Opinion
1:22-CV-04023-ELR
2023-09-27
KARMAGREEN, LLC, Plaintiff, v. UNITED WHOLESALE & DISTRIBUTOR INC., Defendant.
Corey Weinstein, Pro Hac Vice, David E. Weslow, Pro Hac Vice, Neal Seth, Pro Hac Vice, Wesley E. Weeks, Pro Hac Vice, Wiley Rein LLP, Washington, DC, Troy R. Covington, Bloom Parham, LLP, Atlanta, GA, for Plaintiff. L. Clint Crosby, Tyler Preston Bishop, Baker Donelson Bearman Caldwell & Berkowitz, P.C., Atlanta, GA, for Defendant.
Corey Weinstein, Pro Hac Vice, David E. Weslow, Pro Hac Vice, Neal Seth, Pro Hac Vice, Wesley E. Weeks, Pro Hac Vice, Wiley Rein LLP, Washington, DC, Troy R. Covington, Bloom Parham, LLP, Atlanta, GA, for Plaintiff. L. Clint Crosby, Tyler Preston Bishop, Baker Donelson Bearman Caldwell & Berkowitz, P.C., Atlanta, GA, for Defendant.
ORDER
Eleanor L. Ross, United States District Judge
Presently before the Court is Defendant United Wholesale & Distributor Inc.'s "Motion to Dismiss." [Doc. 8]. For the reasons discussed below, the Court denies Defendant's motion. I. Background
For purposes of the present motion only, the Court "accept[s] the allegations in the complaint as true and constru[es] them in the light most favorable to the plaintiff." Hill v. White, 321 F.3d 1334, 1335 (11th Cir. 2003).
This case concerns the alleged infringement of four (4) related U.S. Patents that are owned by Plaintiff Karmagreen, LLC (collectively, the "Asserted Patents"). The Asserted Patents are U.S. Patents Nos. 10,624,902 (the " '902 Patent"); 11,324,754 (the " '754 Patent"); 11,324,755 (the " '755 Patent"); and 11,318,146 (the " '146 Patent"). The Asserted Patents all generally concern methods for creating dietary supplements composed of various natural and synthetic ingredients. [Docs. 1-1, 1-2, 1-3, 1-4]. Plaintiff allegedly used these methods to create its TIANAA dietary products. See Compl. ¶¶15-17 [Doc. 1]. The claims at issue in the Asserted Patents (the "Asserted Claims") are as follows:
Plaintiff attached the Asserted Patents to its Complaint. [See Docs. 1-1, 1-2, 1-3, 1-4]. Because "[a] district court can generally consider exhibits attached to a complaint in ruling on a motion to dismiss," the Court finds it appropriate to consult the Asserted Patents at this stage. See Hoefling v. City of Mia., 811 F.3d 1271, 1277 (11th Cir. 2016).
Every "patent includes one or more 'claims,' which particularly point out and distinctly claim the subject matter which the [patent] applicant regards as his invention." See Markman v. Westview Instruments. Inc., 517 U.S. 370, 373, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) (cleaned up) (quoting 35 U.S.C. § 112).
A claim covers and secures a process, a machine, a manufacture, a composition of matter, or a design, but never the function or result of either, nor the scientific explanation of their operation. The claim defines the scope of a patent grant and functions to forbid not only exact copies of an invention, but products that go to the heart of an invention but avoids the literal language of the claim by making a noncritical change.Id. at 373-74, 116 S.Ct. 1384. In this order, the Court uses the word "claim" in the "sense peculiar to patent law." See id. at 374, 116 S.Ct. 1384.
