United States District Court, D. New Jersey
L. WOLFSON U.S. CHIEF DISTRICT JUDGE
before the Court are two motions in this patent infringement
action: (1) Defendants Toll Brothers (“Toll
Bros.”), Enterprise Network Resolution Contracting, LLC
(“ENRC”), Taylor Wiseman & Taylor
(“TWT”), and First Environment, Inc.'s
(“First Environment”) Motion to Dismiss,
(2) Plaintiff CBA Environmental Services, Inc.'s
(“CBA”) Motion for Leave to Amend the Complaint.
The Court has considered the moving, opposition, and reply
papers, and for the reasons set forth herein, Defendants'
Motion to Dismiss is GRANTED and Plaintiff's Motion for
Leave to Amend the Complaint, as set forth in the Proposed
Amended Complaint, is DENIED. Plaintiff is given leave to
amend its Complaint consistent with this Opinion within 30
days from the date of the Order accompanying this Opinion.
Factual Background and Procedural History
CBA is a soil remediation services provider that is owner by
assignment of United States Patent No. 7, 001, 105
(“the ‘105 patent”). Original Compl.
¶¶ 11-12. The ‘105 patent, issued on February
21, 2006, relates to an in situ method of reducing
concentrations of contaminates in soil to environmentally
acceptable levels. Id. at ¶¶ 12, 15.
Similar to its original Complaint, CBA's Proposed Amended
Complaint (“PAC”) alleges that, in or
about 2014, Toll Bros., a home construction company that
specializes in building luxury homes, purchased the High
Mountain Golf Club in Franklin Lakes, New Jersey (“High
Mountain”) for the development of luxury homes, and, in
or about 2017, purchased property at the Apple Ridge Golf
Course, in Mahwah, New Jersey (“Apple Ridge”),
also for the development of luxury homes. PAC at ¶¶
29, 32-33. At the time, the ground soil at both sites was
allegedly contaminated with various contaminants.
Id. As a result of this contamination, Toll Bros.
purportedly hired TWT, a professional engineering services
firm, to serve as a Licensed Site Remediation Professional
(“LSRP”) to oversee and direct soil remediation
activities at Apple Ridge and High Mountain. Id. at
¶¶ 30, 35.
early April 2016, Toll Bros. requested that CBA provide it
with proposals for soil remediation at Apple Ridge and High
Mountain, and, on May 19, 2016, CBA submitted to Toll Bros.
formal written proposals for the two sites. Id. at
¶¶ 36, 41. At that point, Plaintiff alleges that,
despite knowing that CBA's proposed soil remediation
methods were patented, Toll Bros. thereafter solicited and
received a competing soil remediation proposal from ENRC.
Id. at ¶ 42. Plaintiff also alleges that Toll
Bros. and/or TWT at some point retained First Environment, an
environmental engineering and consulting firm, to provide
services in connection with the allegedly infringing soil
remediation at least at High Mountain. Id. at
¶¶ 31, 45. On October 27, 2016, an individual, at
the direction of CBA, visited High Mountain to investigate.
Id. at ¶ 44. While there, the individual
allegedly observed ENRC performing soil remediation and using
equipment and methods that allegedly infringed on the
‘105 patent. Id. On December 19, 2016, Toll
Bros. modified the original blending plan for Apple Ridge
and, on December 19, 2016, a Toll Bros. executive requested
by email that CBA provide it with a revised proposal based on
the newly revised plan, which CBA did submit on December 21,
2016. Id. at ¶¶ 46-47. Months later, in
May 2017, CBA learned that Toll Bros. had awarded ENRC the
contract to conduct the soil remediation at Apple Ridge using
methods that allegedly infringed on the ‘105 patent.
Id. at ¶ 50.
to the PAC, Toll Bros., TWT and First Environment worked
together to develop remediation and other development plans,
to hire subcontractors and other engineering firms to assist
with various tasks at Apple Ridge and High Mountain, and
directed and/or controlled all soil remediation efforts at
Apple Ridge and High Mountain, including directing and/or
controlling of ENRC in performing the soil remediation
methods that allegedly infringed on the ‘105 patent.
Id. at ¶ 57. Based on this theory, the PAC
asserts one count of direct infringement against ENRC, one
count of joint infringement against ENRC, TWT, First
Environment, and Toll Bros.,  and three individual counts of
induced infringement against Toll Bros., TWT, and First
Environment, respectively. See generally PAC.
filed the instant action for patent infringement of the
‘105 patent against Defendants on August 28, 2018.
