Addiction and Detoxification v. Carpenter , 620 F. App'x 934 ( 2015 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ADDICTION AND DETOXIFICATION INSTITUTE
L.L.C.,
Plaintiff-Appellant
v.
JAMES CARPENTER, RICARDO BORREGO,
MICHAEL MICHAEL, DBA EAGLE
ADVANCEMENT INSTITUTE,
Defendants-Appellees
______________________
2014-1797
______________________
Appeal from the United States District Court for the
Eastern District of Michigan in No. 5:14-cv-10021-JCO-
MJH, Judge John Corbett O’Meara.
______________________
Decided: July 21, 2015
______________________
THOMAS KEITH MIRABILE, Mirabile Law Firm,
Wheaton, IL, argued for plaintiff-appellant.
KRISTOPHER K. HULLIBERGER, Howard & Howard At-
torneys, PLLC, Royal Oak, MI, argued for defendants-
appellees.
______________________
2 ADDICTION AND DETOXIFICATION v. CARPENTER
Before MOORE, BRYSON, and CHEN, Circuit Judges.
Opinion for the court filed by Circuit Judge MOORE.
Dissenting opinion filed by Circuit Judge BRYSON.
MOORE, Circuit Judge.
Addiction and Detoxification Institute L.L.C. appeals
from the United States District Court for the Eastern
District of Michigan’s dismissal of a patent infringement
complaint filed against James Carpenter, Ricardo
Borrego, Michael Michael, and Eagle Advancement Insti-
tute under Federal Rule of Civil Procedure 12(b)(6).
Because the complaint failed to satisfy the notice re-
quirements of Federal Rule of Civil Procedure 8, we
affirm.
BACKGROUND
Addiction and Detoxification, the assignee of U.S. Pa-
tent No. 5,789,411, filed a complaint alleging that De-
fendants infringed the ’411 patent. The complaint
contained a single allegation of direct infringement: “[i]n
violation of [Addiction and Detoxification]’s exclusive
rights under the patent laws of the United States, De-
fendants’ [sic], each of them, have directly infringed the
Patents [sic] by making, using, selling, offering for sale in
the United States activities, methods and procedures
claimed in the Patent, Exhibit 1.” Complaint ¶ 12, Addic-
tion & Detoxification Inst. L.L.C. v. Carpenter, No. 5:14-
cv-10021-JCO-MJH (E.D. Mich. Jan. 3, 2014), ECF No. 1
(“Original Complaint”). The complaint contained a single
allegation of indirect infringement: “Defendants’ [sic]
have induced infringement of and/or contributorily in-
fringed the Patent.” Id. ¶13.
Defendants moved to dismiss. They argued that Ad-
diction and Detoxification’s claim of direct infringement
failed to satisfy Rule 8 because it did not follow Form 18
ADDICTION AND DETOXIFICATION v. CARPENTER 3
in the Appendix of Forms to the Federal Rules of Civil
Procedure. They argued that Addiction and Detoxifica-
tion’s claim of indirect infringement failed to satisfy Rule
8 because it did not allege any facts showing that Defend-
ants had the specific intent to cause infringement.
In response, Addiction and Detoxification moved to
file an amended complaint. The proposed complaint
included additional allegations with regard to indirect
infringement, for example, that Defendants acted “with
specific intent to urge, instruct, encourage” infringement
by “causing[,] urging, aiding, or instructing others to
perform one or more claimed methods of the ‘411 patent,
and acts which infringe one or more claims of the ‘411
patent” and that Defendants acted “with specific intent to
induce third parties to infringe the ‘411 patent.” First
Amended Complaint ¶¶ 17–18, Addiction & Detoxification
Inst. L.L.C. v. Carpenter, No. 5:14-cv-10021-JCO-MJH
(E.D. Mich. Jan. 3, 2014), ECF No. 16-1 (“First Amended
Complaint”). Addiction and Detoxification did not revise
the direct infringement allegations in the First Amended
Complaint. Id. ¶ 12.
