No Way Out for Door Patent
On September 12, 2016, District Judge John G. Koeltl (S.D.N.Y.) granted the defendants’ motions to dismiss for failure to state claim of patent infringement under Federal Rule of Civil Procedure (“FRCP”) 12(b)(6). Claims other than patent infringement remain in the case.
Plaintiffs Gym Door Repairs Inc. (“GDRI”) and Safepath Systems LLC (“SPS”) are the manufacturers of the “Safe Path System,” a safety device used on electrically operated doors. According to the Plaintiffs’ complaint, this device was sold to more than 4,700 schools in New York State and patented under U.S. Patent No. 5,244,030 until the patent expired on October 17, 2011. Between June 1, 2009 and October 17, 2011 – the relevant timeframe for damages – the Plaintiffs alleged that various defendants infringed or induced infringement of their patent “by repairing their patented Safe Path Systems” (emphasis added).
The Court disagreed. Explaining that under the doctrine of permissible repair, “repairs and maintenance performed on a patented item (short of reconstruction of a new product) do not constitute infringement,” the Court noted that “the [Plaintiffs’] allegations---taken as true---plead an affirmative defense of repair.”
In granting the Defendant’s motions to dismiss the patent infringement claim, the Court rejected Plaintiffs’ argument that their complaint should be evaluated under the “forgiving” pleading standard of Form 18, rather than the standards of Iqbal and Twombly.
While noting that the district courts in the Southern District of New York are “divided on their interpretation of Second Circuit and Federal Circuit precedent” addressing the use of Form 18, the Court held that “Form 18 should not be the standard in this case.” Instead, the Court found it “just and practicable” to apply the standard pleading requirements of Iqbal and Twombly rather than the “bare-bone” former Form 18.
As the Court explained, “If the plaintiffs cannot plead sufficient facts to state a plausible claim for patent infringement, they should not be allowed to proceed with a patent infringement claim simply because they could check the boxes on former Form 18.”
-By Ryan Mott and Lewis Popovski
Case: Gym Door Repairs, Inc., et al. v. Young Equipment Sales, Inc., et al., No. 15-cv-4244-JGK, 2016 BL 296227 (S.D.N.Y. Sept. 9, 2016). The patent-in-suit is U.S. Patent No. 5,244,030.