| Patent | Claim | Description |
|---|---|---|
| '902 | 1 | A method of forming a dietary supplement comprising steps of creating a composition of matter comprised of tianeptine sodium, sakae naa, stearate, and silicate placed in a capsule |
| '902 | 4 | Same as Claim No. 1 with tianeptine free acid |
| '902 | 7 | Same as Claim No. 4 with kava |
| '754 | 1 | A method of forming a dietary supplement comprising steps of creating a composition of matter comprised of tianeptine and sakae naa provided in one of a liquid and a solid form |
| '754 | 2 | Same as Claim No. 1 provided by filling a container with the composition of matter |
| '754 | 27 | Same as Claim No. 1 with kava, CDP choline, and alpha GPC |
| '754 | 28 | Same as Claim No. 27 provided by filling a container with the composition of matter |
| '755 | 1 | A method of forming a dietary supplement comprising of steps of creating a composition of matter comprised of tianeptine and kava provided in one of a liquid and a solid form |
| '755 | 2 | Same as Claim No. 1 provided by filling a container with the composition of matter |
| '146 | 1 | A method of forming a dietary supplement comprising of steps of creating a composition of matter composed of sakae naa and kava provided in one of a liquid and a solid form |
| '146 | 2 | Same as Claim No. 1 provided by filling a capsule with the composition of matter |
Plaintiff initiated this suit on October 6, 2022, alleging (1) that certain of Defendant's dietary supplements—specifically, its Pegasus, TD Mega, TD Plus, and TD Red brands (the "Accused Products")—directly infringe on the Asserted Patents and Asserted Claims and (2) that Defendant's infringement is willful. See id. ¶¶ 19-33. On December 27, 2022, Defendant filed its instant "Motion to Dismiss." [Doc. 8]. Plaintiff opposes Defendant's motion. [Doc. 23]. Having been fully briefed, Defendant's motion to dismiss is now ripe for the Court's review. Below, the Court begins with the applicable legal standard.
By an Order dated February 7, 2023, the Court stayed pre-discovery deadlines and the start of discovery pending resolution of Defendant's instant motion. [Doc. 28].
II. Legal Standard
To survive a Rule 12(b)(6) 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.' " See Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007)). Put differently, a plaintiff must plead "factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." See id. This so-called "plausibility standard" is not akin to a probability requirement; rather, the plaintiff must allege sufficient facts such that it is reasonable to expect that discovery will lead to evidence supporting the claim. See id.
When considering a 12(b)(6) motion to dismiss, the Court must accept as true the allegations set forth in the complaint, drawing all reasonable inferences in the light most favorable to the plaintiff. See Twombly, 550 U.S. at 555-56, 127 S.Ct. 1955; United States v. Stricker, 524 F. App'x 500, 505 (11th Cir. 2013) (per curiam). Even so, a complaint offering mere "labels and conclusions" or "a formulaic recitation of the elements of a cause of action" is insufficient. See Ashcroft, 556 U.S. at 678, 129 S.Ct. 1937 (quoting Twombly, 550 U.S. at 555, 127 S.Ct. 1955); ac cord Fin. Sec. Assurance, Inc. v. Stephens, 500 F.3d 1276, 1282-83 (11th Cir. 2007). Rather, "a pleading must contain a short and plain statement of the claim showing that the pleader is entitled to relief" so as to satisfy "the pleading requirements of Rule 8." See Parker v. Brush Wellman, Inc., 377 F. Supp. 2d 1290, 1294 (N.D. Ga. 2005) (citing FED. R. CIV. P. 8(a)(2)).
III. Discussion
By its instant motion, Defendant contends that Plaintiff's claims are due to be dismissed because the Asserted Patents are invalid given that they involve "administration of known synthetic and/or natural components to achieve a known effect [which] is not eligible for patent protection." [See Doc. 8 at 2]. Defendant further asserts that Plaintiff fails to plausibly allege willful infringement. [See id. at 22-23]. In its response brief opposing Defendant's motion, Plaintiff maintains that the Asserted Patents are directed at patent-eligible subject matter because they involve the creation of compositions of matter that provide beneficial effects and "synergistic benefits" beyond what their constituent ingredients naturally provide alone or as part of a normal diet. [See Doc. 23 at 5-9]. The Court first discusses two (2) preliminary matters before assessing the validity of the Asserted Patents and the sufficiency of Plaintiff's allegations regarding willful infringement.