The district court granted Defendants’ motion to dis-
miss the Original Complaint and denied Addiction and
Detoxification’s motion to amend. In dismissing the
complaint, the district court relied on an earlier opinion
from the same district concluding that to satisfy Form 18,
a complaint must allege that the defendants were notified
of infringement before the complaint was filed. Accord-
ingly, the court dismissed the direct infringement claim
because neither the Original Complaint nor the First
Amended Complaint contained allegations that Defend-
ants had pre-filing notice of the alleged infringement.
J.A. 3. It dismissed the indirect infringement claim
because neither the Original Complaint nor the First
Amended Complaint contained allegations of pre-filing
notice or facts supporting the contention that Defendants
specifically intended to cause infringement. J.A. 3–4.
4 ADDICTION AND DETOXIFICATION v. CARPENTER
Addiction and Detoxification appeals. We have jurisdic-
tion under 28 U.S.C. § 1295(a)(1).
DISCUSSION
Because they are not unique to patent law, the grant
of a motion to dismiss for failure to state a claim and the
denial of a motion to amend a complaint are reviewed
under the applicable law of the regional circuit. In re Bill
of Lading Transmission & Processing Sys. Patent Litig.,
681 F.3d 1323, 1331 (Fed. Cir. 2012); Kalman v. Berlyn
Corp., 914 F.2d 1473, 1480 (Fed. Cir. 1990). Under Sixth
Circuit law, a district court’s dismissal under Rule
12(b)(6) is reviewed de novo, Watson Carpet & Floor
Covering, Inc. v. Mohawk Indus., Inc., 648 F.3d 452, 456
(6th Cir. 2011), and a district court’s denial of a motion to
amend a complaint is reviewed for abuse of discretion,
Rose v. Hartford Underwriters Ins. Co., 203 F.3d 417, 420
(6th Cir. 2000).
“Rule 8(a)(2) of the Federal Rules of Civil Procedure
generally requires only a plausible ‘short and plain’
statement of the plaintiff’s claim, not an exposition of his
legal argument.” Skinner v. Switzer, 562 U.S. 521, 530
(2011). To survive a motion to dismiss, a complaint must
plead “enough factual matter” that, when taken as true,
“state[s] a claim to relief that is plausible on its face.”
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 556, 570 (2007).
“A claim has facial plausibility when the plaintiff pleads
factual content that allows the court to draw the reasona-
ble inference that the defendant is liable for the miscon-
duct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
Twombly and Iqbal require that a complaint for patent
infringement contain sufficient factual allegations such
that a reasonable court could, assuming the allegations
were true, conclude that the defendant infringed.
A motion to dismiss a claim of direct infringement,
however, will not be granted if the complaint follows Form
18. In re Bill of Lading, 681 F.3d at 1334; Fed. R. Civ. P.
ADDICTION AND DETOXIFICATION v. CARPENTER 5
84 (“The forms in the Appendix suffice under these
rules . . . .”). We have held that a complaint that complies
with Form 18 will satisfy Rule 8 because Form 18 has the
force of law and was enacted by Congress. See, e.g., In re
Bill of Lading, 681 F.3d at 1334 (“to the extent the parties
argue that Twombly and its progeny conflict with the
Forms and create differing pleadings requirements, the
Forms control”). However, as Form 18 applies only to
direct infringement, we have rejected the idea that it
provides a model for other causes of action, such as indi-
rect infringement. Id. at 1336. For other patent-related
claims, such claims must comply with Twombly and Iqbal.
See id.
I. Direct Infringement
With regard to Addiction and Detoxification’s direct
infringement claim, the district court erred to the extent
it required that the complaint include an allegation of
pre-filing written notice. Paragraph 4 of the complaint in
Form 18 states that “[t]he plaintiff has complied with the
statutory requirement of placing a notice of the Letters
Patent on all electric motors it manufactures and sells
and has given the defendant written notice of the in-
fringement.” Fed. R. Civ. P. Form 18. The district court
erred to the extent it held that this portion of the Form
creates a legal requirement that written notice be given
before a complaint can be filed. Pre-filing notice could be
relevant to a damages calculation, such as where an
apparatus embodying the patent claims is not marked.
