Case 2:15-cv-02340-MWF-PLA Document 47 Filed 03/01/16 Page 1 of 14 Page ID #:5388
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES—GENERAL
`
`
`Date: March 1, 2016
`Case No. CV-15-2340-MWF (PLAx)
`Prime Focus Creative Services Canada Inc. -v- Legend3D, Inc.
`Title:
`Present: The Honorable MICHAEL W. FITZGERALD, U.S. District Judge
`
`
`
`
`
`
`
`
`
`Attorneys Present for Plaintiff:
`None Present
`
`Attorneys Present for Defendant:
`None Present
`
`
`
`Proceedings (In Chambers): ORDER RE DEFENDANT’S MOTION TO DISMISS
`CASE AND/OR FOR MORE DEFINITE
`STATEMENT [40]; DEFENDANT’S MOTION TO
`STRIKE PORTIONS OF PARAGRAPH 19 OF
`FIRST AMENDED COMPLAINT [41]
`
`Before the Court are Defendant Legend3D, Inc.’s Motion to Dismiss Case
`and/or for More Definite Statement (“Motion to Dismiss”) (Docket No. 40) and
`Motion to Strike Portions of Paragraph 19 of First Amended Complaint (“Motion to
`Strike”) (Docket No. 41), both filed on February 1, 2016. On February 8, 2016,
`Plaintiff Prime Focus Creative Services Canada Inc. filed an Opposition to the Motion
`to Dismiss (“Opposition to Motion to Dismiss”) (Docket No. 43) and Opposition to the
`Motion to Strike (“Opposition to Motion to Strike”) (Docket No. 42). On February 16,
`2016, Defendant filed a Reply to the Opposition to Motion to Strike (Docket No. 45)
`and Reply to Opposition to Motion to Dismiss (“Reply”) (Docket No. 44).
`
`The Court has read and considered the parties’ submissions, and held a hearing
`on February 29, 2016. The Motion to Dismiss is DENIED because Plaintiff has
`supported its jurisdictional allegations with the manner and degree of evidence
`required at this early stage. Furthermore, Plaintiff’s direct infringement allegations are
`sufficient in comparison with Form 18. The Motion to Strike is also DENIED because
`it relies on facts that go to the merits of potential affirmative defenses.
`
`
`
`______________________________________________________________________________
` CIVIL MINUTES—GENERAL 1
`
`
`Deputy Clerk:
`Rita Sanchez
`
`Court Reporter:
`Not Reported
`
`
`
`
`
`Legend3D, Inc.
`Exhibit 1025-0001
`
`

`
`Case 2:15-cv-02340-MWF-PLA Document 47 Filed 03/01/16 Page 2 of 14 Page ID #:5389
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES—GENERAL
`
`
`Date: March 1, 2016
`Case No. CV-15-2340-MWF (PLAx)
`Prime Focus Creative Services Canada Inc. -v- Legend3D, Inc.
`Title:
`I.
`BACKGROUND
`
`
`
`
`
`On December 30, 2014, U.S. Patent No. 8,922,628 issued, and, on March 30,
`2015, Plaintiff initiated the instant action against Defendant, alleging direct
`infringement of the ’628 patent. (Docket No. 1). The parties dispute the ’628 patent’s
`assignment history and chain of title, but the First Amended Complaint (“FAC”)
`alleges the following:
`
`
` Prime Focus VFX Services II Inc. of Canada was the original assignee of the
`’628 patent. (FAC ¶ 5).
`
` Plaintiff is the successor to Prime Focus VFX Services II Inc. of Canada and
`owns all right, title, and interest in the ’628 patent. (Id.).
`
`
`On June 5, 2015, Defendant filed a petition with the Patent Trial and Appeal
`Board (“PTAB”) within the United States Patent and Trademark Office (“PTO”),
`seeking inter partes review (“IPR”) of the validity of the ’628 patent. On September
`23, 2015, the Court granted Defendant’s request to stay the case pending PTAB’s
`decision on whether to institute the IPR. (Docket Nos. 29). In that same Order, the
`Court denied as moot Defendant’s then pending Motion to Dismiss and Motion
`Regarding Joint Stipulation on Party Conference and Pre-Conference Discovery.
`(Docket Nos. 15–16).
