Masimo Corporation v. Sotera Wireless

CourtDistrict Court, S.D. California
DecidedMay 8, 2020
Docket3:19-cv-01100
StatusUnknown

This text of Masimo Corporation v. Sotera Wireless (Masimo Corporation v. Sotera Wireless) is published on Counsel Stack Legal Research, covering District Court, S.D. California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Masimo Corporation v. Sotera Wireless, (S.D. Cal. 2020).

Opinion

7 8 UNITED STATES DISTRICT COURT 9 FOR THE SOUTHERN DISTRICT OF CALIFORNIA 10 MASIMO CORPORATION, Case No. 19-cv-01100-BAS-NLS 11 Plaintiff, ORDER GRANTING FOXCONN’S 12 MOTION TO DISMISS v. PLAINTIFF’S COMPLAINT 13 SOTERA WIRELESS; HON HAI [ECF No. 17] 14 PRECISION INDUSTRY CO., LTD., 15 Defendants. 16 17 Plaintiff Masimo Corporation (“Masimo”) filed this patent infringement action on 18 June 12, 2019 against Defendants Sotera Wireless, Inc. (“Sotera”) and Hon Hai Precision 19 Industry Co. Ltd. (referred to as “Foxconn”).1 (Compl., ECF No. 1.) Foxconn now 20 brings a Motion to Dismiss Plaintiff’s Complaint (“Motion”) for failing to state a claim 21 upon which relief can be granted under Federal Rule of Civil Procedure 12(b)(6). (Mot. 22 to Dismiss, ECF No. 17.) For the reasons stated below, the Court GRANTS Foxconn’s 23 Motion. 24

