United States District Court, D. Massachusetts
MEMORANDUM & ORDER
NATHANIEL M. GORTON, District Judge.
Plaintiff Zond, LLC ("Zond") accuses defendants Renesas Electronics Corporation and Renesas Electronics America, Inc. (collectively, "Renesas") of infringing seven of its patents. The asserted patents are directed to apparatus and methods for generating plasma and "sputtering" metals using plasma.
Now pending before the Court is the motion by Renesas to dismiss for failure to state a claim under Fed.R.Civ.P. 12(b)(6). For the reasons that follow, that motion will be allowed, in part, and denied, in part.
I. Background and Procedural History
Zond is a Delaware corporation with a principal place of business in Mansfield, Massachusetts. Its wholly owned subsidiary, Zpulser, LLC ("Zpulser"), commercializes Zond's patented technology by manufacturing and selling high-power plasma generators.
Renesas Electronics Corporation is a Japanese corporation with its headquarters in Tokyo, Japan. Its wholly owned subsidiary, Renesas Electronics America, Inc., is a California corporation with its principal place of business in Santa Clara. According to the Amended Complaint, Renesas supplies devices such as microcontrollers and transistors that are constructed using semiconductor circuit technology.
Zond filed its initial Complaint in July, 2013 and an Amended Complaint in September, 2013. The Amended Complaint asserts that Renesas directly and willfully infringes seven patents and has induced and continues to induce others to do so. The asserted patents are United States Patent Nos. 6, 853, 142 ("the 142 patent"), 6, 806, 652 ("the 652 patent"), 7, 604, 716 ("the 716 patent"), 7, 147, 759 ("the 759 patent"), 7, 811, 421 ("the 421 patent"), 6, 805, 779 ("the 779 patent") and 7, 808, 184 ("the 184 patent"). All seven patents-in-suit are directed to apparatus and methods for generating plasma and disclose applications that include "sputtering, " which is a technique of using plasma to cause atoms of metal to flow to a substrate and, in some cases, form a thin film. Certain claims of the 421 and 759 patent are directed to sputtering.
II. Motion to Dismiss
A. Legal Standard
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." Bell Atl. Corp. v. Twombly , 550 U.S. 544, 570 (2007). The Court must accept all factual allegations in the complaint as true and draw all reasonable inferences in the plaintiff's favor. Langadinos v. Am. Airlines, Inc. , 199 F.3d 68, 69 (1st Cir. 2000). If the facts in the complaint are sufficient to state a cause of action, a motion to dismiss the complaint must be denied. See Nollet v. Justices of the Trial Court , 83 F.Supp.2d 204, 208 (D. Mass. 2000), aff'd, 248 F.3d 1127 (1st Cir. 2000).
B. Direct Infringement
Renesas moves to dismiss the claims of direct infringement on two grounds. First, it contends that the accused products cannot directly infringe because they are not "products which [are] made by a process patented in the United States" as required by 35 U.S.C. § 271(g). Second, it maintains that the Amended Complaint does not meet the standard of pleading direct infringement as laid out in Form 18 of the Federal Rules of Civil Procedure.
1. Applicability of § 271(g)
Renesas contends that Zond fails to state a claim to direct infringement under 35 U.S.C. § 271(g) because the accused products are not "products which [are] made by" a process claimed by any of Zond's asserted patents.
a. Legal Standard
Section 271(g) of the Process Patent Amendments Act ("PPAA") states, in relevant part, that
(g) Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent.... A product which is made by ...