`
`On December 21, 2015, PTAB issued its Decision Denying Institution of Inter
`Partes Review on any claim of the ’628 patent on any ground argued by Defendant.
`(Docket No. 31). Accordingly, the Court lifted the stay on January 11, 2016. (Docket
`No. 34). At a status conference on January 28, 2016, the Court set a briefing schedule
`for Defendant’s contemplated Motion to Dismiss and Motion to Strike. (Docket No.
`39). Furthermore, because of potential jurisdictional issues raised by Defendant, the
`Court indicated that Defendant’s response to pending Requests for Production
`(“RFPs”) propounded by Plaintiff would be stayed until February 29, 2016. (Id.).
`However, the Court indicated that, if Defendant’s Motion to Dismiss is unsuccessful,
`
`______________________________________________________________________________
` CIVIL MINUTES—GENERAL 2
`
`
`Legend3D, Inc.
`Exhibit 1025-0002
`
`

`
`Case 2:15-cv-02340-MWF-PLA Document 47 Filed 03/01/16 Page 3 of 14 Page ID #:5390
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES—GENERAL
`
`
`Date: March 1, 2016
`Case No. CV-15-2340-MWF (PLAx)
`Prime Focus Creative Services Canada Inc. -v- Legend3D, Inc.
`Title:
`the Court will set a deadline for Defendant to respond substantively to the pending
`RFPs the week of February 29, 2016. (Id.).
`
`II. REQUEST FOR JUDICIAL NOTICE
`
`
`
`
`
`In support of the Motion to Dismiss, Defendant requests that the Court take
`judicial notice of:
`
`
` Records available online from the offices of the California and Nevada
`Secretaries of State;
`
` Various PTO records regarding patents assigned to Defendant pertaining to
`two dimensional to three dimensional conversion technology and
`colorization;
`
` PTO Assignment document for the ’628 patent, recorded September 1, 2010,
`and entitled Assignment from Chris Bond to Prime Focus VFX Services II
`Inc.; and
`
` 
`
` 
`
` PTO Assignment document for the ’628 patent, recorded October 25, 2012,
`and entitled Patent Security Agreement listing Prime Focus VFX USA, Inc.
`as a “Conveying Party.”
`
`
`(Request for Judicial Notice in Support of Motion to Dismiss (“RJN ISO Motion to
`Dismiss”), Docket No. 40-9). Plaintiff does not oppose the request.
`
`Furthermore, in support of the Motion to Strike, Defendant also requests that the
`Court take judicial notice of:
`
`
` Defendant’s IPR petition filed on June 5, 2015, as IPR2015-01350;
`
` The PTO’s File History for the ’628 patent;
`
`______________________________________________________________________________
` CIVIL MINUTES—GENERAL 3
`
`
`Legend3D, Inc.
`Exhibit 1025-0003
`
`

`
`Case 2:15-cv-02340-MWF-PLA Document 47 Filed 03/01/16 Page 4 of 14 Page ID #:5391
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES—GENERAL
`
`
`Date: March 1, 2016
`Case No. CV-15-2340-MWF (PLAx)
`Prime Focus Creative Services Canada Inc. -v- Legend3D, Inc.
`Title:
` Plaintiff’s Patent Owner Preliminary Response filed in IPR2015-01350 on
`September 25, 2015;
`
`
`
`
`
` 
`
` 
`
` PTAB’s Decision in IPR2015-01350 filed on December 21, 2015; and
`
` Defendant’s Motion to Dismiss.
`
`
`(Request for Judicial Notice in Support of Motion to Strike (“RJN ISO Motion to
`Strike”), Docket No. 41-2). Plaintiff does not oppose the request.
`
`As a general matter, the Court may take judicial notice of a fact “that is not
`subject to reasonable dispute because it . . . can be accurately and readily determined
`from sources whose accuracy cannot reasonably be questioned.” Fed. R. Evid.
`201(b)(2). Courts may take judicial notice of public records. Lee v. City of Los
`Angeles, 250 F.3d 668, 689 (9th Cir. 2001). But the Court “can only take judicial
`notice of the existence of those matters of public record (the existence of a motion or of
`representations having been made therein) . . . not of the veracity of the arguments and
`disputed facts contained therein.” United States v. S. Cal. Edison Co., 300 F. Supp. 2d
`964, 974 (E.D. Cal. 2004) (emphasis in original); accord Foster Poultry Farms v.