See, e.g., 35 U.S.C. § 287 (“In the event of failure so to
mark, no damages shall be recovered by the patentee in
any action for infringement, except on proof that the
infringer was notified of the infringement and continued
to infringe thereafter . . . .”). Pre-filing notice, however, is
not required to bring a suit for direct infringement. See,
e.g., id. (“Filing of an action for infringement shall consti-
tute such notice.”). There is no rule, statute, or appellate
6 ADDICTION AND DETOXIFICATION v. CARPENTER
case suggesting that pre-filing notice is required before
bringing suit.
Nonetheless, we affirm the dismissal of the direct in-
fringement claim. We may affirm a dismissal under Rule
12(b)(6) for any reason supported by the record. Lawrence
v. Chancery Court of Tennessee, 188 F.3d 687, 691 (6th
Cir. 1999). Paragraph 3 of the complaint in Form 18
states that “[t]he defendant has infringed and is still
infringing the Letters Patent by making, selling, and
using electric motors that embody the patented invention,
and the defendant will continue to do so unless enjoined
by this court.” Fed. R. Civ. P. Form 18. Form 18 notifies
the defendant about what is being accused of infringe-
ment—electric motors. The factual allegation that a
particular device infringes provides the notice required in
a complaint. It allows the defendant to understand the
nature of the suit and prepare an answer.
Addiction and Detoxification’s complaint only alleges
that Defendants infringe by “making, using, selling,
offering for sale in the United States activities, methods
and procedures claimed in the Patent.” Original Com-
plaint ¶ 12. Although Form 18 does not include much
detail, it does allege that the defendant makes, sells, and
uses “electric motors” that embody the patented inven-
tion. Fed. R. Civ. P. Form 18. This is at least some iden-
tification of specific products. The bare allegation that
Defendants make, use, sell, and offer for sale undefined
“activities, methods, and procedures” provides no detail
whatsoever that would put Defendants on notice as to
what activity, method, or procedure is alleged to infringe.
Original Complaint ¶ 12. Such bare allegations do not
comply with the complaint provided in Form 18. It is not
enough to say “you infringe my patent.” And that is all
that is alleged in Addiction and Detoxification’s com-
plaint. There must be some allegation of specific services
or products of the defendants which are being accused.
Here, the Original Complaint does not comply with Form
ADDICTION AND DETOXIFICATION v. CARPENTER 7
18. And when a complaint does not comply with Form 18,
it does not fall within the safe harbor created by Rule 84.
We thus affirm the dismissal of the direct infringement
claim. The district court did not abuse its discretion when
it denied the motion to amend the complaint with respect
to the direct infringement claim because Addiction and
Detoxification did not amend its direct infringement
allegations in the First Amended Complaint. See Thiokol
Corp. v. Dep’t of Treasury, Mich., Revenue Div., 987 F.2d
376, 382–83 (6th Cir. 1993) (holding that a proposed
amendment to a complaint is futile if the amendment
could not withstand a Rule 12(b)(6) motion to dismiss).
II. Indirect Infringement
The district court properly dismissed Addiction and
Detoxification’s indirect infringement claim. The Original
Complaint alleged that “Defendants’ [sic] have induced
infringement of and/or contributorily infringed the Pa-
tent.” Original Complaint ¶ 13. To state a claim for
induced infringement, a plaintiff must allege that the
defendant knew of the patent and that the induced acts
constitute patent infringement. Commil USA, LLC v.
Cisco Sys., Inc., 135 S. Ct. 1920, 1926 (2015). The Origi-
nal Complaint contains no allegations regarding intent or
any specific acts caused by Defendants. “To state a claim
for contributory infringement . . . a plaintiff must, among
other things, plead facts that allow an inference that the
components sold or offered for sale have no substantial
non-infringing uses.” In re Bill of Lading, 681 F.3d at
1337. The Original Complaint contains no allegations
regarding substantial non-infringing uses. Simply repeat-
ing the legal conclusion that Defendants induced in-
fringement or contributorily infringed does not plead
“factual content that allows the court to draw the reason-
able inference that the defendant is liable for the miscon-
duct alleged.” Iqbal, 556 U.S. at 678. We thus affirm the
dismissal of the indirect infringement claim in the Origi-
nal Complaint.
