United States District Court, W.D. North Carolina, Statesville Division
KENNETH D. BELL UNITED STATES DISTRICT JUDGE.
MATTER is before the Court on Defendants' Motion
to Dismiss Plaintiff's First Amended Complaint. (Doc. No.
26). The Court has carefully considered the motion and the
parties' related briefs and exhibits. For the reasons
stated below, the Court finds that Defendants' motion
should be DENIED. With due regard for the
applicable standard of review of a motion to dismiss pursuant
to Rule 12(b)(6), the Court finds that accepting the
Plaintiff's allegations as true and generously construing
those facts in the light most favorable to the Plaintiff,
Plaintiff has at this early stage of the case adequately pled
that she could be found to be a co-inventor on U.S. Pat. No.
8, 272, 074 (the ‘074 Patent) and also adequately pled
her state law claims. However, this order is entered without
prejudice to Defendants having a comprehensive opportunity to
seek summary judgment based on their various challenges to
Plaintiff's claims after the record is more fully
developed during discovery.
STANDARD OF REVIEW
motion to dismiss under Federal Rule of Civil Procedure
12(b)(6) for “failure to state a claim upon which
relief can be granted” tests whether the complaint is
legally and factually sufficient. See Fed.R.Civ.P.
12(b)(6); Ashcroft v. Iqbal, 556 U.S. 662, 678
(2009); Bell Atl. Corp. v. Twombly, 550 U.S. 544,
570 (2007); Coleman v. Md. Court of Appeals, 626
F.3d 187, 190 (4th Cir. 2010), aff'd, 566 U.S.
30 (2012). In evaluating whether a claim is stated,
“[the] court accepts all well-pled facts as true and
construes these facts in the light most favorable to the
plaintiff, ” but does not consider “legal
conclusions, elements of a cause of action, ... bare
assertions devoid of further factual enhancement[, ] ...
unwarranted inferences, unreasonable conclusions, or
arguments.” Nemet Chevrolet, Ltd. v.
Consumeraffairs.com, Inc., 591 F.3d 250, 255 (4th Cir.
2009). Construing the facts in this manner, a complaint must
only contain “sufficient factual matter, accepted as
true, to state a claim to relief that is plausible on its
face.” Id. Thus, a motion to dismiss under
Rule 12(b)(6) determines only whether a claim is stated;
“it does not resolve contests surrounding the facts,
the merits of a claim, or the applicability of
defenses.” Republican Party v. Martin, 980
F.2d 943, 952 (4th Cir. 1992).
a plaintiff need only make “a short and plain statement
of the claim showing that the pleader is entitled to
relief.” Fed.R.Civ.P. 8(a)(2). However, with respect to
claims of fraud Rule 9(b) creates an exception to this
liberal pleading standard and requires that “[i]n
alleging fraud or mistake, a party must state with
particularity the circumstances constituting fraud or
mistake.” Fed.R.Civ.P. 9(b). “This heightened
pleading requirement serves to protect defendants'
reputations from baseless accusations, eliminate meritless
suits brought only to extract a settlement, discourage
fishing expeditions, and provide defendants with enough
information about a plaintiff's allegations to mount a
defense.” Maguire Fin., LP v. PowerSecure
Int'l, Inc., 876 F.3d 541, 546 (4th Cir. 2017)
(citing Pub. Emps.' Ret. Ass'n of Colo. v.
Deloitte & Touche LLP, 551 F.3d 305, 311 (4th Cir.
FACTUAL AND PROCEDURAL BACKGROUND
Julie Wagner, is a registered nurse and inventor who is
interested in automotive safety. (First Amended Complaint,
Doc. No. 25, hereafter “FAC, ” ¶¶ 4,
8). Beginning in 2001, Wagner developed and later patented a
safety vest for children to protect them while they are in
cars, which she called the Guardian Angel Vest (the
“Vest”). (Id. ¶¶ 4, 8, 17).
The Vest features epaulettes on the shoulders to maintain the
shoulder portions of the seatbelt in the safest position
relative to the clavicle in the event of a crash because of
Wagner's belief that maintaining seatbelt placement over
the shoulder is crucial for reducing injuries resulting from
seatbelt displacement. Id. ¶¶ 18-19.
(Id. ¶¶ 25, 28-30).
Trevor Ashline is an engineer with extensive expertise and
experience in the field of safety restraints. He is named as
sole or joint inventor on at least ten U.S. patents, all
related to vehicle safety equipment such as head and neck
restraints. According to the FAC, Ashline is currently Vice
President of Engineering and Product Development for
Defendant Simpson Performance Products, Inc.
(“Simpson”), a company that sells vehicle related
safety equipment to, among others, NASCAR customers.
alleges that from 2003 to 2006, Wagner met and communicated
with Ashline multiple times regarding her Vest and entered
into an alleged “joint venture” with Ashline to
sell the Vests and children's safety books. Id.
