Eyenavision, Inc. v. EnChroma, Inc.

1

EYENAVISION, INC., Plaintiff/Counterclaim-Defendant, v. ENCHROMA, INC., Defendant/Counterclaim-Plaintiff.

No. 2:21-cv-00246-RJC

United States District Court, W.D. Pennsylvania

March 15, 2022

MEMORANDUM OPINION

Robert J. Colville United States District Judge

Before the Court are the following Motions: (1) the Partial Motion to Dismiss (ECF No. 12) filed by Defendant/Counterclaim-Plaintiff EnChroma, Inc. (“EnChroma”); and (2) the Motion to Dismiss Counterclaim (ECF No. 16) filed by Plaintiff/Counterclaim-Defendant Eyenavision, Inc. (“Eyenavision”). EnChroma moves, pursuant to Fed.R.Civ.P. 12(b)(6), to dismiss the following claims set forth in Eyenavision's Complaint (ECF No. 1) (“Complaint”): (1) Eyenavision's claim for false marking under 35 U.S.C. § 292 (Count II); (2) Eyenavision's claim for false advertising under the Lanham Act (Count IV); and (3) Eyenavision's claim for unfair competition under Pennsylvania common law (Count V). Mot. 1, ECF No. 12. Eyenavision moves, pursuant to Fed.R.Civ.P. 12(b)(6), to dismiss the patent infringement Counterclaim set forth in EnChroma's Partial Answer and Counterclaim (ECF No. 11). The Court has original subject matter jurisdiction in this matter pursuant to 28 U.S.C §§ 1331 and 1338. The Motions at issue have been fully briefed, and are ripe for disposition.

I. Factual Background & Procedural History

This is a patent action brought by Eyenavision, an accused infringer against EnChroma, the assignee of all right, title, and interest in U.S. Patent No. 10, 338, 286 (“the ‘286 Patent”), which is titled “Multiband color vision filters and method by LP-optimization.” Compl. ¶¶ 7; 9, ECF No. 1; Partial Answer ¶¶ 7; 9, ECF No. 11. The technology at issue in this matter consists of optical filters for lenses intended to assist individuals who suffer from color vision deficiency (“CVD”), also referred to as color blindness, to differentiate between colors. Br. in Opp'n 1, ECF No. 18; Counterclaim ¶ 7, ECF No. 11.

EnChroma manufactures, sells, and distributes lenses with filtering technology, purportedly consistent with the ‘286 Patent, designed to assist individuals with CVD. Compl. ¶ 6, ECF No. 1; Partial Answer ¶ 6, ECF No. 11. EnChroma avers that it employs its optical filters in “glasses, sunglasses[, ] and scenic viewers to enable those with CVD to see a broader spectrum of colors.” Br. in Supp. 3-4, ECF No. 13. Eyenavision alleges that EnChroma sells, via EnChroma's website, at least four distinct lenses, including the Outdoor Cx3 Sun SP lenses, the Outdoor Cx3 Sun lenses, the Indoor Cx1 Indoor lenses, and the Indoor Cx1 DT Indoor lenses (collectively, the “EnChroma Lenses”). Compl. ¶¶ 41-43, ECF No. 1. Eyenavision further alleges that the “Enchroma Patent Marking Page” on EnChroma's website identifies that all EnChroma eyewear, including the EnChroma Lenses, falls within the scope of at least one valid claim of the ‘286 Patent. Id. at ¶¶ 42; 62. Eyenavision avers, for reasons set forth in detail in the Complaint, that the EnChroma Lenses do not fall within the limitations of Claim 1 of the ‘286 Patent. Id. at ¶¶ 44-55.

Eyenavision alleges that HUE.AI, LLC “is the developer and owner of proprietary CVD lens technology[] [that] is the subject of at least one issued United States Patent (U.S. Patent Number 10, 852, 567) and at least two pending United States patent applications (U.S. Patent Application Numbers 16/329, 563 and 16/212, 413), ” and that this CVD lens technology selectively filters portions of the visible spectrum in a manner that allows many individuals with CVD to better discern colors. Compl. ¶¶ 14-15, ECF No. 1. Eyenavision alleges that, in 2019, it entered into a licensing and distribution agreement with HUE.AI, LLC that gives Eyenavision “the right to make, have made, import into, use, market and sell products incorporating the CVD technology in specific territories, including North America.” Id. at ¶ 16.

In November of 2020, Eyenavision began selling and offering to sell lenses branded with the trade name “Chemistrie Color, ” including lenses referred to as “Indoor, ” “Outdoor Moderate, ” and “Outdoor Severe, ”^[1] which Eyenavision asserts are intended to assist individuals with CVD. Compl. ¶ 17, ECF No. 1; Partial Answer ¶ 17, ECF No. 11. On December 28, 2020, EnChroma sent a letter to Eyenavision asserting that the Eyenavision Products infringe, at least, Claim 1 of the ‘286 patent. Compl. Ex. B, ECF No. 1-2. EnChroma further demanded that Eyenavision cease its purportedly infringing sale, offer of sale, and/or distribution of the Eyenavision Products. Id. Eyenavision refused, and subsequently filed this declaratory judgment action asserting claims of non-infringement of the ‘286 Patent and invalidity, as well as claims for false marking, violation of the Lanham Act, and unfair competition.