See Dkt. No. 1. On November 30, 2018, Toll Bros.
filed a Motion to Dismiss CBA's Complaint. See
Dkt. No. 29. Shortly thereafter, Defendants TWT, ENRC, and
First Environment, separately moved to join Toll Bros.'
pending Motion to Dismiss. See Dkt Nos. 31, 33, 34.
In response, on January 28, 2019, CBA filed a Motion for
Leave to File a First Amended Complaint and to Deny Defendant
Tolls Bros.' Motion to Dismiss as Moot or, in the
Alternative, to Reset the Briefing Schedule for the Motion to
Dismiss. See Dkt. No. 41. Defendants' Motion to
Dismiss and Opposition to Plaintiff's Leave to Amend
argue the same two primary defects in CBA's theories of
liability: (i) the asserted ‘105 patent claims are
invalid for being directed to an abstract idea under 35
U.S.C. § 101, and (ii) the Complaint does not allege
sufficient facts setting forth a cause of action for any
patent infringement theories under Fed.R.Civ.P. 8.
Standard of Review
considering a motion to amend, “[t]he Supreme Court has
instructed that although ‘the grant or denial of an
opportunity to amend is within the discretion of the District
Court, ... outright refusal to grant the leave without any
justifying reason appearing for the denial is not an exercise
of discretion; it is merely an abuse of that discretion and
inconsistent with the spirit of the Federal Rules.'
” Shane v. Fouver, 213 F.3d 113, 115 (quoting
Foman v. Davis, 371 U.S. 178, 182 (1962)).
Nonetheless, a court may deny a plaintiff leave to amend for
a variety of reasons, including undue delay, bad faith,
dilatory motive, prejudice and futility. In re Burlington
Coat Factory Sec. Litig., 114 F.3d 1410, 1434 (3d Cir.
1997); Alston v. Parker, 363 F.3d 229, 235 (3d
Cir.2004). Under Third Circuit precedent, a
“futile” amendment is one that fails to state a
claim upon which relief could be granted.
Burlington, 114 F.3d at 1434; Grayson v.
Mayview State Hospital, 293 F.3d 103, 113 (3d Cir.2002).
Thus, in determining whether a complaint, as amended, is
futile, the District Court must apply the sufficiency
standard set forth under Rule 12(b)(6). Shane, 213
F.3d at 115.
Fed.R.Civ.P. 12(b)(6), a complaint may be dismissed for
“failure to state a claim upon which relief can be
granted.” Fed.R.Civ.P. 12(b)(6). When reviewing a
motion to dismiss on the pleadings, courts “accept all
factual allegations as true, construe the complaint in the
light most favorable to the plaintiff, and determine whether,
under any reasonable reading of the complaint, the plaintiff
may be entitled to relief.” Phillips v. Cnty. of
Allegheny, 515 F.3d 224, 233 (3d Cir. 2008) (quotations
omitted). Under such a standard, the factual allegations set
forth in a complaint “must be enough to raise a right
to relief above the speculative level.” Bell
Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007).
Indeed, “the tenet that a court must accept as true all
of the allegations contained in a complaint is inapplicable
to legal conclusions.” Ashcroft v. Iqbal, 556
U.S. 662, 678 (2009). “[A] complaint must do more than
allege the plaintiff's entitlement to relief. A complaint
has to ‘show' such an entitlement with its
facts.” Fowler v. UPMC Shadyside, 578 F.3d
203, 211 (3d Cir. 2009).
Rule 12(b)(6) only requires a “short and plain
statement of the claim showing that the pleader is entitled
to relief” in order to “give the defendant fair
notice of what the . . . claim is and the grounds upon which
it rests.” Twombly, 550 U.S. at 555. The
complaint must include “enough factual matter (taken as
true) to suggest the required element. This does not impose a
probability requirement at the pleading stage, but instead
simply calls for enough facts to raise a reasonable
expectation that discovery will reveal evidence of the
necessary element.” Phillips, 515 F.3d at 234
(citation and quotations omitted); Covington v. Int'l
Ass'n of Approved Basketball Officials, 710
F.3d 114, 118 (3d Cir. 2013) (“[A] claimant does not
have to set out in detail the facts upon which he bases his
claim. The pleading standard is not akin to a probability
requirement; to survive a motion to dismiss, a complaint
merely has to state a plausible claim for relief.”