A. Preliminary Matters
First, because the subject matters of the Asserted Patents are substantially similar and Defendant contends that the Asserted Patents are all invalid for the same reason, the Court finds that "addressing each claim of the [A]sserted [P]atents is unnecessary." See Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n, 776 F.3d 1343, 1348 (Fed. Cir. 2014) (finding that the district court did not need to address each disputed claim and could instead choose representative claims); [Doc. 8 at 8, 13]. Instead, as Defendant recommends, the Court evaluates Defendant's present motion to dismiss by examining Claim 1 of the '902 Patent and the purported infringement of the same as representative of the Asserted Patents and Asserted Claims. [See Docs. 8 at 9 (referring to the '902 Patent as the "priority patent"), 10-18 (arguing that Claim 1 of the '902 Patent is invalid), 18-22 (arguing that the Asserted Patents and Asserted Claims are invalid as a continuation of and for the same reasons as Claim 1 of the '902 Patent); see also generally Doc. 23 (referring to the Asserted Patents together and not opposing Defendant's recommendation)]. Second, at this stage, the Court accepts Plaintiff's proposed claim construction in analyzing the validity of the Asserted Patents and Asserted Claims. See Nat. Alts. Int'l, Inc. v. Creative Compounds, LLC, 918 F.3d 1338, 1343 (Fed. Cir. 2019) (noting that the district court properly accepted the non-movant's claim construction when evaluating a motion for judgment on the pleadings).
B. Validity of Claim 1 of the '902 Patent
Pursuant to 35 U.S.C. § 101, "[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent[.]" See 35 U.S.C. § 101; see also U.S. Const. art. I, § 8, cl. 8 (providing Congress the power to "promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their writings and discoveries"). "The patent laws promote . . . progress by offering inventors exclusive rights for a limited period as an incentive for their inventiveness and research effort" in the hope that such inventions "will have a positive effect on society through the introduction of new products and processes of manufacture into the economy, and the emanations by way of increased employment and better lives for our citizens." Diamond v. Chakrabarty, 447 U.S. 303, 307, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980) (quoting Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480-81, 94 S.Ct. 1879, 40 L.Ed.2d 315 (1974)).
"This is not to suggest that § 101 has no limits or that it embraces every discovery." Id. at 309, 100 S.Ct. 2204. The United States Supreme Court has "long held that this provision contains an important exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589, 133 S.Ct. 2107, 186 L.Ed.2d 124 (2013) (alteration adopted) (quoting Mayo Collaborative Servs. v. Prometheus Lab'ys, Inc., 566 U.S. 66, 70, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012)); accord Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S. 208, 216, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014) ("We have interpreted § 101 and its predecessors in light of this exception for more than 150 years."). Such an exception exists for these "basic tools of scientific and technological work" because to permit their "monopolization . . . through the grant of a patent might tend to impede innovation more than it would tend to promote it." See Mayo, 566 U.S. at 71, 132 S.Ct. 1289 (quoting Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972)). Indeed, such subject matter is "part of the storehouse of knowledge of all men," and, as the "manifestations of laws of nature, is free to all men and reserved exclusively to none." See Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 92 L.Ed. 588 (1948). For example, "a new mineral discovery in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law that E=mc²; nor could Newton have patented the law of gravity." Chakrabarty, 447 U.S. at 309, 100 S.Ct. 2204; accord Myriad Genetics, 569 U.S. at 591, 133 S.Ct. 2107 ("Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.").
