Deere & Co. v. Kinze Mfg., Inc.

683 F.Supp.3d 904

DEERE & COMPANY and John Deere Shared Services, Inc., Plaintiffs, v. KINZE MANUFACTURING, INC. and AG Leader Technology, Inc., Defendants.

No. 4:20-cv-00389-RGE-HCA

United States District Court, S.D. Iowa, Central Division

Signed July 18, 2023

Wesley T. Graham, Joseph Graham Gamble, William W. Graham, Duncan Green PC, Des Moines, IA, Brandon Lee Bigelow, Pro Hac Vice, Caleb Jordan Schillinger, Pro Hac Vice, Lisa Kirby Haines, Pro Hac Vice, Seyfarth Shaw LLP, Boston, MA, Brandon H. Brown, Pro Hac Vice, Julien Crockett, Pro Hac Vice, Kyle A. Calhoun, Pro Hac Vice, Kirkland & Ellis LLP, San Francisco, CA, Cole Thomas Tipton, Pro Hac Vice, Gregg F. LoCascio, Pro Hac Vice, Nathan S. Mammen, Pro Hac Vice, Kirkland & Ellis LLP, Washington, DC, Yimeng Dou, Pro Hac Vice, Yungmoon Chang, Pro Hac Vice, Kirkland & Ellis LLP, Los Angeles, CA, for Plaintiffs.

R. Scott Johnson, Cara S. Donels, Thomas Merrill Patton, Fredrikson & Byron, P.A., Des Moines, IA, Alyssa Hughes, Pro Hac Vice, Bradley R. Love, Pro Hac Vice, Jeff M. Barron, Pro Hac Vice, Barnes & Thornburg LLP, Indianapolis, IN, Heather B. Repicky, Pro Hac Vice, Barnes & Thornburg LLP, Boston, MA, Kyle A. Forgue, Pro Hac Vice, Mark L. Durbin, Pro Hac Vice, Mark A. Hagedorn, Pro Hac Vice, Mark P. Vrla, Pro Hac Vice, Megan Kay Krivoshey, Pro Hac Vice, Paul Olszowka, Pro Hac Vice, Barnes & Thornburg LLP, Chicago, IL, Trisha Volpe, Pro Hac Vice, Barnes & Thornburg LLP, Minneapolis, MN, for Defendants.

ORDER GRANTING DEFENDANTS' MOTION TO DISMISS PLAINTIFF DEERE & COMPANY

Rebecca Goodgame Ebinger, United States District Judge

I. INTRODUCTION

Plaintiffs Deere & Company and John Deere Shared Services, Inc. assert patent infringement claims against Defendants Kinze Manufacturing, Inc. and Ag Leader Technology, Inc. Plaintiffs' claims arise from disputes concerning precision planting technology. Defendants move to dismiss Deere & Company for lack of constitutional standing under Federal Rule of Civil Procedure 12(b)(1). As set forth below, because Deere & Co. lacked any exclusionary rights at the outset of this litigation, the Court grants Defendants' motion.

II. BACKGROUND

On December 18, 2020, Plaintiffs initiated this lawsuit and alleged infringement of eight patents. Compl., ECF No. 1. After twice filing amended complaints and subsequently narrowing their assertions, Plaintiffs now allege infringement of seven patents, U.S. Patent Numbers: 8,813,663; 9,480,199; 9,861,031; 10,004,173; 8,850,998; 10,729,063; and RE48,572 (collectively, the Asserted Patents). See First Am. Compl., ECF No. 34; Second Am. Compl. ¶¶ 30-69, ECF No. 100; Stipulation, ECF No. 304. The Asserted Patents concern technologies designed to place seed more rapidly and more precisely during planting. See ECF No. 100 ¶¶ 21-69.

