Case 1:16-cv-02690-AT Document 115-1 Filed 07/28/16 Page 1 of 7
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`Exhibit A
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`Case 1:16-cv-02690-AT Document 115-1 Filed 07/28/16 Page 2 of 7
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`Case No.
`Title
`
`CIVIL MINUTES - GENERAL
`June 20, 2016
`SACV 15-1561-AG(Ex)
`Date
`EMAZING LIGHTS, LLC v. RAMIRO MONTES DE OCA, ET AL.
`
`Present: The Honorable
`Lisa Bredahl
`Deputy Clerk
`Attorneys Present for Plaintiffs:
`
`ANDREW J. GUILFORD
`Not Present
`Tape No.
`Court Reporter / Recorder
`Attorneys Present for Defendants:
`
`Proceedings:
`
`[IN CHAMBERS] ORDER GRANTING DEFENDANTS’
`MOTION TO DISMISS
`
`Plaintiff Emazing Lights, LLC (“Plaintiff” or “Emazing”) initiated the present action in
`September 2015. (Dkt. 1.) In the original complaint, Plaintiff alleged that Ramiro Montes de
`Oca and Quantum Hex, LLC (“Quantum Defendants”) infringed U.S. Patent No. 9,148,931
`(“the ’931 Patent”). Plaintiff then filed an amended complaint and added three more
`defendants: Rave Ready, LLC, KandeKreations, LLC, and OLS Com, LLC dba Orbit Light
`Show (“Distributor Defendants”) (First Amended Complaint, Dkt. 28.)
`
`On May 9, 2016, RaveReady filed a motion to dismiss all causes of action against it under
`Rule 12(b)(6) and 35 U.S.C. § 299 (“Motion,” Dkt. 50.) Shortly thereafter, KandeKreations
`filed a joinder. (Dkt. 56.) Plaintiff opposes the Motion. (“Opposition,” Dkt. 54.)
`
`The Court GRANTS Defendants’ Motion.
`
`1. LEGAL STANDARD
`
`A court will grant a motion to dismiss if the complaint does not allege claims upon which
`relief can be granted. Fed. R. Civ. P. 12(b)(6). A complaint must contain “a short and plain
`statement of the claim showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2).
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`Case 1:16-cv-02690-AT Document 115-1 Filed 07/28/16 Page 3 of 7
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`Case No.
`Title
`
`CIVIL MINUTES - GENERAL
`June 20, 2016
`SACV 15-1561-AG(Ex)
`Date
`EMAZING LIGHTS, LLC v. RAMIRO MONTES DE OCA, ET AL.
`
`In analyzing the complaint’s sufficiency, a court must “accept[] all factual allegations in the
`complaint as true and constru[e] them in the light most favorable to the nonmoving party.”
`Skilstaf, Inc. v. CVS Caremark Corp., 669 F.3d 1005, 1014 (9th Cir. 2012).
`
`2. DISCUSSION
`
`2.1
`
`Local Rule 7-3
`
`Emazing claims that RaveReady failed to comply with Local Rule 7-3, which provides that,
`“counsel contemplating the filing of any motion shall first contact opposing counsel to
`discuss thoroughly, preferably in person, the substance of the contemplated motion and any
`potential resolution.” (Civil Local Rule 7-3.)
`
`RaveReady admits that it did not discuss the substance of the contemplated Motion with
`Plaintiff. It alleges, however, that its counsel attempted to contact Plaintiff’s counsel
`numerous times and in numerous ways before filing the Motion, but that Plaintiff’s counsel
`did not respond in a timely manner. (Dkt. 50 at 4-5.) Emazing disputes this in a declaration.
`
`Emazing has not alleged any prejudice caused by the failure to meet and confer. Accordingly,
`the Court elects to consider the Motion on the merits. See Wilson–Condon v. Allstate Indem. Co.,
`No. CV 11–05538 GAF (PJWx), 2011 WL 3439272, at *1 (C.D. Cal. Aug. 4, 2011)
`(“Nonetheless, Allstate does not appear to have suffered any prejudice from Plaintiff's failure
`to meet and confer sufficiently in advance . . . Thus, it appears that no prejudice will result if
`the Court considers the motion to remand on the merits notwithstanding Plaintiff's failure to
`comply with Local Rule 7–3.”).