However, this rule proscribing patents on naturally occurring things is not absolute. "[A]ll inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas"; "too broad an interpretation of this exclusionary principle could eviscerate patent law." See Mayo, 566 U.S. at 71, 132 S.Ct. 1289; see also Alice, 573 U.S. at 217, 134 S.Ct. 2347 ("[A]n invention is not rendered ineligible for patent simply because it involves an abstract concept."). Instead, "patent protection strikes a delicate balance between creating 'incentives that lead to creation, invention, and discovery' and 'impeding the flow of information that might permit, indeed spur, invention.' " See Myriad Genetics, 569 U.S. at 590, 133 S.Ct. 2107 (quoting Mayo, 566 U.S. at 92, 132 S.Ct. 1289).
Accordingly, a court must distinguish between patents "that claim the 'building blocks' of human ingenuity and those that integrate the building blocks into something more, thereby 'transforming' them into a patent-eligible invention." See Alice, 573 U.S. at 217, 134 S.Ct. 2347 (alterations adopted) (quoting Mayo, 566 U.S. at 89, 132 S.Ct. 1289). Patentable inventions include those that "come from the application of the law of nature to a new and useful end." See Funk Bros., 333 U.S. at 130, 68 S.Ct. 440; Diamond v. Diehr, 450 U.S. 175, 187, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981) (stating that "an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection"). To that end, the Supreme Court has established a two (2)-pronged inquiry "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice, 573 U.S. at 217, 134 S.Ct. 2347; Mayo, 566 U.S. at 76-79, 132 S.Ct. 1289. First, a court must "determine whether the claims at issue are directed to one of those patent-ineligible concepts." See Alice, 573 U.S. at 217, 134 S.Ct. 2347; see also Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016) ("At step one, it is not enough to merely identify a patent-ineligible concept underlying the claim; [a court] must determine whether that patent-ineligible concept is what the claim is 'directed to[.]' "). If the claims are indeed directed to a patent-ineligible concept, the court next "consider[s] the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Alice, 573 U.S. at 217, 134 S.Ct. 2347 (quoting Mayo, 566 U.S. at 78-80, 132 S.Ct. 1289). Put differently, this second step is "a search for an 'inventive concept'—i.e.[,] an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.' " Id. at 217-18, 134 S.Ct. 2347 (cleaned up) (quoting Mayo, 566 U.S. at 72-73, 132 S.Ct. 1289). "[T]o transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words 'apply it.' " Mayo, 566 U.S. at 73, 78, 132 S.Ct. 1289 ("Archimedes [could not] have secured a patent for his famous principle of flotation by claiming a process consisting of simply telling boat builders to refer to that principle in order to determine whether an object will float.").
The Court begins by assessing whether Claim 1 of the '902 Patent is directed to patent-eligible subject matter. See Alice, 573 U.S. at 217, 134 S.Ct. 2347. Upon review and consideration, at this stage, the Court finds that Claim 1 of the '902 Patent is directed at patent-eligible subject matter. Claim 1 of the '902 Patent provides a method for creating a dietary supplement in the form of a composition of matter by combining tianeptine sodium, sakae naa, stearate, and silicate. [See Doc. 1-1 at 6:8-16]. The '902 Patent prescribes various dosages for each of the ingredients that compose the subject dietary supplement. [See id.] At this procedural juncture, the Court can plausibly infer that Claim 1 of the '902 Patent is not directed to its individual, constituent ingredients or the natural, independent effects of those ingredients that occur regardless of any combination or chemical interaction. Rather, it is directed to creating a dietary supplement composed of multiple ingredients that "have effects that are greater than the sum of the parts[.]" See Creative Compounds, 918 F.3d at 1348-49 (reversing a grant of judgment on the pleadings in a case involving patents incorporating two (2) natural ingredients in "particular dosage forms" and used in a manner to achieve results that the ingredients alone as they naturally occur potentially could not accomplish and finding that the subject patents were directed to patent-eligible subject matter); Alice, 573 U.S. at 217, 134 S.Ct. 2347 (distinguishing between patents "that claim the 'building blocks' of human ingenuity and those that integrate the building blocks into something more, thereby 'transforming' them into a patent-eligible invention").