`Alkar-Rapidpak-MP Equip., Inc., 868 F. Supp. 2d 983, 990 (E.D. Cal. 2012) (taking
`judicial notice of documents from the PTO); Reyn’s Pasta Bella, LLC v. Visa USA,
`Inc., 442 F.3d 741, 746 n. 6 (9th Cir. 2006) (taking judicial notice of court filings);
`Options Nat. Fertility Registry v. Am. Soc. for Reprod. Med., No. C 07-5238JF(HRL),
`2008 WL 5115036, at *1 (N.D. Cal. Dec. 3, 2008) (taking judicial notice of
`incorporation records on the Alabama Secretary of State’s website).
`
`
`
` The documents for which Defendant seeks judicial notice are PTO and
`Secretary of State records, and thus are taken from a source whose accuracy cannot
`reasonably be questioned. Defendant also seeks judicial notice of its own filings in this
`case. The Court will take judicial notice of these documents, though it does so for the
`limited purpose of noticing the existence of such documents.
`
`
`______________________________________________________________________________
` CIVIL MINUTES—GENERAL 4
`
`
`Legend3D, Inc.
`Exhibit 1025-0004
`
`

`
`Case 2:15-cv-02340-MWF-PLA Document 47 Filed 03/01/16 Page 5 of 14 Page ID #:5392
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES—GENERAL
`
`
`Date: March 1, 2016
`Case No. CV-15-2340-MWF (PLAx)
`Prime Focus Creative Services Canada Inc. -v- Legend3D, Inc.
`Title:
`III. DISCUSSION
`
`
`
`
`
`A. Motion to Dismiss
`
`1. Standing
`
`The Court’s subject-matter jurisdiction is examined under Rule 12(b)(1). Fed. R.
`Civ. P. 12(b)(1) (“[A] party may assert the following defenses by motion: (1) lack of
`subject-matter jurisdiction . . . .”). Rule 12(b)(1) is an appropriate vehicle to test
`Article III standing. Oregon v. Legal Servs. Corp., 552 F.3d 965, 969 (9th Cir. 2009)
`(dismissing case under Rule 12(b)(1) for lack of standing). To establish standing, the
`plaintiff must show, among other things, an “injury in fact,” a “causal connection
`between the injury and conduct complained of,” and that the injury “will be redressed
`by a favorable decision.” Lujan v. Defenders of Wildlife, 504 U.S. 555, 560–61 (1992).
`
`Standing to sue for patent infringement derives from the Patent Act, which
`provides that “[a] patentee shall have remedy by civil action for infringement of his
`patent.” 35 U.S.C. § 281. The term “patentee” includes the patentee to whom the
`patent was issued and the “successors in title to the patentee.” Id. § 100(d). A
`“successor in title” is any party holding legal title to the patent, such as an assignee, or
`an exclusive licensee holding all substantial rights to the patent. See Prima Tek II
`L.L.C. v. A-Roo Co., 222 F.3d 1372, 1377 (Fed. Cir. 2000). A transfer of “title” to a
`patent—also called an assignment—is governed by 35 U.S.C. § 261, which states that:
`
`
`Applications for patent, patents, or any interest therein,
`shall be assignable in law by an instrument in writing.
`The applicant, patentee, or his assigns or legal
`representatives may in like manner grant and convey an
`exclusive right under his application for patent, or
`patents, to the whole or any specified part of the United
`States.
`
`
`35 U.S.C. § 261.
`
`______________________________________________________________________________
` CIVIL MINUTES—GENERAL 5
`
`
`Legend3D, Inc.
`Exhibit 1025-0005
`
`

`
`Case 2:15-cv-02340-MWF-PLA Document 47 Filed 03/01/16 Page 6 of 14 Page ID #:5393
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES—GENERAL
`
`
`
`
`Date: March 1, 2016
`Case No. CV-15-2340-MWF (PLAx)
`Prime Focus Creative Services Canada Inc. -v- Legend3D, Inc.
