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Samy Gharb v. Mitsubishi Electric Automation

June 4, 2012


The opinion of the court was delivered by: Judge Edmond E. Chang


Plaintiff Samy Gharb filed a first amended complaint against Defendant Mitsubishi Electric Automation, Inc. (for short, Mitsubishi Automation) claiming infringement on his patent, U.S. Patent No. 6,552,654.*fn1 R. 15. Mitsubishi Automation moves to dismiss the first amended complaint pursuant to Federal Rule of Civil Procedure 12(b)(6). R. 23. For reasons explained more fully below, Mitsubishi Automation's motion is granted.


In evaluating a motion to dismiss, the Court must accept as true the complaint's factual allegations. Gharb is the inventor and owner of U.S. Patent No. 6,552,654, entitled "Security System with a Mobile Telephone." R. 15 (Am. Compl.) ¶ 7. The '654 patent was approved in 2003, and expired in 2007. Id.*fn2 In 2005, Gharb met with representatives from Mitsubishi Electric Corporation (to distinguish from the named defendant, the opinion will refer to this company as "Mitsubishi Electric")*fn3 about executing a license agreement for Gharb's security system technology. Id. ¶ 8. The parties discussed Gharb's patents and pending patent applications; however, a license agreement was not reached. Id. ¶¶ 8, 11.

Gharb alleges that Mitsubishi Automation manufactures, imports, distributes, and/or sells security systems with mobile telephones under the name or model designation of "ALPHA Family." Id. ¶ 6. Gharb contends that "[c]ertain of the ALPHA Family security systems devices fall within the scope of protection of at least claim 1 of the '654 patent, literally and/or under the Doctrine of Equivalents." Id. ¶ 9. According to Gharb, Mitsubishi Automation's ALPHA Family security systems use programmable logic controllers that infringe claim 1 of the '654 patent. Id. ¶ 6. Gharb also alleges that Mitsubishi Automation indirectly infringed the '654 patent by "aiding and causing end users of ALPHA Family security systems devices to use such devices with a mobile communications apparatus within the United States, and aiding and causing the distributors and/or dealers of Mitsubishi Automation to sell and offer to sell ALPHA Family security systems in combination with, or with instructions for a user to purchase, a mobile communications device within the United States." Id. ¶ 10.

Gharb accuses Mitsubishi Automation of direct, contributory, and induced patent infringement under 35 U.S.C. § 271. Id. ¶¶ 9-10. Mitsubishi Automation moves to dismiss Gharb's complaint for failure to state a claim.


Although this patent case is governed by the appellate law of the Federal Circuit, the Court applies the procedural law of the Seventh Circuit. See CoreBrace LLC v. Star v. Seismic LLC, 566 F.3d 1069, 1072 (Fed. Cir. 2009) ("The question whether a Rule 12(b)(6) motion was properly granted is purely a procedural question not pertaining to patent law, to which this court applies the rule of the regional circuit.") (internal quotation omitted); McZeal v. Spring Nextel Corp., 501 F.3d 1354, 1355-56 (Fed. Cir. 2007).

Under Federal Rule of Civil Procedure 8(a)(2), a complaint need only include "a short and plain statement of the claim showing that the pleader is entitled to relief." Fed. R. Civ. P. 8(a)(2). But only certain allegations-factual ones-count toward assessing whether a complaint states a plausible claim. A "complaint must 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. v. Twombly, 550 U.S. 544, 570 (2007)). Determining plausibility is a "context-specific task that requires the reviewing court to draw on its judicial experience and common sense." Id. at 679. When ruling on a defendant's motion to dismiss pursuant to Rule 12(b)(6), the Court must accept the plaintiff's factual allegations as true and draw reasonable inferences in the plaintiff's favor. McGowan v. Hulick, 612 F.3d 636, 637 (7th Cir. 2010).


Mitsubishi Automation argues that Gharb's first amended complaint is conclusory and does not meet the standards of Iqbal and Twombly. R. 24 (Def.'s Br.) at 1. Thus, Mitsubishi Automation contends that all of Gharb's alleged infringement claims must be dismissed.

A. Direct Infringement

Direct infringement claims are governed by 35 U.S.C. § 271(a), which states, "whoever without authority makes, uses, offers to sell, or sells any patented invention . . . during the term of the patent therefor, infringes the patent." Form 18 in the Appendix to the Federal Rules of Civil Procedure provides a sample complaint for direct patent infringement. See also Fed. R. Civ. P. 84 ("The forms in the Appendix suffice under these rules and illustrate the simplicity and brevity that these rules contemplate."). The form instructs a plaintiff to include: (1) an allegation of jurisdiction; (2) a statement that the plaintiff owns the patent; (3) a statement that defendant has been infringing the patent "by making, selling, and using [the device] embodying the patent;" (4) a statement that the plaintiff has given the defendant notice of its infringement; and (5) a demand for an injunction and damages. McZeal, 501 F.3d at 1357.

Here, Mitsubishi Automation argues that Gharb fails to identify which of Mitsubishi Automation's products allegedly infringe ...

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