The fact that tianeptine is a manmade complex not found in nature is not dispositive of whether Claim 1 of the '902 Patent is directed at patent-eligible subject matter. See Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, 275 F. Supp. 3d 306, 310 (D. Mass. 2017) ("the use of a man-made complex does not transform the subject matter of the patent").
For example, the tianeptine sodium in the '902 Patent "has both antidepressant and anxiolytic properties" that are used to treat anxiety and depression, among other things. [See Doc. 1-1 at 3:12-14]. However, Claim 1 of the '902 Patent also contains sakae naa, which "provide[s] energizing, stimulating, and mood lifting" effects and is "avoided where relaxation alone is desired." [See id. at 3:55-58]. As Plaintiff contends, "[b]y combining tianeptine and [s]akae [n]aa, these dietary supplements are directed to providing anxiety relief while avoiding excessive relaxation," plausibly achieving an effect that neither ingredient could produce alone. [See Doc. 23 at 8]. Thus, the Court can draw the reasonable inference that the method of combining ingredients prescribed in Claim 1 of the '902 Patent "could have synergistic effects allowing for outcomes that the individual components could not have" on their own, and therefore, Claim 1 of the '902 Patent does not "merely stat[e] [or observe] a law of nature[.]" See Creative Compounds, 918 F.3d at 1345, 1349 (concluding that judgment on the pleadings was not warranted where the combination of two (2) naturally occurring ingredients (glycine and beta-alanine) could "have effects that are greater than the sum of the parts"). And simply because the '902 Patent involves and applies natural ingredients and relies on natural processes does not mean it is impermissibly directed to them. See id. at 1346 ("The Supreme Court has also rejected the idea that claims to methods making use of natural products are equivalent to claims to the natural products themselves."); Mayo, 566 U.S. at 71, 132 S.Ct. 1289 ("all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas"); see also CellzDirect, 827 F.3d at 1049 (remarking that if every process was deemed "directed to" the "natural ability . . . to undergo the process[,]" producing new compounds, treating cancer with chemotherapy, and treating headaches with aspirin would all be patent-ineligible (emphasis in original)).
By way of another example, the '755 Patent combines tianeptine and kava in order to "provid[e] a synergistic anxiolytic effect greater than could be achieved by using either ingredient alone." [See Doc. 23 at 8].
Additionally, according to Plaintiff's preferred claim construction, the term "dietary supplement" is to be construed at this stage as an "addition to the diet, which is not natural or conventional food, and provides a beneficial effect." [See Doc. 23 at 3]; Creative Compounds, 918 F.3d at 1343. Thus, the '902 Patent's function as a dietary supplement to unnaturally add to the diet supports the inference that it is "using [ ] natural product[s] in unnatural quantities to alter a patient's natural state" and is therefore directed to patent-eligible subject matter. See Creative Compounds, 918 F.3d at 1346 (finding that a patent involving beta-alanine (which exists in nature) is directed at patent-eligible subject matter because the beta-alanine quantities being administered "greatly exceed[ ] natural levels"). Put differently, because it concerns a process for creating a dietary supplement, the '902 Patent is plausibly "directed to providing beneficial effect beyond what the [constituent] ingredients [of the relevant supplement] would provide as part of a normal human diet, and therefore, require 'something more' than just the effects provided by nature." [See Doc. 23 at 7].
Thus, construing all reasonable inferences in Plaintiff's favor as it must at this stage, see Twombly, 550 U.S. at 555-56, 127 S.Ct. 1955, the Court finds that Claim 1 of the '902 Patent is not only or primarily directed to "simple combinations of known substances to achieve known results" akin to an unpatentable observation or discovery of a naturally occurring ingredient, process, or phenomenon. [See Doc. 29 at 5]. Instead, the Court finds that Plaintiff has, at minimum, "integrated" the ingredients in Claim 1 of the '902 Patent "into something more, thereby transforming them into a patent-eligible invention." See Alice, 573 U.S. at 217, 134 S.Ct. 2347; Creative Compounds, 918 F.3d at 1346-49.
