling, offering
for sale, and/or importing into the United States infringing
decorative lighting products under the brand Garden Laser
Light Motion and titled "lByOne Outdoor Laser Lights for
Christmas" and/or "lByOne Magical Laser Light with
Green Christmas and Red Star Patterns" (the
"Accused Product"). (Id. at ¶ 15)
Specifically, Telebrands alleges that the Accused Product
infringes claim 1 of the '775 patent because it includes
a first laser light source which generates first light, a
second laser light source which generates a second light, and
a motion assembly which includes an articulating optical
element disposed in the path of the light generated by the
first and second laser light sources and a motor.
(Id. at ¶ 16) Telebrands contends that the
Accused Product infringes claim 1 of the '673 patent
because it includes a first housing coupled with screws to a
second housing to form a recess designed to receive and hold
a tube-shaped geared member in a substantially fixed
position. (Mat ¶17)
lByOne filed the pending motion to dismiss on August 15,
2017. (D.I. 9) On November 17, 2017, while its motion to
dismiss was still pending before the court, lByOne filed an
answer, affirmative defenses, and counterclaims. (D.I. 16) By
way of its counterclaims, lByOne seeks declaratory relief
regarding the invalidity and non-infringement of the
patents-in-suit as well as U.S. Patent No. 9, 752, 761
("the '761 patent"), which issued on September
5, 2017. (Id. at ¶19)
May 11, 2017, Telebrands filed a lawsuit against lByOne in
the United States District Court for the District of New
Jersey ("the New Jersey Action") alleging that the
Accused Product infringes the '775 patent and the
'673 patent. (Id. at ¶ 20) lByOne responded
to the complaint by filing a motion to dismiss for improper
venue pursuant to Federal Rule of Civil Procedure 12(b)(3),
and a motion to dismiss for failure to satisfy the
"plausibility" pleading requirement under Federal
Rule of Civil Procedure 12(b)(6). (D.L 10 at 1) On July 21,
2017, Telebrands agreed to voluntarily dismiss the New Jersey
Action without prejudice. (D.I. 11, Ex. 2) The court dismissed
the New Jersey Action on July 25, 2017. (D.I. 11, Ex. 3)
12(b)(6) permits a party to move to dismiss a complaint for
failure to state a claim upon which relief can be granted.
Fed.R.Civ.P. 12(b)(6). When considering a Rule 12(b)(6)
motion to dismiss, the court must accept as true all factual
allegations in the complaint and view them in the light most
favorable to the plaintiff. Umland v. Planco Fin.
Servs., 542 F.3d 59, 64 (3d Cir. 2008). To state a claim
upon which relief can be granted pursuant to Rule 12(b)(6), a
complaint must contain a "short and plain statement of
the claim showing that the pleader is entitled to
relief." Fed.R.Civ.P. 8(a)(2). Although detailed factual
allegations are not required, the complaint must set forth
sufficient factual matter, accepted as true, to "state a
claim to relief that is plausible on its face." Bell
Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007); see
also Ashcroft v. Iqbal, 556 U.S. 662, 663 (2009). A
claim is facially plausible when the factual allegations
allow the court to draw the reasonable inference that the
defendant is liable for the misconduct alleged.
Iqbal, 556 U.S. at 663; Twombly, 550 U.S.
of the subsequent filing of its answer, affirmative defenses,
and counterclaims, lByOne's pending motion to dismiss is
denied as moot. "A defendant is not required to file an
answer until [the] court disposes of the motion to
dismiss." Smith v. Bank of Am., N.A., 2014 WL
897032, at *9 (M.D. Fla. Mar. 6, 2014) (citing Lockwood
v. Beasley, 211 Fed.Appx. 873, 876 (11th Cir. 2006)).
When an answer is filed prior to the resolution of a motion
to dismiss, the motion to dismiss becomes moot. See
Veltre v. Sliders Seaside Grill, Inc., 2016 WL 524658,
at *1 (M.D. Fla. Feb. 10, 2016) (dismissing as moot a motion
to dismiss when the defendant filed an answer while a Report
and Recommendation on the motion to dismiss was pending).
"A motion to dismiss challenges the sufficiency of the
allegations within the complaint; an answer admits or denies
those allegations and raises any available affirmative
defenses." Brisk v. City of Miami Beach, Fla.,
709F. Supp. 1146, 1147 (S.D. Fla. 1989).
Rule 12 motion is a response filed in lieu of an answer. In
this instance, the motion asserts pleading deficiencies,
namely, that substantive details are lacking to show how the
Accused Product allegedly infringes the recited claims of the
patents-in-suit. The very act of answering the complaint
defeats the argument that the complaint is too thin to
provide adequate notice of the claims and permit the
defendant to respond in a meaningful way. Consequently,
lByOne's motion to dismiss is denied as moot.