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Midwest Innovative Products, LLC v. Kinamor, Inc.

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

May 31, 2017

Midwest Innovative Products, LLC, Plaintiff,
v.
Kinamor, Inc., and Kinneco, LLC, Defendants.

          MEMORANDUM OPINION AND ORDER

          MANISH S. SHAH UNITED STATES DISTRICT JUDGE.

         Midwest Innovative Products, LLC, alleges that defendants Kinamore Inc., and Kinneco, LLC, infringe on Midwest's patent for electrical cord covers. Defendants move to dismiss for failure to state a claim. For the following reasons, the motion is denied.

         I. Background

         Plaintiff Midwest Innovative Products, LLC, sells covers for electrical cord connections and owns U.S. Patent No. 9, 413, 101, entitled “Electrical Cord Connection Covering Techniques, ” and issued on August 9, 2016. [1-1].[1] Defendants Kinamor, Inc., and Kinneco, LLC, make and sell electrical cord covers called “CordSafe.” In July 2016-before the '101 patent issued-and later in August and October 2016, Midwest sent defendants cease-and-desist letters, contending that defendants' CordSafe system infringed at least claim 1 of the '101 patent. Shortly after exchanging these communications, Midwest sued defendants, alleging that their CordSafe product infringes at least claim 1 of the '101 patent.

         The patent describes a system for covering connections between electrical cords. It describes parts of the covering system called “compression portions.” The “compression portions, ” which may be made of foam, create a water or weather resistant seal around the electrical connection and cords by compressing and filling in voids inside the covering. The patent describes compression portions, at times, as having grooves and forming channels that surround the cords. Figure 2C in the patent provides a simple visual depiction of an embodiment of the system, with the compression portion in gray:

         (IMAGE OMITTED)

         II. Legal Standards

         To survive a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6), a complaint must contain factual allegations that plausibly suggest a right to relief. Ashcroft v. Iqbal, 556 U.S. 662, 677-78 (2009). The court must construe all factual allegations as true and draw all reasonable inferences in the plaintiff's favor, but the court need not accept legal conclusions or conclusory allegations. Id. at 678-79. “[D]ocuments that are attached to the complaint, documents that are central to the complaint and are referred to in it, and information that is properly subject to judicial notice” may be considered on a motion to dismiss. Williamson v. Curran, 714 F.3d 432, 436 (7th Cir. 2013); Fed.R.Civ.P. 10(c). Midwest attached to its complaint a copy of the '101 patent. [1-1]. Defendants attached several documents to their motion to dismiss, including: Midwest's cease-and-desist letters ([22-1], [22-2], [22-3]), defendants' letter in response ([22-4]), a patent application ([22-5]), and parts of the '101 patent prosecution history ([30-1], [30-2]). In response, Midwest also attached to its opposition brief the prosecution history for the '101 patent and for two other patent applications. [28].

         I consider only the '101 patent in resolving defendants' motion to dismiss. The cease-and-desist letters are referred to in the complaint (except for defendants' response letter), but while they may be central to Midwest's allegation of willful infringement, they are not particularly relevant to the issues raised in this motion to dismiss. Other than the '101 patent, which was attached to the complaint and central to it, the patent application and prosecution histories attached to the parties' briefs are not considered at this time. Midwest does not object to judicial notice of these materials, see [27] at 9 n.4, 12 n.5, but I decline to take judicial notice of them. A court may take judicial notice of patents or patent applications, Anderson v. Kimberly-Clark Corp., 570 Fed. App'x 927, 932 n.4 (Fed. Cir. 2014), and there may be situations where judicial notice of a prosecution history is proper at the motion to dismiss stage. This is not such a situation. The patent application and the prosecution histories are not referred to in Midwest's complaint and are not central to its claim for infringement. The exception to considering materials outside the complaint in resolving a Rule 12(b)(6) motion is a narrow one, and “[i]t is not intended to grant litigants license to ignore the distinction between motions to dismiss and motions for summary judgment.” Levenstein v. Salafsky, 164 F.3d 345, 347 (7th Cir. 1998).

         These materials are also not considered because defendants' motion to dismiss, in large part, improperly seeks resolution of issues on the merits. Defendants seek a determination of the substantive merits of the controversy between the parties-their motion essentially asks for the court to construe claim 1 and compare it to their allegedly infringing CordSafe product. See, e.g., Liquid Dynamics Corp. v. Vaughan Co., Inc., 355 F.3d 1361, 1367 (Fed. Cir. 2004) (resolving a patent infringement claim requires construing the patent claims and then comparing them to the allegedly infringing device). “[T]he purpose of a motion under Federal Rule 12(b)(6) is to test the formal sufficiency of the statement of the claim for relief; the motion is not a procedure for resolving a contest between the parties about the facts or the substantive merits of the plaintiff's case.” 5B Wright & Miller Fed. Practice & Procedure Civil § 1356 (3d ed.). Here, the parties seek to admit materials outside the complaint to resolve matters of claim construction and invalidity based on anticipation and priority-matters typically resolved at later stage of litigation. When a defendant attaches to its motion to dismiss materials outside the complaint and not central to it, “the court must either convert the 12(b)(6) motion into a motion for summary judgment under Rule 56 and proceed in accordance with the latter rule, or exclude the documents attached to the motion to dismiss and continue under Rule 12.” Levenstein, 164 F.3d at 347. Converting the defendants' motion to a motion for summary judgment would be premature. Therefore, I do not consider the patent applications and prosecution histories submitted by the parties.

         III. Analysis

         Defendants move to dismiss Midwest's infringement action, asserting that their CordSafe product lacks a two-groove configuration required in claim 1 and that the '101 patent is invalid as anticipated over Midwest's earlier patent publication.

         A. Infringement Claim

         Defendants contend that Midwest does not plausibly allege that their CordSafe product infringes the '101 patent because defendants' CordSafe product lacks a two-groove configuration in claim 1. Midwest responds that the two-groove configuration in claim 1 is a mere typographical error. As a threshold issue, Midwest also insists that noninfringement is an affirmative defense that it was not required to plead around. “[A] plaintiff ordinarily need not anticipate and attempt to plead around affirmative defenses, ” and dismissal on an affirmative defense is only appropriate when a plaintiff pleads itself out of court on the face of the complaint. Hyson USA, Inc. v. Hyson 2U, Ltd., 821 F.3d 935, 939 (7th Cir. 2016). Under 35 U.S.C. § 282(b), “[n]oninfringement” is specifically listed as a “defense” to a claim for patent infringement, along with invalidity. But unlike invalidity, which concerns allegations outside of the plaintiff's prima facie case and is the defendant's burden to prove, noninfringement is not just a defense but also the failure of the plaintiff's prima facie ...


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