8 ADDICTION AND DETOXIFICATION v. CARPENTER
The district court did not abuse its discretion when it
denied the motion to amend the complaint as futile with
respect to the indirect infringement claim. The First
Amended Complaint stated that Defendants acted “with
specific intent to urge, instruct, encourage” infringement
by “causing[,] urging, aiding, or instructing others to
perform one or more claimed methods of the ‘411 patent,
and acts which infringe one or more claims of the ‘411
patent” and that Defendants acted “with specific intent to
induce third parties to infringe the ‘411 patent.” First
Amended Complaint ¶¶ 17–18. The First Amended
Complaint did not include facts that would allow a court
to reasonably infer that Defendants had the specific
intent to induce infringement and dropped any allegation
that Defendants contributorily infringed the patents.
Rather, the First Amended Complaint simply recites the
legal conclusion that Defendants acted with specific
intent. The district court did not abuse its discretion
when it denied the motion to amend the complaint with
respect to the indirect infringement claim.
CONCLUSION
We affirm the district court’s dismissal of the com-
plaint and denial of the motion to amend.
AFFIRMED
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ADDICTION AND DETOXIFICATION INSTITUTE
L.L.C.,
Plaintiff-Appellant
v.
JAMES CARPENTER, RICARDO BORREGO,
MICHAEL MICHAEL, DBA EAGLE
ADVANCEMENT INSTITUTE,
Defendants-Appellees
______________________
2014-1797
______________________
BRYSON, Circuit Judge, dissenting.
The majority concludes that the district court properly
dismissed the plaintiff’s claim of direct infringement
because the complaint “provides no detail whatsoever that
would put Defendants on notice as to what activity,
method, or procedure is alleged to infringe.” I disagree
with the majority that the complaint fails to satisfy the
requirement of Rule 8, Fed. R. Civ. P., of “a short and
plain statement of the claim showing that the pleader is
entitled to relief,” particularly in view of Form 18, Fed. R.
Civ. P., which contains a form complaint for patent in-
fringement that is not materially different from the
complaint in this case.
2 ADDICTION AND DETOXIFICATION v. CARPENTER
The majority acknowledges that a complaint modeled
on Form 18 would be sufficient. The only difference that
the majority points to between the Form 18 complaint and
the complaint in this case is that the Form 18 complaint,
which is directed to infringement of a product claim,
identifies the accused products as “electric motors that
embody the patented invention.” Because the complaint
in this case is directed to a patent consisting entirely of
method claims (including several “therapy” claims), it is
not possible to identify a particular item as the infringing
product. Instead, the complaint alleges that the defend-
ants, who engage in a business that includes “the use,
marketing and sale of procedures and methods that
infringe [the plaintiff’s U.S. Patent No. 5,789,411],” have
directly infringed the patent “by making, using, selling,
[and] offering for sale in the United States activities,
methods and procedures claimed in the Patent,” which
are methods and therapies for detoxifying a patient who
is addicted to one or more opioids.
Unlike the “electric motors” referred to in Form 18, a
method or procedure, such as a method or therapy for
detoxifying patients, may not have a shorthand name.
Hence, it is unclear that the plaintiff could do more by
way of identifying the accused methods than to identify
them as the “activities, methods, and procedures claimed
in the Patent.”
The majority states that in order to avoid dismissal,
the complaint should have contained “some allegation of
specific services or products of the defendants which are
being accused.” But it is not clear how much more detail
the majority would require.
If the majority would be satisfied by an allegation re-
garding the defendants’ services, such as that the defend-
ants “engage in methods and therapies for detoxifying
patients addicted to one or more opioids,” then the dis-
missal in this case is pointless. The complaint puts the
ADDICTION AND DETOXIFICATION v. CARPENTER 3
defendants on notice that they are being accused of em-
ploying detoxification methods and therapies directed at
patients who are addicted to opioids. Adding such lan-
guage to the complaint would add nothing to the defend-
ants’ knowledge as to what they are being accused of. The
complaint, particularly as amended, makes clear that the
plaintiff’s allegations relate to the use of the detoxification
therapies recited in the ’411 patent. The defendants have
not denied that they engage in detoxification procedures.
Their defense is that they do not administer diarrhea
suppressants to patients, as is required by each claim of
the ’411 patent. The amended complaint thus tells the
defendants what they are being charged with and enables
them to formulate a defense that, if their factual allega-
tions are correct, should be dispositive in their favor. This
is not a case in which the defendants have been left to
guess about which of their services is being accused of
infringement.