`
`2.2 Dismissal under 12(b)(6)
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`2.1.1
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`Indirect Infringement Claims
`
`Defendants argue that “the Amended Complaint does not provide ‘fair notice’ as to enable
`them to defend itself effectively” because it asserts direct, contributory, induced and willful
`infringement in one combined infringement count against them (Dkt. 50 at 5.) In response,
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`Case 1:16-cv-02690-AT Document 115-1 Filed 07/28/16 Page 4 of 7
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`Case No.
`Title
`
`CIVIL MINUTES - GENERAL
`June 20, 2016
`SACV 15-1561-AG(Ex)
`Date
`EMAZING LIGHTS, LLC v. RAMIRO MONTES DE OCA, ET AL.
`
`Plaintiff clarifies that the Amended Complaint does not allege contributory or induced
`infringement claims against Defendants. (Dkt. 54 at 7 n.2.) Nevertheless, Defendants reply
`that the second claim for relief against them is ambiguous and fails to provide fair notice.
`
`In light of Emazing’s admission, the Court GRANTS the Motion to Dismiss to the extent
`the Amended Complaint alleges indirect infringement against RaveReady and
`KandeKreations.
`
`2.1.2 Willful Infringement Claim
`
`Defendants argue that Plaintiff has not sufficiently pleaded a claim for willful infringement.
`They rely on the Federal Circuit decision in Seagate and contend that the Amended
`Complaint must include facts to show that “the infringer acted despite an objectively high
`likelihood that its actions constituted infringement of a valid patent.” (Dkt. 50-1 at 6) (citing
`In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007). The Court observes that the
`Supreme Court has recently rejected the Seagate framework concerning an award of enhanced
`damages under 35 U.S.C. § 284. See Halo, Inc. v. Pulse, Inc., Nos. 14-1513, 14-1520, __ U. S.
`__, 2016 WL 3221515 (2016). Even under the more relaxed standard, however, the Court
`finds that the Amended Complaint lacks sufficient facts to state a cause of action for willful
`infringement.
`
`
`To satisfy Twombly and Iqbal pleading standards, “a complaint must contain sufficient factual
`matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v.
`Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)).
`“A ‘bare recitation of the required legal elements for willful infringement’ or a ‘mere
`allegation, without more,’ that Defendants knew of the patents-in-suit will not survive a Rule
`12(b)(6) motion.” Irori Techs., Inc. v. Luminex Corp, No. 13-CV-2647, 2014 WL 769435, at *2
`(S.D. Cal. Feb. 25, 2014) (citation omitted).
`
`Here, only three statements in the amended complaint address willful infringement. First,
`“[Defendant’s] infringements of the Subject Patent. . . are willful, wanton, deliberate, without
`license, and with full knowledge of Plaintiff’s rights and ownership therein.” (Dkt. 28 ¶ 38.)
`Second, “[Defendant] acted in bad faith, in a knowing, willful, malicious, fraudulent and
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`Case 1:16-cv-02690-AT Document 115-1 Filed 07/28/16 Page 5 of 7
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`Case No.
`Title
`
`CIVIL MINUTES - GENERAL
`June 20, 2016
`SACV 15-1561-AG(Ex)
`Date
`EMAZING LIGHTS, LLC v. RAMIRO MONTES DE OCA, ET AL.
`
`oppressive manner, and with the intent and purpose of advancing their own gain at the direct
`expense of Plaintiff’s rights . . . .” (Dkt. 28 ¶ 41.) Third, “Plaintiff has provided written notice
`to each of Defendants of their infringing actions and has demanded that Defendants cease
`and desist from their wrongful activities.” (Dkt. 54 at 7.)
`
`The first two statements present legal conclusions without factual basis and are precisely the
`type of allegation deemed insufficient under the Twombly/Iqbal standard. On its face, the third
`statement also lacks an adequate factual basis to make a plausible allegation that the
`Defendants knew about the ’931 Patent and acted in a manner that amounted to willful
`infringement. Although Plaintiff has attached copies to its Opposition of the written notice
`allegedly sent to Defendants (Dkt. 55-1), a court generally cannot consider material outside
`the complaint when ruling on a motion to dismiss. Arpin v. Santa Clara Valley Transp. Agency,
`261 F.3d 912, 925 (9th Cir. 2001).
`
`Accordingly, the Court GRANTS Defendants’ motion to dismiss as to the willful
`infringement claim against RaveReady and KandeKreations, with leave to amend.