Eyenavision filed the Complaint on February 19, 2021. EnChroma filed its Partial Motion to Dismiss on April 23, 2021. On that same date, EnChroma also filed a Partial Answer (answering only the allegations in the Complaint that it believes are relevant to Eyenavision's patent infringement (Count I) and invalidity (Count III) declaratory judgment causes of action) and Counterclaim (ECF No. 11). The following docket entries are relevant in the context of the Court's consideration of EnChroma's Partial Motion to Dismiss: (1) EnChroma's Brief in Support (ECF No. 13); (2) Eyenavision's Brief in Opposition (ECF No. 18); and (3) EnChroma's Reply (ECF No. 19). The following docket entries are relevant to the Court's consideration of Eyenavision's Motion to Dismiss Counterclaim: (1) Eyenavision's Brief in Support (ECF No. 17); (2) EnChroma's Brief in Opposition (ECF No. 20); and (3) Eyenavision's Reply (ECF No. 21).

II. Legal Standard

A motion to dismiss filed pursuant to Federal Rule of Civil Procedure 12(b)(6) tests the legal sufficiency of the complaint.^[2] Kost v. Kozakiewicz, 1 F.3d 176, 183 (3d Cir. 1993). In deciding a motion to dismiss, the court is not opining on whether the plaintiff will likely prevail on the merits; rather, when considering a motion to dismiss, the court accepts as true all well-pled factual allegations in the complaint and views them in a light most favorable to the plaintiff. U.S. Express Lines Ltd. v. Higgins, 281 F.3d 383, 388 (3d Cir. 2002). While a complaint does not need detailed factual allegations to survive a Rule 12(b)(6) motion to dismiss, a complaint must provide more than labels and conclusions. Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007). A “formulaic recitation of the elements of a cause of action will not do.” Id. (citing Papasan v. Allain, 478 U.S. 265, 286 (1986)).

“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.'” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 554 (2007)). “A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 556 U.S. At 678 (citing Twombly, 550 U.S. at 556). The Supreme Court of the United States has explained:

The plausibility standard is not akin to a “probability requirement, ” but it asks for more than a sheer possibility that a defendant has acted unlawfully. Where a complaint pleads facts that are “merely consistent with” a defendant's liability, it “stops short of the line between possibility and plausibility of ‘entitlement to relief.'”

Id. (quoting Twombly, 550 U.S. at 556) (internal citations omitted).

The United States Court of Appeals for the Third Circuit instructs that “a court reviewing the sufficiency of a complaint must take three steps.” Connelly v. Lane Constr. Corp., 809 F.3d 780, 787 (3d Cir. 2016). The court explained:

First, it must “tak[e] note of the elements [the] plaintiff must plead to state a claim.” Iqbal, 556 U.S. at 675. Second, it should identify allegations that, “because they are no more than conclusions, are not entitled to the assumption of truth.” Id. at 679; see also Burtch v. Milberg Factors, Inc., 662 F.3d 212, 224 (3d Cir. 2011) (“Mere restatements of the elements of a claim are not entitled to the assumption of truth.” Finally, “[w]hen there are well-pleaded factual allegations, [the] court should assume their veracity and then determine whether they plausibly give rise to an entitlement to relief.” Iqbal, 556 U.S. at 679.

Connelly, 809 F.3d at 787. “Determining whether a complaint states a plausible claim for relief will . . . be a context-specific task that requires the reviewing court to draw on its judicial experience and common sense.” Iqbal, 556 U.S. at 679 (internal citations omitted).

“In alleging fraud or mistake, a party must state with particularity the circumstances constituting fraud or mistake.” Fed.R.Civ.P. 9(b). The United States Court of Appeals for the Third Circuit has explained:

Pursuant to Rule 9(b), a plaintiff alleging fraud must state the circumstances of the alleged fraud with sufficient particularity to place the defendant on notice of the “precise misconduct with which [it is] charged.” Lum v. Bank of America, 361 F.3d 217, 223-224 (3d Cir.2004). To satisfy this standard, the plaintiff must plead or allege the date, time and place of the alleged fraud or otherwise inject precision or some measure of substantiation into a fraud allegation.

Frederico v. Home Depot, 507 F.3d 188, 200 (3d Cir. 2007).

In addition to reviewing the facts contained in the complaint, a court may consider “matters of public record, orders exhibits attached to the complaint and items appearing in the record of the case.” Oshiver v. Levin,...