UNITED STATES DISTRICT COURT

DISTRICT OF NEW HAMPSHIRE

Emseal Joint Systems, Ltd., Plaintiff

v. Case No. 14-cv-358-SM Opinion No.

Schul International Co., LLC; Steven R. Robinson; Brian J. Iske; Willseal, LLC; and Ion Management, LLC, Defendants

O R D E R

Plaintiff, Emseal Joint Systems, Ltd., filed suit against

Shul International Co., Steven R. Robinson, Brian J. Iske,

Willseal, LLC, and Ion Management, LLC, asserting claims for

patent infringement, violation of the New Hampshire Consumer

Protection Act/Unfair and Deceptive Trade Practices (“CPA”), and

unjust enrichment. Defendants have moved for judgment on the

pleadings on plaintiff’s unjust enrichment claim. Robinson and

Iske have moved for judgment on plaintiff’s Consumer Protection

Act claim. Both motions are granted.

Standard of Review

Federal Rule of Civil Procedure 12(c) provides that,

“[a]fter the pleadings are closed but within such time as not to

delay the trial, any party may move for judgment on the

pleadings.” “The standard of review of a motion for judgment on

the pleadings under Federal Rule of Civil Procedure 12(c) is the

same as that for a motion to dismiss under Rule 12(b)(6).” Marrero-Gutierrez v. Molina,

(1st Cir. 2007)

(citations omitted). Accordingly, “[t]he court accepts the

plaintiff's well-pleaded facts as true and draws all reasonable

inferences in the plaintiff's favor.” Holder v. Town of Newton,

No. 09-CV-341-JD,

, at *1 (D.N.H. Aug. 11, 2010)

(citing Citibank Global Mkts., Inc. v. Santana,

(1st Cir. 2009)).

To survive defendants' motion, each count of plaintiff's

complaint must allege all of the essential elements of a viable

cause of action and “contain sufficient factual matter, accepted

as true, to state a claim to relief that is plausible on its

face.” Ashcroft v. Iqbal,

(2009) (citation

and internal punctuation omitted). Judgment on the pleadings

will be entered “only if the uncontested and properly considered

facts conclusively establish the movant's entitlement to a

favorable judgment.” Aponte-Torres v. Univ. of P.R.,

, 54 (1st Cir. 2006).

Background

As alleged in its complaint, Emseal is the sole owner of

the following patents:

495B1 1 issued by the

1 On November 10, 2014, Schul International submitted a request for Ex Parte Examination to the USPTO, seeking reexamination of the ‘495 patent’s claims. After granting Schul’s request, the USPTO issued Ex Parte Reexamination

2 United State Patent and Trademark Office (“USPTO”) on June 3,

2014;

262B2, issued by the USPTO on

December 27, 2016 (“the ‘262 patent”);

368B1, issued by the USPTO on May 9, 2017 (“the ‘368

patent”);

666B1, issued by the USPTO on

June 6, 2017 (“the ‘666 patent”); and

915B1, issued by the USPTO on May 2, 2017 (“the ‘915

patent”) (collectively, the “Patents in Suit”). All of the

Patents in Suit are entitled “Fire and Water Resistant Expansion

Joint System.” According to plaintiffs, several of defendants’

products infringe one or more claims of the Patents in Suit,

and, defendants manufacture and sell, or cause others to

manufacture and sell, those infringing products without a

license.

Plaintiff alleges that defendants do minimal research and

development of their own; copy plaintiff’s test regime, and its

patented products and methods; and maintain minimal support

infrastructure. As a result, says plaintiff, Defendants are

able to price their infringing products unfairly, thus

“creat[ing] or maintain[ing] a monopoly and/or harm[ing]

competition.” Compl. ¶ 23. Plaintiff further alleges that

defendants make disparaging and misleading statements to

Certificate No. 8,739,495C1.

495C1 and Ex Parte Reexamination Certificate No. 8,739,495C1 are collectively referred to as “the ‘495 patent.”

3 potential purchasers of Emseal patented products, which

tarnishes plaintiff’s reputation and impacts plaintiff’s ability

to leverage its patents. Finally, plaintiff contends that

defendants provide inferior support infrastructure, which harms

the entire fire seal industry.

Discussion

1. Unjust Enrichment

Defendants make two arguments in support of their position

that the court should enter judgment on plaintiff’s unjust

enrichment claim. First, defendants contend that, because

plaintiffs have not alleged a quasi-contractual relationship

between them, unjust enrichment is not applicable. Second,

defendants assert that plaintiff’s unjust enrichment claim is

either barred by Patent Act preemption, or is covered by a New

Hampshire statutory cause of action.

