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Wagner v. Simpson Performance Products, Inc.

United States District Court, W.D. North Carolina, Statesville Division

January 9, 2020

JULIE WAGNER, Plaintiffs,



         THIS 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.


         A 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., 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).

         Ordinarily, 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. 2009)).


         Plaintiff, 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).

         Defendant Trevor Ashline is an engineer with extensive expertise and experience in the field of safety restraints.[1] 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.

         Wagner 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.

         In 2006 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 high-performance vehicle.”

         Wagner 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.

         Wagner 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.


         A. Inventorship of the ‘074 Patent

         Section 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.[2]

         As 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.

         However, 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 ...

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