`Title:
`Because Defendant here does not challenge the sufficiency but rather the
`substance of Plaintiff’s jurisdictional allegations, the Court may consider documents
`outside of the pleadings. 5B Charles Alan Wright & Arthur R. Miller et al., Federal
`Practice and Procedure § 1350 (3d ed. & 2015 Supp.) (“When the movant’s purpose is
`to challenge the substance of the jurisdictional allegations, he may use affidavits and
`other additional matter to support the motion.”); Robinson v. United States, 586 F.3d
`683, 685 (9th Cir. 2009) (“A district court may ‘hear evidence regarding jurisdiction’
`and ‘resolv[e] factual disputes where necessary.’” (citation omitted)).
`
`
`
`The records submitted by the parties indicate the following assignment history
`
`recorded with the PTO:
`
`
`Conveying Party
`Date
`09/01/10 Chris Bond (inventor)
`
`Receiving Party
`Prime Focus VFX
`Services II, Inc.
`0931546 B.C. Ltd.
`
`Prime Focus VFX
`Pacific Inc.
`Prime Focus Creative
`Services Canada, Inc.
`(Plaintiff)
`SunTrust Bank
`
`Nature of Conveyance
`Assignment
`
`Continuation under
`Canadian law
`Merger and change of
`name
`Change of name
`
`Security agreement
`
`01/31/12
`
`02/01/12
`
`02/14/12
`
`10/25/12
`
`Prime Focus VFX
`Services II, Inc.
`0931546 B.C. Ltd.
`
`Prime Focus VFX
`Pacific Inc.
`
`Prime Focus North
`America, Inc.
`Prime Focus World N.V.
`Prime Focus VFX USA
`Inc.
`
`
`(See RJN ISO Motion to Dismiss Exs. 3–4; Declaration of Joshua Glucoft in Support
`of Opposition to Defendant’s Motion to Dismiss (“Glucoft Decl.”), Docket No. 43-1
`Exs. 1–3).
`
`
`______________________________________________________________________________
` CIVIL MINUTES—GENERAL 6
`
`
`Legend3D, Inc.
`Exhibit 1025-0006
`
`

`
`Case 2:15-cv-02340-MWF-PLA Document 47 Filed 03/01/16 Page 7 of 14 Page ID #:5394
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES—GENERAL
`
`
`
`
`Date: March 1, 2016
`Case No. CV-15-2340-MWF (PLAx)
`Prime Focus Creative Services Canada Inc. -v- Legend3D, Inc.
`Title:
`Defendant’s Motion to Dismiss focuses on the Security Agreement executed on
`
`October 25, 2012, between SunTrust Bank and Prime Focus companies that are not
`parties to this case (the “Related Entities”). According to Defendant, the Security
`Agreement demonstrates that either Plaintiff does not have standing to bring suit
`because ownership had been conveyed by the Related Entities to SunTrust Bank or
`“there was a scrivener’s error” in the Security Agreement. (Motion to Dismiss at 7).
`On this basis, Defendant argues that Plaintiff has not met its burden of establishing
`standing and that the Court therefore should dismiss the case for lack of subject-matter
`jurisdiction or, at the very least, continue the hearing on the Motion to Dismiss pending
`limited jurisdictional discovery. (Id. at 17).
`
`
`
`
`
`Based on the evidence before the Court, Plaintiff has supported its jurisdictional
`allegations with the manner and degree of evidence required at the motion to dismiss
`stage. Lujan, 504 U.S. at 561 (Each element of standing “must be supported . . . with
`the manner and degree of evidence required at the successive stages of the litigation.”).
`Contrary to Defendant’s insinuation, the Court is not persuaded that something sinister
`lurks beneath the assignment history of the ’628 patent. The evidence demonstrates no
`defects in Plaintiff’s chain of title. The inventor of the ’628 patent first assigned the
`patent to Prime Focus VFX Services II Inc. (RJN ISO Motion to Dismiss Ex. 3).
`Prime Focus VFX Services II Inc. then “continued” under Canadian law into another
`Canadian jurisdiction under the name 0931546 B.C. Ltd. (Glucoft Decl. Ex. 1).
`0931546 B.C. Ltd. later merged with several other companies into a new company
`called Prime Focus VFX Pacific Inc. (Id. Ex. 2). And, finally, Prime Focus VFX
`Pacific Inc. changed its name to Plaintiff’s name, Prime Focus Creative Services
`Canada Inc. (Id. Ex. 3).