¶¶ 33-35. More specifically, Wagner alleges that in
their meetings and conversations via email, Ms. Wagner
allegedly “confidentially showed Ashline a prototype of
her Guardian Angel vest having the epaulette feature and
explained to him its function of reducing injury to a vehicle
occupant by maintaining/guiding the over-the- shoulder
portion of the seatbelt over/on top of the occupant's
shoulder during a crash.” Id. ¶ 25,
see also id. ¶¶ 28-29, 41-42. Further, the
FAC alleges: “At some point in 2005 Wagner, independent
of Defendant Ashline, conceived of and conveyed to Ashline
the idea of modifying the decorative epaulettes, commonly
found on racing suits, to center the seatbelt over/on top of
the shoulder.” Id. ¶ 38.
and 2007, Mr. Ashline filed U.S. Patent Applications Nos.
60/797, 921 and 11/787, 532. Those applications subsequently
issued in September 2012 as the ‘074 Patent, which
relates to a “Head Restraint Device Having a Support
Member with Back and Shoulder Portions.” Id.
¶¶ 43, 45. Simpson is the exclusive assignee of the
‘074 Patent. The ‘074 Patent states: “More
specifically, the [invention] relates to a restraint device
that controls movement of, and reduces forces applied to, a
driver's head, neck and spine when the driver is subject
to high deceleration forces, such as those forces that may
occur during a collision event while operating a
alleges that she contributed to the conception of at least
one claim of the ‘074 Patent, e.g., the claim
language “a member having shoulder portions at least
partially positionable on top of at least a portion the
shoulders of the driver, ” which appears in Claim 1 of
the ‘074 Patent. Id. ¶ 54. The FAC
alleges that “Ashline had no knowledge of using
shoulder portions over/on top of shoulders to maintain proper
seatbelt position during crash impact until such concept was
conveyed to him by Wagner.” Id. ¶ 51.
Accordingly, Wagner alleges that her insights and Vest
“epaulettes” were the motivation for the
“shoulder portions” which are claimed in the
‘074 Patent. Id. ¶ 53.
seeks an order naming her as a co-inventor of the ‘074
Patent pursuant to 35 U.S.C. § 256, and also alleges
claims under North Carolina state law for unjust enrichment,
fraud and imposition of a constructive trust. Defendants have
moved to dismiss each of the counts of the FAC. They argue
that all of the counts fail to state a claim pursuant to Rule
12(b)(6) and further argue that Plaintiff's state law
claims are preempted by federal patent law.
Inventorship of the ‘074 Patent
256 of Title 35 of the United States Code “provides a
cause of action to interested parties to have the
inventorship of a patent changed to reflect the true
inventors of the subject matter claimed in the patent.”
Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466,
1471 (Fed. Cir. 1997). As relevant here, section 256
addresses “nonjoinder” - “the error of
omitting an inventor” from a patent. CODA Dev.
S.R.O. v. Goodyear Tire & Rubber Co., 916 F.3d 1350,
1358 (Fed. Cir. 2019). “The determination of whether a
person is a joint inventor is fact specific.” Fina
Oil, 123 F.3d at 1473.
explained in Eli Lilly & Co. v. Aradigm Corp.,
376 F.3d 1352, 1359 (Fed. Cir. 2004), section 116 of Title 35
is the statutory locus of joint inventorship doctrine. It
provides that a person not listed on a patent need not
demonstrate that he made a contribution equal in importance
to the contribution made by the listed inventors to claim his
right to joint inventor status. See 35 U.S.C. §
116 (2000) (“Inventors may apply for a patent jointly
even though (1) they did not physically work together or at
the same time, (2) each did not make the same type or amount
of contribution, or (3) each did not make a contribution to
the subject matter of every claim of the patent.”).
Also, section 116 “sets no explicit lower limit on the
quantum or quality of inventive contribution required for a
person to qualify as a joint inventor.” Fina
Oil, 123 F.3d at 1473.
because “‘[c]onception is the touchstone of
inventorship'... a joint inventor must contribute to the
invention's conception.” Burroughs Wellcome Co.
v. Barr Labs., Inc., 40 F.3d 1223, 1227-28
(Fed.Cir.1994); see also, Fina Oil, 123
F.3d at 1473 (“[t]he case law thus indicates that to be
a joint inventor, an individual must make a contribution to
the conception of the claimed invention that is not
insignificant in quality, when that contribution is measured
against the dimension of the full invention.”);
Sewall v. Walters, 21 F.3d 411, 415 (Fed.Cir.1994).
A joint inventor must (1) contribute in some significant
manner to the conception or reduction to practice of the
invention, (2) make a contribution to the claimed invention
that is not insignificant in quality, when that contribution
is measured ...