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Azioni v. Jenoptik Automotive North America, LLC

United States District Court, N.D. Illinois, Eastern Division

April 7, 2017



          Elaine E. Bucklo United States District Judge

         Plaintiffs 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 denied.[1]


         Marposs 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.[2] According to Marposs, this represented a significant technological advance, allowing measurements to be taken more efficiently and accurately.

         The 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”).[3]

         Marposs 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”);[4] and on March 11, 2014, it obtained U.S. Patent No. 8, 667, 700 (“the ‘700 Patent”).[5]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 System”).[6]

         According 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.

         Nevertheless, 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.

         No 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 losing money.

         Marposs's 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.


         For 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)).

         A. Direct Infringement

         The 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.

         1. Use

         The 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.

         The 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 1141.

         In some 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); Donnelly Corp. v. Reitter & Schefenacker GmbH ...

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