Similarly, to the extent that the majority finds the
complaint wanting because it does not specifically call out
each of the limitations of the claims, such as by alleging
that the defendants sedate patients with an anesthetic
agent, administer a diarrhea suppressant, inject an opioid
antagonist, and then revive the patient, no such allega-
tions are required. See McZeal v. Sprint Nextel Corp., 501
F.3d 1354, 1357 (Fed. Cir. 2007) (citing Bell Atlantic Corp.
v. Twombly, 550 U.S. 544 (2007), and holding that “a
plaintiff in a patent infringement suit is not required to
specifically include each element of the claims of the
asserted patent”). In any event, requiring that such
allegations be included would give the defendants no
more information than they already have from the com-
plaint in this case.
If the majority’s reference to “products” means that it
would require the complaint to contain detail regarding
the products that the defendants use in their therapies—
such as allegations identifying the specific drugs that the
4 ADDICTION AND DETOXIFICATION v. CARPENTER
defendants administer to patients—that degree of speci-
ficity would be far greater than what is required by Rule 8
and Form 18 and would depart from the principles of
notice pleading that are embodied in the Federal Rules of
Civil Procedure. See Erickson v. Pardus, 551 U.S. 89, 93
(2007) (“Specific facts are not necessary; the statement
need only give the defendant fair notice of what the . . .
claim is and the grounds upon which it rests” (citation
omitted)).
With respect to the allegations of indirect infringe-
ment, the proper focus should be on the sufficiency of the
proposed amended complaint, not the original complaint.
The district court denied the plaintiff’s motion to amend
on the ground that the amended complaint was insuffi-
cient and that allowing the amendment would therefore
be futile. Because I believe the amended complaint is
sufficient to satisfy Rule 8, I would reverse as to the claim
of indirect infringement as well.
The amended complaint alleges that the individual
defendants have had actual knowledge of the patent since
at least the filing date of the original complaint, and that
they induced infringement by others through their “com-
plete dominion and control” over Eagle Advancement
Institute, “causing[,] urging, encouraging, aiding or
instructing others to perform one or more claimed meth-
ods of the ’411 patent and acts which infringe one or more
claims of the ’411 patent.” The complaint further alleges
that the individual defendants acted “with specific intent
to urge, instruct, [and] encourage such infringement” by
continuing their alleged infringing activities “with
knowledge of the ’411 patent.”
The majority finds fault with the amended complaint
because of its failure to “include facts that would allow a
court to reasonably infer that Defendants had the specific
intent to induce infringement” and instead “simply recites
ADDICTION AND DETOXIFICATION v. CARPENTER 5
the legal conclusion that Defendants acted with specific
intent.”
Once again, the majority does not explain why the al-
legations in the amended complaint are insufficient to
plead specific intent, nor does it make clear what factual
allegations would be required to do so. The amended
complaint specifically alleges that the individual defend-
ants had knowledge of the ’411 patent at least as of the
filing of the original complaint. It also alleges that the
individual defendants’ capacity to induce infringement
derived from their “complete dominion and control” over
Eagle Advancement Institute. Any other facts relating to
the issue of intent, such as specific directions by the
individual defendants to continue the allegedly infringing
activities after notice of the original complaint, might be
evidence of specific intent, but in a system of notice plead-
ing, a detailed evidentiary recitation is not necessary to a
valid statement of a legal claim.
If the consequence of our affirmance of the dismissal
in this case were merely to require the plaintiff to add a
reference to the required steps of the claimed detoxifica-
tion program and a statement that continued operation of
the program with knowledge of the patent evinces specific
intent to induce infringement, the decision in this case
would serve no purpose, but it would also do little harm.
However, the district court’s refusal to allow the plaintiff
to amend its complaint suggests that the court may
regard this case as over, and that any effort by the plain-
tiff to further amend the complaint so as to comply with
this court’s requirements would be rejected. If that is
so—and there is nothing in the majority opinion to sug-
gest that the district court should allow the plaintiff an
opportunity to file a second amended complaint—then we
will have extinguished a party’s claims on a basis other
than the merits for reasons wholly insufficient to justify
such a measure. I therefore respectfully dissent.