`
`The Security Agreement, which was executed in October 2012, notably after
`Plaintiff’s chain of title had been perfected in February 2012, does not cast into
`question Plaintiff’s jurisdictional allegations or supporting evidence. Based on the
`evidence before the Court, the Security Agreement appears outside of the chain of title
`and, at most, demonstrates an attempt by the Related Entities to convey a security
`interest in a patent they did not own. Accordingly, the Court does not need to reach the
`
`______________________________________________________________________________
` CIVIL MINUTES—GENERAL 7
`
`
`Legend3D, Inc.
`Exhibit 1025-0007
`
`

`
`Case 2:15-cv-02340-MWF-PLA Document 47 Filed 03/01/16 Page 8 of 14 Page ID #:5395
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES—GENERAL
`
`
`
`
`
`
`Date: March 1, 2016
`Case No. CV-15-2340-MWF (PLAx)
`Prime Focus Creative Services Canada Inc. -v- Legend3D, Inc.
`Title:
`issue of whether the Security Agreement assigned to SunTrust Bank ownership in or
`merely a lien against the ’628 patent.
`
`At the hearing, Defendant’s counsel referred to 35 U.S.C. § 261, which provides
`that an assignment “shall be void as against any subsequent purchaser or mortgagee for
`a valuable consideration, without notice,” unless the assignment is recorded in the PTO
`“within three months from its date or prior to the date of such subsequent purchase or
`mortgage.” 35 U.S.C. § 261. It is true that the assignments Plaintiff relies on to show
`chain of title were not recorded in the PTO until June 2015. (Glucoft Decl. Exs. 1–3).
`But the Court does not have enough information from the parties to determine whether
`SunTrust Bank qualifies as a good faith purchaser or mortgagee that defeats Plaintiff’s
`claim of ownership. For example, notably missing are any chain of title documents
`tracing the Related Entities’ purported ownership back to the inventor of the ’628
`patent. Therefore, Defendant’s speculations regarding the import of the Security
`Agreement are neither sufficient to defeat Plaintiff’s jurisdictional allegations and
`assignment history evidence nor sufficient to persuade the Court to stay the
`proceedings while Defendant conducts limited jurisdictional discovery.
`
`Although “discovery should ordinarily be granted where pertinent facts bearing
`on the question of jurisdiction are controverted or where a more satisfactory showing
`of the facts is necessary,” Laub v. U.S. Dep’t of the Interior, 342 F.3d 1080, 1093 (9th
`Cir. 2003) (quotation omitted), the Court does not believe that Defendant will be
`unduly prejudiced if Defendant is required to pursue this theory in regular discovery
`instead. Indeed, given the stay Defendant already obtained on account of its failed IPR
`petition, it would unfairly prejudice Plaintiff to permit Defendant to further delay the
`case based on its speculation about a document executed outside the chain of title.
`
`To the extent Defendant uncovers additional evidence that casts doubt on
`Plaintiff’s standing, Defendant can bring another Rule 12(b)(1) motion at that time.
`RDF Media Ltd. v. Fox Broad. Co., 372 F. Supp. 2d 556, 560 (C.D. Cal. 2005) (“Lack
`of subject matter jurisdiction may be raised by any party at any time, and it is never
`waived . . . .”).
`
`______________________________________________________________________________
` CIVIL MINUTES—GENERAL 8
`
`
`Legend3D, Inc.
`Exhibit 1025-0008
`
`

`
`Case 2:15-cv-02340-MWF-PLA Document 47 Filed 03/01/16 Page 9 of 14 Page ID #:5396
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES—GENERAL
`
`
`Date: March 1, 2016
`Case No. CV-15-2340-MWF (PLAx)
`Prime Focus Creative Services Canada Inc. -v- Legend3D, Inc.
`Title:
`2. Sufficiency of the allegations under Rule 12(b)(6)
`
`
`
`
`
`A motion under Rule 12(b)(6) is used to test the sufficiency of the pleadings. In
`ruling on the Motion under Rule 12(b)(6), the Court follows Bell Atlantic Corp. v.