In October 2019, over a year before the initiation of this lawsuit, Deere & Company (Deere & Co.) and John Deere Shared Services, Inc. (Shared Services) entered a set of agreements with one another, including agreements entitled "Intellectual Property Restructuring Agreement" (the Restructuring Agreement), "Principal Technology License Agreement" (the Principal License Agreement), and "Technology License Agreement" (the License Agreement). Defs.' Ex. 1 Supp. Defs.' Mot. Dismiss, ECF No. 306-3; Defs.' Ex. 2 Supp. Mot. Dismiss, ECF No. 306-4; Pls.' Ex. 3 Supp. Resist. Defs. Mot. Dismiss, ECF No. 311-3. In July 2021, several months after the initiation of this lawsuit, Deere & Co. and Shared Services executed a further agreement, entitled "Partial License Termination & Assignment of Rights and Liabilities." Defs.' Ex. 3 Supp. Defs.' Mot. Dismiss, ECF No 306-5.¹ This July 2021 Agreement is not pertinent to the Court's analysis of Deere & Co.'s constitutional standing, so the agreement is not discussed further. Cf. Disability Support All. v. Heartwood Enters., L.L.C., 885 F.3d 543, 545 (8th Cir. 2018) ("Standing is determined as of the commencement of the lawsuit.").

In reliance on the alleged legal effect of these documents, Defendants now move to dismiss Deere & Co. under Federal Rule of Civil Procedure 12(b)(1), arguing Deere & Co. lacks constitutional standing under Article III of the United States Constitution. Defs.' Mot. Dismiss, ECF No. 306; see also Defs.' Br. Supp. Defs.' Mot. Dismiss 1, ECF No. 306-1; Defs.' Reply Supp. Defs.' Mot. Dismiss 2, ECF No. 318. Plaintiffs resist. Pls.' Resist. Defs.' Mot. Dismiss, ECF No. 311; Pls.' Sur-Reply Defs.' Mot. Dismiss, ECF No. 325.

To the extent necessary, additional facts are set forth below.

III. LEGAL STANDARD

A. Federal Rule of Civil Procedure 12(b)(1)

"Federal courts are not courts of general jurisdiction and have only the power that is authorized by Article III of the Constitution and the statutes enacted by Congress pursuant thereto." Marine Equip. Mgmt. Co. v. United States, 4 F.3d 643, 646 (8th Cir. 1993). "Article III confines the federal judicial power to the resolution of 'Cases' and 'Controversies.' " TransUnion L.L.C. v. Ramirez, 594 U.S. 413, 141 S. Ct. 2190, 2203, 210 L.Ed.2d 568 (2021). "For there to be a case or controversy under Article III, the plaintiff must have a 'personal stake' in the case—in other words, standing." Id. (quoting Raines v. Byrd, 521 U.S. 811, 819, 117 S.Ct. 2312, 138 L.Ed.2d 849 (1997) (internal quotation marks omitted)). Article III thus sets a "jurisdictional standing requirement." Raines, 521 U.S. at 819, 117 S.Ct. 2312. "Without standing the federal courts are without subject matter jurisdiction to entertain [a plaintiff's] action." Friedmann v. Sheldon Comm. Sch. Dist., 995 F.2d 802, 804 (8th Cir. 1993). Because standing implicates subject matter jurisdiction, standing may be challenged under Federal Rule of Civil Procedure 12(b)(1). See Iowa Voter All. v. Black Hawk Cnty., 515 F. Supp. 3d 980, 987 (N.D. Iowa 2021); Fed. R. Civ. P. 12(b)(1). The objection that a federal court lacks subject matter jurisdiction "may be raised at any stage in the litigation." Arbaugh v. Y & H Corp., 546 U.S. 500, 500, 126 S.Ct. 1235, 163 L.Ed.2d 1097 (2006).

