inMusic Brands, Inc. v. Roland Corporation

UNITED STATES DISTRICT COURT
DISTRICT OF RHODE ISLAND
inMUSIC BRANDS, INC. 	:
:
v. 	: 	C.A. No. 17-CV-0010-JJM-LDA
:
ROLAND CORPORATION 	:
REPORT AND RECOMMENDATION
Lincoln D. Almond, United States Magistrate Judge
Pending before me for a report and recommended disposition (28 U.S.C. § 636(b)(1)(B))
are Plaintiff’s Motion for Leave to File a Second Amended Complaint (ECF Doc. No. 19) and
Defendant’s Motion to Dismiss Plaintiff’s First Amended Complaint. (ECF Doc. No. 21).
Background
Plaintiff originally filed this patent infringement action on January 10, 2017. 	Plaintiff
alleged direct infringement in Counts I and III, and indirect infringement in Count II. Defendant
moved to dismiss arguing that Plaintiff’s claims were inadequately pled and should be dismissed
with prejudice. 	Plaintiff countered that its original Complaint adequately pled plausible claims
for infringement and requested that Defendant’s Motion to Dismiss be denied or, in the
alternative, that any dismissal be without prejudice and with leave to amend.
On June 9, 2017, the Court concluded that Plaintiff’s Original Complaint failed to
sufficiently allege particular facts concerning the presence of any claim limitation in Defendant’s
products. 	Thus, it granted Defendant’s Motion to Dismiss but with leave to amend noting that
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“[c]ertainly [Plaintiff] should be allowed to file an amended complaint that satisfies its pleadings
burden.” Plaintiff filed its First Amended Complaint on July 10, 2017. (ECF Doc. No. 17).
After some further dialogue between the parties as to the sufficiency of the First
Amended Complaint, Plaintiff moved for leave to file a Second Amended Complaint on the
morning of July 24, 2017 which was described as an effort to avoid another round of motion
practice under Rule 12. 	Plaintiff represents to the Court it added further detail and made some
changes to the Complaint to address the concerns articulated by Defendant. (ECF Doc. No. 20 at
pp. 6-7). 	It contends that “[a]ny lingering dispute is of a substantive nature and should be
addressed through discovery, infringement/non-infringement and invalidity contentions, claim
construction, [and] summary judgment.” Id. at p. 7.
Defendant did not agree and responded by filing another Motion to Dismiss directed at
the First Amended Complaint in the early evening of July 24, 2017, and it later substantively
opposed the Motion for Leave to File a Second Amended Complaint. 	(ECF Doc. Nos. 21 and
23). Defendant again contends that Plaintiff fails to meet the applicable pleading standards and
that this case should be dismissed with prejudice.
Discussion
Here, Plaintiff proposed a Second Amended Complaint before Defendant moved to
dismiss the First Amended Complaint. 	Thus, it makes no sense for the Court to assess the
sufficiency of the First Amended Complaint. 	Accordingly, I recommend that Defendant’s
Motion to Dismiss (ECF Doc. No. 21) be DENIED as moot.
As to Plaintiff’s Motion for Leave to Amend (ECF Doc. No. 19), Defendant’s sole
objection is that the Motion should be denied as futile because the proposed Second Amended
Complaint does not comply with the applicable pleading standards. 	In determining whether a
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proposed amendment would be futile, the Court applies the same standard as it would apply to a
motion to dismiss pursuant to Rule 12(b)(6), Fed. R. Civ. P. Glassman v. Computervision Corp.,
90 F.3d 617, 623 (1st Cir. 1996). In particular, the Court must accept as true all allegations in
the Second Amended Complaint and draw all reasonable inferences in Plaintiff’s favor.
Aulson v. Blanchard, 83 F.3d 1, 3 (1st Cir. 1996). The Supreme Court restated the standard
as follows: “[o]nce a claim has been stated adequately, it may be supported by showing any
sets of facts consistent with the allegations in the complaint.” 	Bell Atl. Corp. v. Twombly,
550 U.S. 544, 546 (2007). 	Since Twombly, the Supreme Court further refined the pleading
requirements in Ashcroft v. Iqbal:
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.” 	A 	claim 	has 	facial
plausibility when the plaintiff pleads factual content that allows
the court to draw the reasonable inference that the defendant is
liable for the misconduct alleged. The plausibility standard is
not akin to a “probability requirement,” but it asks for more than
a sheer possibility that a defendant has acted unlawfully.
556 U.S. 662, 663 (2009). In applying this standard to facts as pled in a complaint, the First
Circuit recommends what it calls “a two-step pavane.” 	Rodriguez-Reyes v. Molina-
Rodriguez, 711 F.3d 49, 53 (1 st Cir. 2013). 	The Court must first identify and disregard the
complaint’s conclusory legal allegations and then determine whether or not the remaining
factual allegations state a plausible claim to relief. Id.
