United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION AND ORDER
E. Bucklo United States District Judge
Marposs Società per Azioni (“Marposs
Italy”) and Marposs Corporation (“Marposs
US”) (Marposs Italy and Marposs U.S. together,
“Marposs”) have sued defendants Jenoptik
Automotive North America, LLC (“JANA”) and
Jenoptik Industrial Metrology Germany Gmbh
(“JIMG”) (JANA and JIMG together,
“Jenoptik, ” or “defendants”) for
patent infringement in violation of 35 U.S.C. § 271. The
defendants have moved to dismiss Marposs's complaint. For
the reasons discussed below, the motion is
is a developer of technology used to measure grinding
machinery and other devices used in workshop environments. On
October 9, 2001, Marposs obtained U.S. Patent No. 6, 298, 571
(“the ‘571 Patent”) for a device invented
by two of its employees for measuring the dimensions of
cylindrical parts. According to Marposs, this represented a
significant technological advance, allowing measurements to
be taken more efficiently and accurately.
complaint alleges that at some point prior to June 2001,
Marposs learned that Etamic SA (“Etamic”), a
predecessor in interest to Jenoptik, had obtained U.S. Patent
No. 6, 088, 924 (“the ‘924 Patent”),
covering the same invention. Marposs initiated an
interference proceeding before the U.S. Patent and Trademark
Office (USPTO) and ultimately prevailed. As a result,
Etamic's ‘924 Patent was canceled and, on October
27, 2009, Marposs was awarded U.S. Patent No. 7, 607, 239
(“the ‘239 Patent”).
subsequently obtained two additional patents relating to
similar inventions. On October 16, 2012, it obtained U.S.
Patent No. 8, 286, 361 (“the ‘361
Patent”); and on March 11, 2014, it obtained U.S.
Patent No. 8, 667, 700 (“the ‘700
Patent”).All four of the patents -- the ‘571
Patent, the ‘239 Patent, the ‘361 Patent, and the
‘700 Patent -- are incorporated in a device
manufactured and distributed by Marposs called the
“Fenar L In-Process Gauging System for
Crankshafts” (the “Fenar L
to Marposs, the defendants developed a device --the DF500 --
that infringes the patents-in-suit. Marposs alleges that the
defendants displayed the DF500 at the 2010 International
Manufacturing Trade Show (“IMTS”) in Chicago.
After the show, Marposs contacted Jenoptik, and Jenoptik
agreed to cease offering the DF500 for sale in the U.S.
Jenoptik also modified its website to indicate that the
device was not for sale in the U.S.
Marposs alleges, the defendants again used the DF500 at the
2014 IMTS. According to the complaint, the defendants not
only displayed the device at the show but also demonstrated
its operation to potential customers. Following the show,
Marposs contacted Jenoptik again. It is unclear how, if at
all, Jenoptik responded to the communication.
further problems arose in connection with the DF500 until the
defendants again “engaged in marketing
activities” in connection with the DF500 at the 2016
IMTS. In addition, in March 2016, Fives Landis Corp. and
Fives Landis Ltd. (“Fives Landis”), a
manufacturer of grinding machines, issued a request for
proposal to Marposs to supply gauging devices. According to
the complaint, Jenoptik also made a presentation to Fives
Landis featuring the DF500. Marposs alleges that Jenoptik
offered to sell the DF500 at prices below Marposs's. As a
result, Marposs was forced to lower its prices and ended up
complaint asserts four infringement claims, one for each of
the patents-in-suit. With respect to each patent, Marposs
alleges that the defendants engaged in direct infringement,
induced infringement, and contributory infringement. The
defendants move pursuant to Fed.R.Civ.P. 12(b)(6) to dismiss
all four counts.
purposes of a Rule 12(b)(6) motion to dismiss, I take the
complaint's allegations as true and draw all reasonable
inferences in the plaintiff's favor. See, e.g.,
Lavalais v. Village of Melrose Park, 734 F.3d 629,
632 (7th Cir. 2013). “To survive a motion to dismiss, 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 Atlantic Corp. v.
Twombly, 550 U.S. 544, 570 (2007)).
defendants first move to dismiss Marposs's direct
infringement claims. Direct infringement occurs when a party
“uses, offers to sell, or sells any patented invention,
within the United States or imports into the United States
any patented invention during the term of the patent.”
35 U.S.C. § 271(a). Marposs contends that the defendants
violated the statute by “using” the DF500 at the
IMTS events and also by “offering to sell” the
device to Fives Landis.
defendants argue that Marposs fails to allege that they
“used” the DF500 within the meaning of §
271(a). They contend that any conduct at the 2010 IMTS falls
outside of the Patent Act's six-year limitations period
and therefore is not actionable. They also argue that
Marposs's allegations in connection with the 2010 IMTS do
not constitute “use” within the meaning of the
statute because Marposs claims only that the defendants
brought the device to the show. The defendants correctly
state that mere possession of the device at the show does not
constitute “use” under the statute. See,
e.g., Quantum Grp. Inc. v. Am. Sensor Inc., No.
96 C 0761, 1998 WL 766707, at *6 (N.D. Ill. Apr. 10, 1998)
(“Mere possession of infringing products does not
establish liability for infringement.”). Marposs does
not appear to dispute any of defendants' arguments with
respect to the 2010 IMTS.
defendants further contend that Marposs's allegations
regarding the defendants' demonstration of the device at
the 2014 IMTS do not amount to “use” within the
meaning of the statute. Their argument is based on
Medical Solutions Inc. v. Change Surgical LLC, 541
F.3d 1136 (Fed. Cir. 2008). There, the plaintiff sued the
defendant for infringing patents for technology used to
control the temperature of medical and surgical items. In
response to the defendant's motion to dismiss for lack of
personal jurisdiction, the plaintiff argued that the
defendant had used the infringing device at a trade show in
the District of Columbia. The court disagreed, observing that
“[t]he ordinary meaning of ‘use' is ‘to
put into action or service.'” Id. at 1141.
Although the plaintiff claimed that the representatives
“actively demonstrated the [device's] actual
functions in use, ” the only evidence in support of the
allegation was a declaration averring that a representative
had shown an attendee how to remove a basin from the device.
The court noted that this “f[e]ll short of practicing
all of the elements of any one claim.” Id. at
places, the defendants appear to suggest that demonstration
of an infringing device at a trade show cannot constitute
“use” for purposes of § 271 as a matter of
law. While Medical Solutions acknowledged that some
courts had previously ruled to that effect, id. at
n.4, it expressly declined to embrace such an
across-the-board rule. Id. at 1141. And indeed,
several courts after Medical Solutions have found
that demonstration of a device at a trade show can constitute
“use” under the statute. See, e.g., C.R.
Daniels, Inc. v. Naztec Int'l Grp., LLC, No. CIV.A.
ELH-11-01624, 2011 WL 6026293, at *11 (D. Md. Dec. 2, 2011);
Worldwide Creations, LLC v. Playhut, Inc., No.
08-12159, 2009 WL 270088, at *3 (E.D. Mich. Feb. 3, 2009);
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