(citation and quotations omitted)).
under the current pleading regime, when a court considers a
dismissal motion, three sequential steps must be taken:
first, “it must take note of the elements the plaintiff
must plead to state a claim.” Connelly v. Lane
Constr. Corp., 809 F.3d 780, 787 (3d Cir. 2016)
(quotations omitted). Next, the court “should identify
allegations that, because they are no more than conclusions,
are not entitled to the assumption of truth.”
Id. (quotations omitted). Lastly, “when 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.” Id.
(quotations and brackets omitted).
alleges infringement of at least Claims 1, 6, and 7 of the
‘105 patent, all of which Defendants contend are not
patent eligible. PAC at ¶ 61, 68. As a preliminary
issue, Defendants argue that Claim 1 is representative of all
claims of the patent for the purposes of their motion to
dismiss under § 101. Although the statutory presumption
of validity requires proving invalidity of each claim by
clear and convincing evidence, see Dana Corp. v. Am. Axle
& Mfg., Inc., 279 F.3d 1372, 1376 (Fed. Cir. 2002),
“[c]ourts may treat a claim as representative if the
patentee does not present any meaningful argument for the
distinctive significance of any claim limitations not found
in the representative claim or if parties agree to treat a
claim as representative.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018). For the
purposes of this motion, I find that Claim 1 is
representative of all claims. CBA has not identified
sufficient reasons why other claims would not be fairly
represented by Claim 1 for the purposes of the § 101
challenge. For instance, although Claims 6 and 7 contain
additional claim limitations not found in Claim 1, those
limitations are inconsequential since they are not argued as
containing additional inventive concepts, or adding any
distinguishing feature that could impact the overall §
Claim 1 of the ‘105 patent recites:
1. An in situ method of reducing the concentration of a
contaminate in soil to or below a target concentration that
is deemed environmentally acceptable in an area in which the
contaminant concentration in a surface layer of the soil
exceeds the target concentration, the method comprising the
Determining a requisite volume of clean soil in vertical
proximity to the surface layer such that blending the soil in
the surface layer with the requisite volume of clean soil
results in a substantially uniform contaminant concentration
in the blended soil that is at or below the target;
Employing a mobile trencher apparatus modified to lift and
churn soil in place to a depth of at least four feet to
vertically mix the surface layer soil in the area with the
requisite volume of clean soil in vertical proximity;
Running the mobile blending apparatus through the area under
conditions to provide sufficient time for the mobile blending
apparatus to blend the mixed soils so that the contaminate
concentration throughout the blended soil is substantially
‘105 patent at 7:18-38.
Eligibility for Patent Protection
101 of the Patent Act establishes four categories of subject
matter eligible for patent protection. 35 U.S.C. §101.
Under that section, “[w]hoever invents or discovers any
new or useful process, machine, manufacture, or composition
of matter, or any new useful improvement thereof, may obtain
a patent therefor, subject to the conditions and requirements
of this title.” Id. This provision is subject
to longstanding judicial exceptions, which provide that
“‘laws of nature, natural phenomena, and abstract
ideas' are not patentable.” Mayo Collaborative
Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 70 (2012).
“Phenomena of nature, . . . mental processes, and
abstract intellectual concepts are not patentable, as they
are basic tools of scientific and technological work.”
Id. at 71 (quoting Gottschalk v. Benson,
409 U.S. 63, 67 (1972). The rationale underlying these
exceptions is “one of pre-emption” grounded on
the “‘concern that patent law not inhibit further
discovery by improperly tying up the future use of' . . .
building blocks of human ingenuity.” Alice Corp.
Pty. Ltd. v. CLS Bank, Int'l, 573 U.S. 208, 216
(2014) (citing Mayo, 566 U.S. at 85). The Supreme
Court, however, has cautioned that “we tread carefully
in construing this exclusionary principle, lest it swallow
all of patent law” because “[a]t some level, all
inventions . . . embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas.”
Id. at 217.
Supreme Court has articulated a two-part test to determine if
patent claims are invalid and unpatentable under 35 U.S.C.
§101.See Mayo, 566 U.S. at 77-78;
see also Alice, 573 U.S. at 217. The first step in
the analysis is a determination as to whether claims are
directed to a patent-ineligible concept. See Alice,
573 U.S. at 217 (citing Mayo, 566 U.S. at 77-78). If
the claims are directed to a patent ineligible concept, like
an abstract idea, the second step in the test determines if
the claims contain an “inventive concept.”
Id. To determine this, a court must “consider
the elements of each claim both individual and ‘as an
ordered combination' to ...