Counts I and III of the Second Amended Complaint bring claims of direct patent
infringement. In Count I, Plaintiff alleges that Defendant’s PD-140DS V-Pad (an electronic
musical drum) directly infringes at least Claim 15 of U.S. Patent No. 9,424,827 (the “827
Patent”). In Count III, Plaintiff alleges that Defendant’s KD-A22 Kick Drum Converter (an
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electronic converter for an acoustic bass drum) directly infringes at least Claim 1 of U.S.
Patent No. 8,039,724 (the “724 Patent”). 	To state a claim for direct patent infringement, a
plaintiff must plausibly allege that the infringing product “practices all elements of a patent
claim.” 	Lexington Luminance, LLC v. TCL Multimedia Tech. Holdings, Ltd., No. 16-cv-
11458-DJC, 2017 WL 3795769 at *4 (D. Mass. Aug. 30, 2017). The complaint must include
“sufficient detail” to place the alleged infringer on notice to enable it to answer and defend
itself. 	Id. (citing OpenTV, Inc. v. Apple, Inc., No. 15-cv-02008, 2016 WL 344845 at *3
(N.D. Cal. Jan. 28, 2016)). “[F]urther specificity is not required” and the Court need not go
further and assess the “substantive merits” of the infringement claims. Id. at *5.
While 	Plaintiff’s 	Original 	Complaint 	was 	bare 	on 	facts, 	the 	Second 	Amended
Complaint contains substantially more factual detail and states plausible direct infringement
claims. 	It contains narrative descriptions of how the accused products meet each limitation
of at least one claim per patent in dispute, including annotated photographs of the accused
products as well as references to Defendant’s website and owner’s manuals for product
descriptions. Plaintiff does not have to prove its infringement claims at this stage of the case.
Its burden is to state a plausible infringement claim which includes factual allegations
referencing each element of the patent claim in question. 	After thoroughly considering the
parties’ arguments, the Court concludes that Plaintiff has sufficiently done so in its Second
Amended Complaint.
Count II of the Second Amended Complaint brings a claim of indirect or induced
patent infringement. 	Plaintiff asserts that Defendant’s VH-13-MG Hi-Hat (an electronic
musical cymbal) contributes to Defendant’s customers’ infringement of at least Claim 1 of
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U.S. Patent No. 8,785,758 (the “758 Patent”). 	To state a claim for induced infringement,
Plaintiff must plausibly allege that Defendant “(1) knew of the patent; (2) actively and
knowingly aided and abetted another’s direct infringement; and (3) possessed specific
intent.” Rampage LLC v. Global Graphics SE, No. 16-cv-10691-ADB, 2017 WL 239328 at
*4 (D. Mass. Jan. 19, 2017).
As with Counts I and III, Plaintiff sufficiently alleges facts in support of its claim of
infringement of the 758 Patent. In addition, Plaintiff alleges that Defendant has actively and
knowingly induced sellers of the product, such as Guitar Center, to infringe the 758 Patent.
It asserts that Defendant knows that the VH-13-MG Hi-Hat must be used in conjunction with
a foot pedal, control shaft and/or cymbal stand, as depicted in the product manual. Thus, in
order to use the VH-13-MG Hi-Hat, Plaintiff contends that Defendant’s customers directly
infringe the 758 Patent when incorporating the foot pedal, control shaft and/or cymbal stand.
Further, 	Plaintiff 	alleges 	that 	Defendant’s 	inclusion 	of 	a 	clutch 1 with 	the 	product,
identification of compatible stands, and depictions of the product with a foot pedal in the
manual, further reflect that the product “is especially made or especially adapted for use in
an infringement of the 758 Patent.” (ECF Doc. No. 19-1 at ¶ 36).
After 	thoroughly 	considering 	the 	parties’ 	arguments, 	the 	Court 	concludes 	that
Plaintiff has sufficiently pled a claim of indirect infringement in Count II.
Conclusion
1 	The clutch allows the product to be attached to a hi-hat stand. (See ECF Doc. No. 19-1 at pp. 90-92).
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For 	the 	foregoing 	reasons, 	I 	recommend 	that 	Defendant’s 	Motion 	to 	Dismiss
Plaintiff’s First Amended Complaint (ECF No. 21) be DENIED as moot, and that Plaintiff’s
Motion for Leave to File a Second Amended Complaint (ECF Doc. No. 19) be GRANTED.
Any objection to this Report and Recommendation must be specific and must be filed with
the Clerk of the Court within fourteen days of its receipt. 	See Fed. R. Civ. P. 72(b); LR Cv 72.
Failure to file specific objections in a timely manner constitutes waiver of the right to review by the
District Court and the right to appeal the District Court’s decision. 	See United States v. Valencia-
Copete, 792 F.2d 4, 6 (1st Cir. 1986); Park Motor Mart, Inc. v. Ford Motor Co., 616 F.2d 603, 605
(1 st Cir. 1980).
/s/ Lincoln D. Almond
LINCOLN D. ALMOND
United States Magistrate Judge
October 24, 2017
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