`Twombly, 550 U.S. 544 (2007), and Ashcroft v. Iqbal, 556 U.S. 662 (2009). “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.’” Iqbal, 556
`U.S. at 678 (citation omitted). The Court “accept[s] all well-pleaded allegations of
`material fact as true and construe them in the light most favorable to the nonmoving
`party.” Sateriale v. R.J. Reynolds Tobacco Co., 697 F.3d 777, 783 (9th Cir. 2012)
`(holding that the plaintiff had plausibly alleged the existence of an offer even if the
`disputed communications were “addressed to the general public in the form of
`advertisements”).
`
`Courts analyze whether a complaint alleging direct patent infringement has
`sufficiently stated a claim for relief by comparing the complaint against the
`requirements that were formerly set forth in Form 18 of the Federal Rules of Civil
`Procedure. In re Bill of Lading Transmission and Processing Sys. Patent Litig., 681
`F.3d 1323, 1333-34 (Fed. Cir. 2012) (noting that Twombly and its progeny
`“address[ed] the civil pleading standards in a variety of civil contexts,” none of which
`“address[ed] the sufficiency of a complaint alleging patent infringement or causes of
`action for which there is a sample complaint in the Appendix of Forms to the Federal
`Rules of Civil Procedure”).
`
`However, amendments to the Federal Rules of Civil Procedure that took effect
`on December 1, 2015, abrogated Rule 84 and the Appendix of Forms, including Form
`18. The district courts have diverged on whether the abrogation of Form 18 affects the
`pleading standard for allegations of direct patent infringement. Compare Mayne
`Pharma Int’l PTY Ltd. v. Merck & Co., No. CV 15-438-LPS-CJB, 2015 WL 7833206,
`at *2 (D. Del. Dec. 3, 2015) (“Under the new rules, allegations of direct infringement
`will be subject to the pleading standards established by Twombly and Iqbal, requiring
`plaintiffs to demonstrate a ‘plausible claim for relief.’”), and Hologram USA, Inc. v.
`Pulse Evolution Corp., No. 2:14-CV-0772-GMN-NJK, 2016 WL 199417, at *2 n.1 (D.
`______________________________________________________________________________
` CIVIL MINUTES—GENERAL 9
`
`
`Legend3D, Inc.
`Exhibit 1025-0009
`
`

`
`Case 2:15-cv-02340-MWF-PLA Document 47 Filed 03/01/16 Page 10 of 14 Page ID #:5397
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES—GENERAL
`
`
`
`
`
`
`Date: March 1, 2016
`Case No. CV-15-2340-MWF (PLAx)
`Prime Focus Creative Services Canada Inc. -v- Legend3D, Inc.
`Title:
`Nev. Jan. 15, 2016) (“Though Form 18 and Rule 84 were abrogated from the Federal
`Rules of Civil Procedure as of December 1, 2015, the Advisory Committee note
`associated with this change directly states, ‘The abrogation of Rule 84 does not alter
`existing pleading standards or otherwise change the requirements of Civil Rule 8.’
`Thus, the Court refers to previously existing standards in ruling upon the instant
`Motion.” (citation omitted)).
`
` The Court does not, however, need to reach this issue. The Supreme Court
`Order that accompanied the submission of the amendments to Congress stated that the
`amendments “shall take effect on December 1, 2015, and shall govern in all
`proceedings in civil cases thereafter commenced and, insofar as just and practicable,
`all proceedings then pending.” Supreme Court of the United States, Order Regarding
`Amendments to the Federal Rules of Civil Procedure (Apr. 29, 2015) (emphasis
`added), available at http://www.supremecourt.gov/orders/courtorders/frcv15_5h25.pdf
`(last visited Feb. 26, 2016). Here, Plaintiff initiated suit in March 30, 2015, and filed
`the FAC on July 9, 2015. (Docket Nos. 1, 12). Because Rule 84 and Form 18 would
`have been in force at the time the Court considered Defendant’s original motion to
`dismiss (Docket No. 16), it would not be “just and practicable” to apply the new Rules
`and any attendant heightened pleading standard that went into effect during the nearly
`four-month stay that Defendant engineered. Therefore, the Court will apply the
`previously existing standards in ruling on the Motion to Dismiss.