`
`2.2 Dismissal under 35 U.S.C. § 299(a)
`
`Defendants allege that joinder is improper under 35 U.S.C. § 299(a). Under subsection
`299(a), accused patent infringers may be joined in one action if two requirements are met:
`
`1) any right to relief is asserted against the parties jointly, severally, or in the
`alternative with respect to or arising out of the same transaction, occurrence,
`or series of transactions or occurrences relating to the making, using,
`importing into the United States, offering for sale, or selling of the same
`accused product or process; and
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`2) questions of fact common to all defendants or counterclaim defendants will
`arise in the action.
`
`35 U.S.C. § 299(a). Emazing does not address why joinder of the five defendants is proper in
`the amended complaint. In the Opposition, Emazing defends joinder on the basis that the
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`Case 1:16-cv-02690-AT Document 115-1 Filed 07/28/16 Page 6 of 7
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`Case No.
`Title
`
`CIVIL MINUTES - GENERAL
`June 20, 2016
`SACV 15-1561-AG(Ex)
`Date
`EMAZING LIGHTS, LLC v. RAMIRO MONTES DE OCA, ET AL.
`
`Quantum Defendants manufactured the accused products and provided them to the
`Distributor Defendants (including RaveReady and KandeKreations) for resale. (Dkt. 54 at
`10.)
`
`Courts in this district have concluded that the “same transaction or occurrence” requirement
`is not satisfied merely because retail defendants are alleged to have sold the same infringing
`products. See Digitech Image Techs., LLC v. Agfaphoto Holding GmbH, 2012 WL 4513805 at *2
`(C.D. Cal. Oct. 1, 2012) (“[W]hen Leica sells a pallet of infringing digital cameras to Best
`Buy, that is one transaction. When Leica sells a second pallet of the same cameras to Target,
`that is a second transaction. These two sales have nothing to do with each other–other than
`involve the same camera model.”); see also Sillage LLC v. Kenrose Perfumes Inc., No. 8:14-cv-
`02043, 2015 WL 3649605, at *5 (C.D. Cal. Jun. 9, 2015) (“direct competitors at the same
`level of commerce cannot be properly joined as patent infringement defendants under §
`299.”).
`
`Emazing attempts to manufacture a common thread by claiming that RaveReady and
`KandeKreations acted in concert with the other defendants. (Dkt. 54 at 10.) The amended
`complaint alleges, “each of defendants was the agent and employee of each of the other
`Defendants, and was at all times acting within the course and scope of such agency and
`employment, and with the knowledge and approval of each of the other Defendants.” (Dkt.
`28 ¶ 9). This conclusory statement, however, lacks the factual basis necessary to overcome a
`motion to dismiss. See Iqbal, 556 U.S. at 678 (citing Twombly, 550 U.S. at 557) (“Nor does a
`complaint suffice if it tenders ‘naked assertion[s]’ devoid of ‘further factual enhancement.’”)
`
`Emazing’s bald claim that there is “abundant evidence to show that . . . RaveReady has been
`conspiring directly with both the Quantum Defendants and the other Distributor
`Defendants to infringe the [’931 Patent]” falls flat for the same reasons. (Dkt. 54 at 11.)
`
`Thus, the Court finds that RaveReady and KandeKreations were improperly joined.
`
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`Case 1:16-cv-02690-AT Document 115-1 Filed 07/28/16 Page 7 of 7
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`Case No.
`Title
`
`CIVIL MINUTES - GENERAL
`June 20, 2016
`SACV 15-1561-AG(Ex)
`Date
`EMAZING LIGHTS, LLC v. RAMIRO MONTES DE OCA, ET AL.
`
`4. DISPOSITION
`
`The Court finds that the Distributor Defendants should be severed from one another and
`from the Quantum Defendants. Thus, Defendants’ motion to dismiss is GRANTED, and
`RaveReady and KandeKreations are hereby SEVERED and DISMISSED from this case
`without prejudice. In addition, the Court sua sponte SEVERS and DISMISSES the
`remaining Distributor Defendant, OLS Com, LLC dba Orbit Light Show, from this case
`without prejudice.
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`Should Emazing wish to refile its case against the dismissed Defendants in this district, it
`must file them separately and for each one, file a notice of related cases under L.R. 83-1.3.
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