The cases Defendant cites to the contrary are inapposite. First, in Mayo Colla. Services v. Prometheus Lab's, Inc., the Supreme Court considered patents that described the correlative relationship between the number of metabolites formed in a patient's bloodstream and the appropriate dosage of the drug thiopurine. See 566 U.S. 66, 132 S.Ct. 1289, 1295-96, 182 L.Ed.2d 321 (2012). The Court found that the patents were directed to the unpatentable laws of nature because they described the natural "relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove ineffective or cause harm," a "relation [that] is a consequence of the ways in which thiopurine compounds are metabolized by the body—entirely natural processes." See id. at 1296-97. Put differently, the Court found that the patents were invalid because they attempted to monopolize the observation of a natural phenomenon and relationship that "exists in principle apart from any human action." See id.
Second, Defendant points to the Supreme Court's opinion in Funk Brothers Seed Co. v. Kalo Inoculant Co. [See Doc. 8 at 7-8] (citing 333 U.S. at 128, 68 S.Ct. 440). In that case, the Supreme Court assessed a patent concerning a mixture of bacteria that "d[id] not exert a mutually inhibitive effect on each other," defying the previously held notion that certain strands of bacteria could not be mixed because they would be inhibitory. See id. 333 U.S. 127, 129-30, 68 S.Ct. 440, 92 L.Ed. 588 (1948). The Court held that the patent claiming "certain strains of each species of these bacteria can be mixed without harmful effect to the properties of either is a discovery of their qualities of non-inhibition" and was invalid because it amounted to a mere "discovery of some of the handiwork of nature[.]" See id. at 131, 68 S.Ct. 440. Indeed, the combination of the bacteria at issue in Funk Brothers Seed Co. was "hardly more than an advance in . . . packaging" because it did not change the bacteria's use, utility, performance, or natural functioning; the bacteria "serve[d] the ends nature originally provided and act[ed] quite independently of any effort of the patentee" who, in essence, discovered a "natural principle itself." See id. at 131-32, 68 S.Ct. 440.
The case at hand is distinguishable for several reasons. First, unlike the patent at issue in Mayo, Claim 1 of the '902 Patent is not directed to an independently occurring natural process, known effects of individual ingredients, or a relationship between an ingredient and the human body. Instead, the Court can plausibly infer that Claim 1 of the '902 Patent's method is directed to the combination of certain ingredients in particular dosages in order to evoke unique benefits that do not occur as independent, known effects of individual ingredients. "The fact that the human body responds to the treatment through biochemical processes does not convert the claim into an ineligible one." See Creative Compounds, 918 F.3d at 1345; see also CellzDirect, 827 F.3d at 1049 (noting that the "natural ability of the subject matter to undergo the process does not make the claim 'directed to' that natural ability" (emphasis in original)). Similarly, unlike the patent in Funk Brothers Seed Co., Claim 1 of the '902 Patent does not merely relay a newly discovered fact about the natural world or combine ingredients that have no effect on each other and function in the same manner despite their combination. See Creative Compounds, 918 F.3d at 1349 (distinguishing Funk Brothers Seed Co. for similar reasons). As explained above, at this juncture, the Court can plausibly infer that the '902 Patent's combination of ingredients achieves benefits and produces effects beyond those known, natural reactions created by the same ingredients in isolation. See Alice, 573 U.S. at 217, 134 S.Ct. 2347.
The Court in Mayo also considered the patents at issue at the summary judgment stage with the benefit of a developed record, and thus, that case does not present an apt comparison for Defendant's arguments, which are directed at the pleadings. See 566 U.S. at 76, 132 S.Ct. 1289.