`
`In this case, Plaintiff only alleges claims of direct infringement and thus must
`satisfy Form 18. Under Form 18, to sufficiently state a claim for direct infringement, a
`plaintiff need set forth only “(1) an allegation of jurisdiction; (2) a statement that the
`plaintiff owns the patent; (3) a statement that defendant has been infringing the patent
`‘by making, selling, and using [the technology] embodying the patent’; (4) a statement
`that the plaintiff has given the defendant notice of its infringement; and (5) a demand
`for an injunction and damages.” See K-Tech Telecomm., Inc. v. Time Warner Cable,
`Inc., 714 F.3d 1277, 1283 (Fed. Cir. 2013) (citation omitted).
`
`The FAC satisfies Form 18. First, the FAC states that the Court “has subject
`matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a).” (FAC ¶ 8). Second,
`______________________________________________________________________________
` CIVIL MINUTES—GENERAL 10
`
`
`Legend3D, Inc.
`Exhibit 1025-0010
`
`

`
`Case 2:15-cv-02340-MWF-PLA Document 47 Filed 03/01/16 Page 11 of 14 Page ID #:5398
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES—GENERAL
`
`
`
`
`
`
`Date: March 1, 2016
`Case No. CV-15-2340-MWF (PLAx)
`Prime Focus Creative Services Canada Inc. -v- Legend3D, Inc.
`Title:
`Plaintiff specifically states that Plaintiff owns the ’628 patent. (Id. ¶ 5). Third,
`Plaintiff alleges that Defendant is “importing, offering to sell, selling, or using” the
`technology that embodies the ’628 patent and therefore “directly infringe[s] (literally
`and/or under the doctrine of equivalents).” (Id. ¶ 23). Fourth, the FAC states that
`“Legend3D has knowledge of the ’628 Patent at least due to the fact that Legend3D
`was notified of the ’628 Patent by Prime Focus before the filing of this action.” (Id. ¶
`14). Fifth, Plaintiff asserts that Defendant’s infringing acts have caused Plaintiff to
`suffer damages, and that Plaintiff is entitled to a permanent injunction. (Id. ¶ 25).
`
`At the hearing, Defendant’s counsel cited Macronix International Co. v.
`Spansion Inc., to argue that the FAC fails to properly plead direct infringement. 4 F.
`Supp. 3d 797, 800 (E.D. Va. 2014). The Court is not persuaded by the reasoning of
`Macronix because it fails to grapple with the Federal Circuit’s explicit statement in K-
`Tech that “to the extent any conflict exists between Twombly (and its progeny) and the
`Forms regarding pleading requirements, the Forms control.” K-Tech, 714 F.3d at 1283
`(“Any criticism we may have regarding the sufficiency of the forms themselves is
`strictly proscribed by Supreme Court precedent.” (citing Leatherman v. Tarrant Cnty.
`Narcotics Intelligence & Coordination Unit, 507 U.S. 163, 168 (1993); Twombly, 550
`U.S. at 569 n.14)); see also JDS Uniphase Corp. v. CoAdna Photonics, Inc., No. 14-
`CV-01091-JST, 2014 WL 2918544, at *2 (N.D. Cal. June 26, 2014) (similarly
`rejecting Macronix as unpersuasive because “it provides no argument for how K-Tech,
`which again reinforced the Federal Circuit’s understanding of Form 18, can be
`distinguished”).
`
`Accordingly, the Motion to Dismiss is DENIED.
`
`B. Motion to Strike
`
`Because of their frequent use as delaying tactics and because of judicial policy
`favoring resolution on the merits, motions to strike are disfavored. Armstead v. City of
`Los Angeles, 66 F. Supp. 3d 1254, 1271 (C.D. Cal. 2014) (“Motions to strike under
`Rule 12(f) are generally regarded with disfavor because of the limited importance of
`pleading in federal practice, and because they are often used as a delaying tactic.’”
`______________________________________________________________________________
` CIVIL MINUTES—GENERAL 11
`
`
`Legend3D, Inc.
`Exhibit 1025-0011
`
`

`
`Case 2:15-cv-02340-MWF-PLA Document 47 Filed 03/01/16 Page 12 of 14 Page ID #:5399
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES—GENERAL
`
`
`Date: March 1, 2016
`Case No. CV-15-2340-MWF (PLAx)
`Prime Focus Creative Services Canada Inc. -v- Legend3D, Inc.