25 1 Although not addressed by either party in their briefings, “Foxconn” appears to be the registered trade 26 name of Hon Hai Precision Industry Co. Ltd. in the United States. See Foxconn, Trademark Electronic Search System (TESS), United States Patent and Trademark Office, accessed at ; see also Hon Hai/Foxconn Technology Group Home Page, accessed at https://www.foxconn.com/. Because Masimo refers to Defendant as “Foxconn” 28 1 I. BACKGROUND 2 Masimo is a medical technology company responsible for developing numerous 3 noninvasive patient monitoring technologies that measure various physiological 4 indicators, such as blood oxygen levels and pulse rates. (Compl. ¶¶ 10, 15.) Masimo 5 applied these “measurement technologies” to patient-worn monitors that allowed 6 clinicians to continuously monitor patient physiology. (Id. ¶¶ 11–12.) Masimo’s mobile 7 monitors have wireless capabilities and display large amounts of real-time patient data “in 8 a quickly comprehensible manner” for efficient and accurate clinical assessments that 9 allow patients to be untethered from stationary monitors, reduce false alarms, and enable 10 medical professionals to obtain data from patients who are unable to sit still. (Id. ¶¶ 10‒ 11 13.) Masimo claims that after it introduced many of these technologies to the market, 12 “many competitors, much larger than Masimo, used Masimo’s technology without a 13 license . . . .” (Id. ¶ 15.) 14 Masimo claims that Defendants are such competitors. Specifically, Masimo 15 contends that Sotera’s ViSi Mobile Monitoring System—a device that uses thumb and 16 chest sensors to monitor patients’ vital signs, including pulse oximetry, pulse rate, and 17 respiration rate—infringes nine Masimo patents related to noninvasive patient 18 monitoring.2 (See Compl. ¶¶ 16–25.) As to Foxconn, Sotera’s parent company, Masimo 19 alleges the following claims, under provisions of the United States Patents Act,3 for direct 20 infringement, active inducement, and contributory infringement: 21 • Foxconn “controls Sotera and Sotera’s management team.” (Id. ¶ 3.) 22 23 2 U.S. Patent No. 9,788,735, entitled “Body Worn Mobile Medical Patient Monitor” (“the ’735 patent”); 24 U.S. Patent No. 9,795,300 entitled “Wearable Portable Patient Monitor” (“the ’300 patent”); U.S. Patent No. 9,872,623 entitled “Arm Mountable Portable Patient Monitor” (“the ’623 patent”); U.S. Reissue 25 Patent No. RE47,218 entitled “Adaptive Alarm System” (“the RE218 patent”); U.S. Reissue Patent No. RE47,244 entitled “Alarm Suspend System” (“the RE244 patent”); U.S. Reissue Patent No. RE47,249 26 entitled “Alarm Suspend System” (“the RE249 patent”); U.S. Patent No. 10,213,108 entitled “Arm Mountable Portable Patient Monitor” (“the ’108 patent”); U.S. Patent No. 10,255,994 entitled 27 “Physiological Parameter Alarm Delay” (“the ’994 patent”); U.S. Reissue Patent No. RE47353 entitled “Alarm Suspend System” (“the RE47353 patent”). 28 1 • Foxconn directed Sotera’s “manufacture, use, sale, offer for sale, and/or import 2 into the United States” of the offending electronic patient monitoring systems, 3 either directly infringing or inducing infringement on the patents. (Id. ¶¶ 26, 30, 4 42, 54, 66, 78, 90, 102, 114, 126.) 5 • Foxconn “announced plans to make Sotera’s ViSi Mobile Monitoring 6 components and products, including at least batteries and sensors for the 7 products.” (Id. ¶ 26.) 8 • Foxconn had knowledge of the patents because it “monitored Masimo’s patents 9 . . . by hiring former Masimo employees and after previous trade secret 10 misappropriation litigation asserted against Sotera by Masimo[.]” (Id. ¶¶ 32, 44, 11 56, 68, 80, 92, 104, 116, 128.) 12 • Foxconn actively induces infringement of Masimo’s patents “by marketing and 13 selling the above ViSi Mobile Monitoring Systems,” knowing that they would 14 be used in an infringing manner. (Id. ¶¶ 33, 45, 57, 69, 81, 93, 105, 117, 129.) 15 • Foxconn actively induces direct infringement Masimo’s patents by healthcare 16 service providers and users by, for example, “providing directions, 17 demonstrations, guides, manuals, training for use, and/or other materials 18 necessary for the use, refurbishing, and/or servicing of the ViSi Mobile 19 Monitor” despite knowing that such use would infringe. (Id. ¶¶ 34, 46, 58, 70, 20 82, 94, 106, 118, 130.) 21 • Foxconn contributorily infringes because Sotera sells and/or imports 22 components of the ViSi Mobile Monitoring System that “constitute material 23 parts of the invention of the asserted claims of the . . . patent[s], are not staple 24 articles or commodities of commerce suitable for substantial non-infringing use, 25 and are known by Sotera and Foxconn to be especially made or especially 26 adapted for use in an infringement of the . . . patent[s].” (Id. ¶¶ 35, 47, 59, 71, 27 83, 95, 107, 119, 131.) 28 1 Masimo seeks monetary relief against both Defendants and equitable relief against 2 Sotera, Foxconn, and “officers, agents, servants, employees, attorneys and all others in 3 active concert and/or participation with them” for the alleged infringement of each of its 4 nine patents. (See Compl., Prayer for Relief.) 5 II. LEGAL STANDARD 6 A motion to dismiss pursuant to Rule 12(b)(6) of the Federal Rules of Civil 7 Procedure tests the legal sufficiency of the claims asserted in the complaint. Navarro v. 8 Block, 250 F.3d 729, 731 (9th Cir. 2001).4 The court must accept all factual allegations 9 pleaded in the complaint as true and must construe them and draw all reasonable 10 inferences from them in favor of the nonmoving party. Cahill v. Liberty Mutual Ins. Co., 11 80 F.3d 336, 337–38 (9th Cir. 1996). To avoid a Rule 12(b)(6) dismissal, a complaint 12 need not contain detailed factual allegations; rather, it must plead “enough facts to state a 13 claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 14 570 (2007). A claim has “facial plausibility when the plaintiff pleads factual content that 15 allows the court to draw the reasonable inference that the defendant is liable for the 16 misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Twombly, 550 17 U.S. at 556). “Where a complaint pleads facts that are ‘merely consistent with’ a 18 defendant’s liability, it stops short of the line between possibility and plausibility of 19 ‘entitlement to relief.’” Iqbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 557). 20 “[A] plaintiff’s obligation to provide the ‘grounds’ of his ‘entitle[ment] to relief’ 21 requires more than labels and conclusions, and a formulaic recitation of the elements of a 22 cause of action will not do.” Twombly, 550 U.S.

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Masimo Corporation v. Sotera Wireless, Counsel Stack Legal Research, https://law.counselstack.com/opinion/masimo-corporation-v-sotera-wireless-casd-2020.