United States District Court, N.D. Alabama, Northern Division
OWEN BOWDRE, CHIEF UNITED STATES DISTRICT JUDGE
matter comes before the court on “Defendant's
Motion to Dismiss First Amended Complaint and Initial
Memorandum in Support of Motion.” (Doc. 64). For the
reasons stated below, this court WILL GRANT IN PART and DENY
IN PART Defendant's motion to dismiss this case.
Karl Storz Endoscopy-America Inc., a medical device
manufacturer, filed its original complaint against Defendant
Integrated Medical Systems International, Inc., a direct
competitor, in August 2012. (Doc. 1). In October 2012, the
parties jointly moved to stay the proceedings until
resolution of the United States Patent and Trademark
Office's inter partes reexamination of the
patents at issue in this case. (Doc. 12).
USPTO concluded its reexamination and reissue proceedings in
October 2018 by confirming all the claims in one of
KSEA's patents and reissuing KSEA's other patent,
though with several amendments and eighteen additional
claims. (Doc. 55). Plaintiff KSEA subsequently moved for
leave to amend its original complaint. (Doc. 58). This court
granted Plaintiff's motion, and Plaintiff filed its
amended complaint on November 20, 2018, alleging additional
and continuing violations between its original and amended
complaints. Defendant filed a motion to dismiss
Plaintiff's amended complaint, (doc. 64), and a motion to
stay all discovery until this court ruled on the motion to
dismiss, (doc. 65). The court granted Defendant's motion
to stay and now addresses Defendant's motion to dismiss.
reasons stated below, the court WILL GRANT IN PART and WILL
DENY IN PART Defendant's motion to dismiss and WILL LIFT
the stay in this case.
Karl Storz Endoscopy-America, Inc. manufacturers and sells
medical products, including endoscopes. Defendant Integrated
Medical Systems International, Inc. repairs and resells
medical products, including endoscopes. As an endoscope
reseller, Defendant IMS directly competes with Plaintiff
KSEA's endoscope business.
filed a method patent application for assembling
endoscopes with the United States Patent and Trademark Office
on August 18, 2005. (Doc. 63-1 at 2).
in 2007, KSEA obtained an allegedly IMS-repaired endoscope
that it believed violated its then-pending patent
application. (Doc. 63 at ¶ 11). KSEA contacted IMS
regarding its alleged infringement on March 12, 2009; IMS
denied any violation but refused to certify in writing that
it did not perform the steps of KSEA's then-pending
filed a machine patent application for an endoscope with
the USPTO on March 30, 2009. (Doc. 63-1 at 11).
to KSEA's 2005 patent application, the USPTO issued KSEA
U.S. Patent No. 7, 530, 945 (the ‘945 patent) on May
12, 2009. (Doc. 63 at ¶ 7). The ‘945 patent
constitutes a method patent, with claim 1 providing a
“method for assembling an endoscope having a tubular
shaft [containing] an optical system having several
components . . . at least partially surrounded by a tube made
of both a transparent and a shrunk material.” (Doc.
63-1 at 9).
December 2010, KSEA filed a prior lawsuit in this court
alleging infringement of the ‘945 claim against IMS.
See Complaint, Karl Storz GMBH & Co. KG v. Integrated
Med. Sys. Int'l, Inc., 2:10-CV-3547-AKK (N.D. Ala.
Dec. 21, 2010), ECF No. 1. Judge Kallon dismissed that
lawsuit on June 30, 2011, reasoning that “the
allegations  permit the court to infer only the mere
possibility of infringement.” Karl Storz
Gmbh & Co. KG v. Integrated Med. Sys. Int'l,
Inc., No. 2:10-CV-3547-AKK, 2011 WL 13134015, at *3
(N.D. Ala. June 30, 2011).
USPTO issued KSEA's second patent, U.S. Patent No. 8,
029, 437 (the ‘437 patent), on October 4, 2011. (Doc.
63-1 at 11). The ‘437 patent constitutes a machine
patent, with claim 1 describing an endoscope comprising
“a tubular shaft [containing] an optical system having
several components . . . directly surrounded by a support
piece made of a shrunk material, wherein said shrunk material
is a transparent material.” (Doc. 1-2 at 9).
December 2011, KSEA obtained two IMS-repaired endoscopes it
believed infringed or evidenced infringement of the
‘945 method patent and the ‘437 machine patent.
(Doc. 63 at ¶¶ 12-13).
filed the original complaint in this action on August 15,
2012, alleging patent infringement against IMS. (Doc. 1). The
complaint incorporated photographs of all three IMS-repaired
endoscopes to support its infringement claims. IMS responded
by requesting inter partes patent reexamination by
the USPTO in September 2012. (Doc. 7). Pending resolution of
the reexamination proceedings, the court stayed this case.
USPTO denied reexamination for all claims of the ‘945
patent and for claims 1-7 of the ‘437 patent, but it
ordered reexamination for claims 8-14 of the ‘437
patent. (Doc. 63 at ¶ 22). After amendments during
reexamination, the USPTO ultimately confirmed the
patentability of claims 8-14 of the ‘437 patent. (Doc.
63 at ¶ 23).
to KSEA's reissue application filed in June 2013, the
USPTO reissued the ‘437 patent as U.S. Patent No. RE47,
044 (the ‘044 patent) on September 28, 2018, adding
claims 15- 32. (Doc. 63-1 at 2).
court subsequently lifted the stay and gave KSEA leave to
file an amended complaint. (Doc. 62). In its amended
complaint, KSEA alleges that it discovered two more
IMS-repaired endoscopes that infringed KSEA's patents,
one in 2013 and one in 2016. (Doc. 63 at ¶¶ 14-15).
moves to dismiss KSEA's amended complaint under Federal
Rule of Civil Procedure 12(b)(6). (Doc. 64). The court stayed
discovery in this matter pending the resolution of IMS's
motion to dismiss. (Doc. 73).
Standard of Review
12(b)(6) motion to dismiss attacks the legal sufficiency of
the complaint. Generally, the Federal Rules of Civil
Procedure require only that the complaint provide a
“‘short and plain statement of the claim'
that will give the defendant fair notice of what the
plaintiff's claim is and the grounds upon which it
rests.” Conley v. Gibson, 355 U.S. 41, 47
(1957) (quoting Fed.R.Civ.P. 8(a)). The Supreme Court
explained that “[t]o 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 Atl. Corp. v. Twombly,
550 U.S. 544, 555 (2007)). A complaint states a facially
plausible claim for relief “when the plaintiff pleads
factual content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct
alleged.” Id. (citation omitted).
court accepts all factual allegations as true on a motion to
dismiss under Rule 12(b)(6). See, e.g., Grossman
v. Nationsbank, N.A., 225 F.3d 1228, 1231 (11th Cir.
2000). However, legal conclusions unsupported by factual
allegations are not entitled to that assumption of truth.
Iqbal, 556 U.S. at 678.
IMS's motion to dismiss presents several arguments for
dismissing Plaintiff KSEA's infringement claims. The
motion presents arguments for dismissing (1) KSEA's
claims related to the ‘945 patent and claims 1-14 of
the ‘044 patent; (2) KSEA's claims related to
claims 15-32 of the ‘044 patent; (3) KSEA's claims
under the doctrine of equivalents as to both patents; and (4)
KSEA's claims of induced and willful infringement. This
Memorandum Opinion addresses each in turn.
‘945 Patent and Claims 1-14 of the ...