{"id":1994,"date":"2018-02-27T13:04:57","date_gmt":"2018-02-27T18:04:57","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1994"},"modified":"2018-03-25T21:01:21","modified_gmt":"2018-03-26T01:01:21","slug":"the-purpose-of-a-motion-to-dismiss-is-to-test-the-sufficiency-of-the-complaint-not-to-decide-the-merits","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1994","title":{"rendered":"The Purpose of a\u00a0Motion to Dismiss is to Test the Sufficiency of the Complaint,\u00a0not to Decide the Merits"},"content":{"rendered":"

In Nalco Co. v. Chem-Mod, LLC<\/a>, [2017-1036] (February 27, 2018), the Federal Circuit reversed the district court’s dismissal of Nalco’s infringement\u00a0claims, and remanded for further proceedings.<\/p>\n

Nalco asserted\u00a0U.S. Patent No. 6,808,692 on\u00a0a method for the removal of\u00a0elemental mercury, a toxic pollutant, from the flue gas\u00a0created by combustion in coal-fired power plants. Among other things, the claims require “injecting a bromide compound that is a thermolabile
\nmolecular bromine precursor into said flue\u00a0gas.” The district court granted the motion to dismiss on direct\u00a0infringement because\u00a0\u201cthe Chem-Mod\u00a0Solution differs from the \u2019692 Patent in both the location\u00a0and method of application.”<\/p>\n

The Federal Circuit, however, agreed with Nalco,\u00a0that the fourth amended complaint plausibly alleges\u00a0direct infringement, noting Nalco is entitled to all inferences in its favor on its\u00a0theory that, when treated coal is injected into the furnace,\u00a0this constitutes the required injection of the bromine\u00a0precursor.\u00a0 The Federal Circuit further noted taht\u00a0But The Federal Circuit found that defendants\u2019 arguments boil down\u00a0to objections to Nalco\u2019s proposed claim construction for\u00a0\u201cflue gas,\u201d a dispute not suitable for resolution on a motion\u00a0to dismiss.<\/p>\n

The Federal Circuit noted that the disputes between the parties\u00a0hinge on where \u201cflue gas\u201d may be located within the\u00a0power plant and what limitations are appropriate on\u00a0where \u201cinjecting\u201d may occur. It is not appropriate to\u00a0resolve these disputes, or to determine whether the method\u00a0claimed in the \u2019692 patent should be confined to the\u00a0preferred embodiment, on a Rule 12(b)(6) motion, without\u00a0the benefit of claim construction.\u00a0\u00a0The purpose of a\u00a0motion to dismiss is to test the sufficiency of the complaint,\u00a0not to decide the merits.<\/p>\n

The Federal Circuit also reversed the dismissal of the joint infringement claim, noting that direct infringement under \u00a7 271(a) occurs where all
\nsteps of a claimed method are performed by or attributable\u00a0to a single entity.\u00a0 The key inquiry\u00a0where more than one actor is involved in practicing the\u00a0steps is whether \u201cthe acts of one are attributable to the
\nother such that a single entity is responsible for the\u00a0infringement.\u00a0 The Federal Circuit noted that it\u00a0looks for evidence that a\u00a0third party hoping to obtain access to certain benefits can\u00a0only do so if it performs certain steps identified by the\u00a0defendant, and does so under the terms prescribed by the\u00a0defendant.\u00a0 After reviewing Nalco’s allegations,\u00a0the Federal Circuit concluded that these allegations adequately plead
\nattribution of the testing activities to defendants.<\/p>\n

Regarding the allegations of infringement under the doctrine of equivalents, the Federal Circuit found that\u00a0Nalco explicitly incorporated detailed infringement\u00a0contentions explaining its doctrine of equivalents claim,\u00a0and in particular how Defendants\u2019 use of the Chem-Mod
\nSolution method satisfies the \u201cinjecting\u201d claim element, in the fourth amended complaint.\u00a0 The Federal Circuit said that Defendants have failed to explain\u00a0why these allegations do not adequately state a claim
\nunder the doctrine of equivalents, and we see no reason\u00a0why these allegations are insufficient to plead infringement\u00a0by equivalents, and conluded that\u00a0Nalco\u2019s doctrine of equivalents claim\u00a0adequately states a claim for infringement under the\u00a0Twombly and Iqbal pleading standard.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Nalco Co. v. Chem-Mod, LLC, [2017-1036] (February 27, 2018), the Federal Circuit reversed the district court’s dismissal of Nalco’s infringement\u00a0claims, and remanded for further proceedings. Nalco asserted\u00a0U.S. Patent No. 6,808,692 on\u00a0a method for the removal of\u00a0elemental mercury, a toxic … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[38],"tags":[],"class_list":["post-1994","post","type-post","status-publish","format-standard","hentry","category-pleading"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1994","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1994"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1994\/revisions"}],"predecessor-version":[{"id":1995,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1994\/revisions\/1995"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1994"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1994"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1994"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}