`Title:
`(citation omitted)). Striking a party’s pleadings is an extreme measure that is
`infrequently granted. Freeman v. ABC Legal Servs., Inc., 877 F. Supp. 2d 919, 923
`(N.D. Cal. 2012) (“Courts generally disfavor motions to strike because striking is such
`a drastic remedy.”).
`
`
`Before a court grants a motion to strike, it must be certain that there are no
`factual issues, that any legal questions are clear and undisputed, and that the claim or
`defense could not succeed under any possible circumstances. RDF Media Ltd. v. Fox
`Broadcasting Co., 372 F.Supp.2d 556, 561 (C.D. Cal. 2005). “[T]he court must view
`the pleading in the light most favorable to the pleader.” Id. “[I]f the court is in doubt
`as to whether the challenged matter may raise an issue of fact or law, the motion to
`strike should be denied and the sufficiency of the allegations left for adjudication on
`the merits.” Sagan v. Apple Comp., Inc., 874 F. Supp. 1072, 1079 (C.D. Cal. 1994).
`
`Here, Defendant seeks to strike portions of Paragraph 19 of the FAC on the
`grounds that certain of these allegations have been disclaimed by positions Plaintiff
`allegedly took in response to Defendant’s IPR petition. (Motion to Strike at 8–11).
`Specifically, Defendant argues that the doctrines of judicial estoppel and prosecution
`history estoppel bar Plaintiff’s ability to claim certain infringement theories as alleged
`in Paragraph 19. (Id. at 9–10).
`
`
`The Court dispenses with Defendant’s argument with relative ease. Even if the
`Court were to consider documents filed in the IPR petition on a Rule 12(f) motion, the
`Court declines to strike allegations in the FAC on the basis of disputed facts that go to
`the merits of Defendant’s potential affirmative defenses (e.g., judicial estoppel or
`prosecution history estoppel).
`
`Matters outside the pleadings normally are not considered on a Rule 12(f)
`motion. 5C Charles Alan Wright & Arthur R. Miller et al., Federal Practice and
`Procedure § 1380 (3d ed. & 2015 Supp.) (“If matters outside the pleadings were freely
`presented and considered by the district judge, motions under Rule 12(f), especially
`those testing the legal sufficiency of a defense, might be transformed into motions
`testing the factual or evidentiary, as well as the legal, basis for the challenged pleading
`______________________________________________________________________________
` CIVIL MINUTES—GENERAL 12
`
`
`Legend3D, Inc.
`Exhibit 1025-0012
`
`

`
`Case 2:15-cv-02340-MWF-PLA Document 47 Filed 03/01/16 Page 13 of 14 Page ID #:5400
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES—GENERAL
`
`
`
`
`
`
`Date: March 1, 2016
`Case No. CV-15-2340-MWF (PLAx)
`Prime Focus Creative Services Canada Inc. -v- Legend3D, Inc.
`Title:
`and would serve much the same function as a motion for summary judgment.”).
`“Were [the Court] to read Rule 12(f) in a manner that allowed litigants to use it as a
`means to dismiss some or all of a pleading . . ., [it] would [] creat[e] redundancies
`within the Federal Rules of Civil Procedure, because . . . a motion for summary
`judgment at a later stage in the proceedings . . . already serves such a purpose.”
`Whittlestone, Inc. v. Handi–Craft Co., 618 F.3d 970, 974 (9th Cir. 2010).
`
`However, the Court recognizes that the Federal Circuit has also previously
`indicated that, in patent cases, district courts may have greater latitude to consider
`materials beyond the pleadings when a party raises an equitable challenge, such as
`assignor estoppel, particularly if they present uncontested factual matters. Diamond
`Sci. Co. v. Ambico, Inc., 848 F.2d 1220, 1227 (Fed. Cir. 1988). Even assuming Federal
`Circuit precedent controls here, Defendant’s Motion to Strike is not based on
`uncontested factual matters. See Madey v. Duke Univ., 307 F.3d 1351, 1358 (Fed. Cir.
`2002) (“On procedural issues, this Court follows the rule of the regi