United States District Court, D. Delaware
HONORABLE MARYELLEN NOREIKA UNITED STATES DISTRICT JUDGE
December 27, 2018, Magistrate Judge Fallon issued a Report
& Recommendation (D.I. 370, “the Report”)
granting-in-part and denying-in-part the motion (D.I. 131)
filed by defendants UPL, Ltd., Decco U.S. Post Harvest, Inc.,
Cerexagri, Inc., and Essentiv, LLC (collectively,
“Defendants”), which seeks to dismiss counts of
the First Amended Complaint (D.I. 106) pursuant to Rule
12(b)(6) of the Federal Rules of Civil Procedure. On January
10, 2019, Plaintiff AgroFresh Inc. (“Plaintiff”)
objected to the Report to the extent it recommended
dismissing the indirect patent infringement claims on the
grounds that (1) Plaintiff did not adequately plead an act of
direct infringement by a third-party customer necessary to
support induced and contributory infringement claims; and (2)
Plaintiff failed to sufficiently allege that the accused
product (TruPick) has no substantial non-infringing use
necessary to support a claim of contributory infringement.
(See D.I. 388 at 1). On January 24, 2019, Defendants
responded to Plaintiff's objections. (D.I. 403).
Court has reviewed the Report, Plaintiff's objections and
Defendants' responses thereto, and the Court has
considered de novo the objected-to portions of
Defendants' motion to dismiss and materials submitted
with the motion. For the reasons set forth below,
Plaintiff's objections are OVERRULED, the Report is
ADOPTED and Defendants' motion to dismiss is
GRANTED-IN-PART and DENIED-IN-PART.
Motion to Dismiss Pursuant to Rule 12(b)(6)
ruling on a motion to dismiss under Rule 12(b)(6), the Court
must accept all well-pleaded factual allegations in the
complaint as true and view them in the light most favorable
to the plaintiff. See Mayer v. Belichick, 605 F.3d
223, 229 (3d Cir. 2010); see also Phillips v. Cnty. of
Allegheny, 515 F.3d 224, 232-33 (3d Cir. 2008).
“[A] court need not ‘accept as true allegations
that contradict matters properly subject to judicial notice
or by exhibit,' such as the claims and the patent
specification.” Secured Mail Sols. LLC v. Universal
Wilde, Inc., 873 F.3d 905, 913 (Fed. Cir. 2017) (quoting
Anderson v. Kimberly-Clark Corp., 570 Fed.Appx. 927,
931 (Fed. Cir. 2014)). Nor is the Court required to accept as
true bald assertions, unsupported conclusions or unwarranted
inferences. See TriPlay, Inc. v. WhatsApp Inc., C.A.
No. 13-1703-LPS-CJB, 2018 WL 1479027, at *3 (D. Del. Mar. 27,
2018). Dismissal under Rule 12(b)(6) is only appropriate if a
complaint does not contain “sufficient factual matter,
accepted as true, to ‘state a claim to relief that is
plausible on its face.'” Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl.
Corp. v. Twombly, 550 U.S. 544, 570 (2007)); see
also Fowler v. UPMC Shadyside, 578 F.3d 203, 210 (3d
Cir. 2009). This plausibility standard obligates a plaintiff
to provide “more than labels and conclusions, and a
formulaic recitation of the elements of a cause of
action.” Twombly, 550 U.S. at 555. Instead,
the pleadings must provide sufficient factual allegations to
allow the Court to “draw the reasonable inference that
the defendant is liable for the misconduct alleged.”
Iqbal, 506 U.S. at 678.
infringement under § 271(b) requires that “the
alleged inducer knew of the patent, knowingly induced the
infringing acts, and possessed a specific intent to encourage
another's infringement of the patent.” Vita-Mix
Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1328 (Fed.
Cir. 2009). To give rise to inducement liability, the accused
infringer must know that the induced acts constitute
infringement of another's patent. Global-Tech
Appliances, Inc. v. SEB S.A., 563 U.S. 754, 766 (2011).
Therefore, to state a claim of inducement sufficient to
withstand a motion to dismiss, a plaintiff must plead facts
that plausibly support an inference that the accused inducer
“specifically intended [another] to infringe the
[patent] and knew that the [induced] acts constituted
infringement.” In re Bill of Lading Transmission
and Processing Sys. Patent Litigation, 681 F.3d 1323,
1339 (Fed. Cir. 2012). A plaintiff must also plead facts that
support an inference that an underlying act of direct
infringement has occurred. See Id. at 1336; see
also Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d
1311, 1326 (Fed. Cir. 2004) (“There can be no
inducement or contributory infringement without an underlying
act of direct infringement.”).
infringement imposes liability on one who embodies in a
non-staple device the heart of a patented process and
supplies the device to others to complete the process and
appropriate the benefit of the patented invention.”
Vita-Mix, 581 F.3d at 1327. To state a claim for
contributory infringement, a plaintiff must plausibly allege
that an infringer sells, offers to sell or imports into the
United States a component of an infringing product
“knowing [the component] 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 Bill of Lading, 681 F.3d at 1337.
As with induced infringement, a claim for contributory
infringement must also include facts that support an
inference that an underlying act of direct infringement has
occurred, and there must be allegations of the requisite
knowledge of the patent-in-suit at the time of infringement.
See Linear Tech. Corp. 379 F.3d at 1326;
Mallinckrodt, Inc. v. E-Z-Em Inc., 670 F.Supp.2d
349, 355 (D. Del. 2009).
Plaintiff's Allegations of Inducing Infringement
Report found that the First Amended Complaint
“adequately pleads specific intent by [Defendants] to
induce infringement” but recommended dismissing the
inducement claims because of “insufficient allegations
of direct infringement by [Defendants'] customers.”
(D.I. 370 at 11-12). The Report also recommended dismissing the
claims of contributory infringement because of the
insufficient allegations of direct infringement, and it also
recommended dismissing the contributory infringement claims
because the First Amended Complaint “fails to
sufficiently allege that TruPick has no substantial
non-infringing use.” (Id. at 12).
inducement, Plaintiff objects, asserting that its First
Amended Complaint “is full of allegations of underlying
direct infringement. The counts themselves state that the
Decco Defendants ‘have actively and specifically
intended to induce third party customers to
infringe.'” (D.I. 388 at 2 (quoting D.I. 106