A Rule 12(b)(1) motion can be brought by a party as either a "facial attack" or a "factual attack," the determination of which affects the Court's assessment of the facts. Stalley v. Cath. Health Initiatives, 509 F.3d 517, 520-21 (8th Cir. 2007) (citing Osborn v. United States, 918 F.2d 724, 729 n.6 (8th Cir. 1990)). In a facial attack, a party challenges the sufficiency of the pleadings. See Titus v. Sullivan, 4 F.3d 590, 593 (8th Cir. 1993). Thus, "the court restricts itself to the face of the pleadings and the non-moving party receives the same protections as it would defending against a motion brought under Rule 12(b)(6)." Osborn, 918 F.2d at 729 n.6 (internal citations omitted). In contrast, under a factual attack, the Court will go beyond the pleadings and consider extrinsic evidence in determining whether it has subject matter jurisdiction. Id. In such an instance, "the complaint is formally sufficient but the contention is that there is in fact no subject matter jurisdiction." Apex Digit., Inc. v. Sears, Roebuck & Co., 572 F.3d 440, 444 (7th Cir. 2009) (emphasis, internal quotation marks, and citation omitted). Due to the unique nature of the jurisdictional question, if the Court's inquiry extends beyond the pleadings, "the court may receive evidence via 'any rational mode of inquiry.' " Buckler v. United States, 919 F.3d 1038, 1044 (8th Cir. 2019) (quoting Osborn, 918 F.2d at 730). "Once the evidence is submitted, the district court must decide the jurisdictional issue, not simply rule that there is or is not enough evidence to have a trial on the issue." Osborn, 918 F.2d at 730.

"Standing is determined as of the commencement of the lawsuit." Disability Support All., 885 F.3d at 545. This means the requisite aspects of standing "must exist at the commencement of the litigation." See Keller v. City of Fremont, 719 F.3d 931, 948 n.12 (8th Cir. 2013) (quoting Friends of the Earth, Inc. v. Laidlaw Env't Servs., 528 U.S. 167, 189, 120 S.Ct. 693, 145 L.Ed.2d 610 (2000)). The party invoking federal jurisdiction bears the burden of establishing standing. Spokeo, Inc. v. Robins, 578 U.S. 330, 338, 136 S.Ct. 1540, 194 L.Ed.2d 635 (2016); accord United States v. One Lincoln Navigator 1998, 328 F.3d 1011, 1013 (8th Cir. 2003).

B. Constitutional Standing in a Patent Infringement Suit

"[T]he 'irreducible constitutional minimum' of standing consists of three elements." Spokeo, 578 U.S. at 338, 136 S.Ct. 1540 (quoting Lujan v. Defenders of Wildlife, 504 U.S. 555, 560, 112 S.Ct. 2130, 119 L.Ed.2d 351 (1992)). "The plaintiff must have (1) suffered an injury in fact, (2) that is fairly traceable to the challenged conduct of the defendant, and (3) that is likely to be redressed by a favorable judicial decision." Id. Injury in fact is "the '[f]irst and foremost' of standing's three elements." Spokeo, 578 U.S. at 338, 136 S.Ct. 1540 (quoting Steel Co. v. Citizens for Better Env't, 523 U.S. 83, 103, 118 S.Ct. 1003, 140 L.Ed.2d 210 (1998) (alteration in original)). "To establish injury in fact, a plaintiff must show that he or she suffered 'an invasion of a legally protected interest' that is 'concrete and particularized' and 'actual or imminent, not conjectural or hypothetical.' " Id. at 339, 136 S.Ct. 1540 (quoting Lujan, 504 U.S. at 560, 112 S.Ct. 2130).

In the context of a patent infringement suit, "[t]he Patent Act of 1952 is the source of the legally protected interests" implicated in the constitutional standing inquiry. WiAV Sols. L.L.C. v. Motorola, Inc., 631 F.3d 1257, 1264 (Fed. Cir. 2010). "Under the Patent Act, a patent grants the patentee the right to exclude others from making, using, selling, or offering to sell a patented invention within the United States, as well as the right to exclude others from importing a patented invention into the United States." Id. (citing 35 U.S.C. § 271(a)); accord Morrow v. Microsoft Corp., 499 F.3d 1332, 1339 (...