In sum, the Court finds that Plaintiff has, at minimum, "integrated" the ingredients in Claim 1 of the '902 Patent "into something more, thereby transforming them into a patent-eligible invention." See id. And because the Asserted Patents and Claims are directed at patent-eligible subject matter, the Court need not proceed to the second step of the Alice inquiry. Id. at 221, 134 S.Ct. 2347. The Court denies Defendant's motion on this issue.
C. Willful Infringement
Defendant contends that Plaintiff does not properly allege that Defendant's supposed infringement of the Asserted Patents was willful. [See Doc. 8 at 22-23]. Specifically, Defendant asserts that it could not have willfully infringed Plaintiff's '754, '755, or '164 Patents because it was not on notice of them. [See id.] Defendant also argues that Plaintiff cannot adequately state a willful infringement claim based on Defendant's purported awareness of the '902 Patent from a separate litigation. [See id.]
Pursuant to 35 U.S.C. § 284, a court "may increase damages up to three times the amount found or assessed" where the infringement was "willful, wanton, malicious, [in] bad faith, deliberate, consciously wrongful, flagrant, or . . . characteristic of a pirate." See Halo Elecs., Inc. v. Pulse Elecs. Inc., 579 U.S. 93, 136, 136 S.Ct. 1923, 195 L.Ed.2d 278 (2016). "The concept of 'willfulness' requires a jury to find no more than deliberate or intentional infringement." Eko Brands, LLC v. Adrian Rivera Maynez Enters., Inc., 946 F.3d 1367, 1378 (Fed. Cir. 2020). "The question of enhanced damages is addressed by the court once an affirmative finding of willfulness has been made." Id.
Upon review and consideration, the Court finds that Plaintiff's allegations of willful infringement are sufficient to proceed. Plaintiff alleges that Defendant "possessed actual knowledge of the [ ]'902 Patent from at least as early as November 2020 following receipt of a subpoena from Plaintiff in separate litigation" and that Defendant still made the deliberate choice to sell the Accused Products. See Compl. ¶¶ 20-25, 34; Elko Brands, LLC, 946 F.3d at 1378. As for the '754, '755, and '164 Patents, Plaintiff alleges that Defendant was "tracking" Plaintiff's products and "modeling" its own products after Plaintiff's. See Compl. ¶¶ 21-25, 35-40. As Plaintiff explains, although the '754, '755, and '164 Patents were not issued until May 2022, their underlying applications were published in July 2020. [See Docs. 23 at 15; 1-2 at 1; 1-3 at 1; 1-4 at 1]. Therefore, accepting Plaintiff's allegations as true, the Court can plausibly infer that Defendant was tracking the '754, '755, and '164 Patents and deliberately chose to infringe on those patents through its Accused Products. See Merrill Mfg. Co. v. Simmons Mfg. Co., 553 F. Supp. 3d 1297, 1307 (N.D. Ga. 2021) (denying a motion to dismiss a willful infringement claim).
Although Defendant argues in its reply brief that actual notice is required to state a claim for willful infringement, the cases Defendant cites in support concern 35 U.S.C. § 287, a provision that limits damages for infringement that occurred after the infringer received actual notice and where the patented product is not marked with the word "patent." See Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 950 F.3d 860, 864 (Fed. Cir. 2020). Notably, "[t]he notice provisions of § 287 do not apply to patents directed to processes or methods." Id.
IV. Conclusion
For the foregoing reasons, the Court DENIES Defendant's "Motion to Dismiss." [Doc. 8]. The Court LIFTS the previously imposed stay of proceedings and DIRECTS Defendant to Answer Plaintiff's Complaint within fourteen (14) days from the date of this order. See FED. R. CIV. P. 12(a)(4)(A). The Court further DIRECTS the Parties to, within thirty (30) days from the date of this order, submit their Joint Preliminary Report and Discovery Plan in accordance with this district's Local Rule 16.2. See LR 16.2, NDGa.
SO ORDERED, this 27th day of September, 2023.