Defendants correctly point out that plaintiff’s unjust

enrichment claim simply re-pleads its patent infringement and

CPA claims, adding only an allegation that defendants unjustly

benefited from their purported misdeeds. In support of its

unjust enrichment claim, plaintiff incorporates by reference its

earlier allegations, and alleges that defendants, as a result of

the alleged conduct, “will unjustly benefit from and be unjustly

4 enriched by, their own intentional and wrongful acts.” Compl. ¶

42.

Under New Hampshire law, “[u]njust enrichment is an

equitable remedy that is available when an individual receives a

benefit which would be unconscionable for him to retain.”

Axenics, Inc. v. Turner Constr. Co.,

,

(2013) (internal quotation marks and emphasis omitted).

Plaintiff does not explicitly allege a benefit received by

defendants in its complaint, nor does plaintiff address that

point in its briefing. However, plaintiff’s theory seems to be

that, by copying Emseal’s patented products, methods, and test

regimes, defendants benefited by saving money they otherwise

would have had to spend on research and development. And, as a

result of those savings, defendants have been able to price

their competing (and infringing) products lower than Emseal’s

products, thereby presumably benefitting by selling more

products.

Here, plaintiff’s unjust enrichment claim, as pled, is

preempted. “[F]ederal patent law preempts any state law that

purports to define rights based on inventorship.” Univ. of

Colo. Found. v. Am. Cyanamid Co.,

, 1372 (Fed. Cir.

5 1999). As the Court of Appeals for the Federal Circuit 2 has

noted:

To determine whether these state law torts are in conflict with federal patent law and accordingly preempted, we assess a defendant's allegedly tortious conduct. If a plaintiff bases its tort action on conduct that is protected or governed by federal patent law, then the plaintiff may not invoke the state law remedy, which must be preempted for conflict with federal patent law. Conversely, if the conduct is not so protected or governed, then the remedy is not preempted.

Hunter Douglas, Inc. v. Harmonic Design, Inc.,

(Fed. Cir. 1998), overruled on other grounds by Midwest

Indus., Inc. v. Karavan Trailers, Inc.,

(Fed. Cir.

1999). “A state claim is not protected or governed by patent

law when it ‘address[es] entirely different wrongs[,]’

‘provide[s] different forms of relief,’ and ‘is not an

impermissible attempt to offer patent-like protection to subject

matter addressed by federal law.’” Picone v. Shire PLC, No. 16-

CV-12396-ADB,

, at *14 (D. Mass. Oct. 20, 2017)

(quoting In re Loestrin 24 Fe Antitrust Litig., No. 13-md-2472,

, at *37 (D.R.I. Aug. 8, 2017) ((quoting Dow

Chem. Co. v. Exxon Corp.,

(Fed. Cir.

1998))).

2 “Federal Circuit law governs whether federal patent law preempts a state law claim.” Ultra–Precision Mfg. v. Ford Motor Co.,

(Fed. Cir. 2005).

6 Because plaintiff’s unjust enrichment claim directly

relates to its rights under federal patent law, and seeks to

enforce such rights under a common law guise, the unjust

enrichment claim is preempted. See Veto Pro Pac, LLC v. Custom

Leathercraft Mfg. Co., Inc., No. 3:08-cv-302 (VLB),

, *2 (D. Conn. Feb. 5, 2009) (“to survive preemption, [the

plaintiff] must plead conduct in violation of [state law] that

is separate and independent from its patent law claim.”)

(emphasis added). The gravamen of plaintiff’s unjust enrichment

claim is that defendants unjustly benefited from their patent-

infringing use of the plaintiff’s intellectual property, one

consequence being that defendants saved money on research and

development. Put differently, any purported “benefit”

defendants received resulted from defendant’s infringement of

plaintiff’s patents. While benefits derived from infringing

conduct are always “unjust” in a general sense, here the unjust

character derives from the alleged infringement. If defendants

did not infringe plaintiff’s patents, plaintiff’s unjust

enrichment claim would of course fail as it is tied to the

alleged infringement.

Plaintiff’s objection to defendant’s motion for judgment on

the pleadings does not respond to the preemption argument. That

is problematic because arguments “not raised in a timely manner

are forfeited.” Igartua v. United States,

, 603

7 (1st Cir. 2010). As our court of appeals has stated, “a

plaintiff cannot expect a trial court to do his homework for

him. Rather, the plaintiff has an affirmative responsibility to

put his best foot forward in an effort to present some legal

theory that will support his claim.” McCoy v. Massachusetts

Inst. of Tech.,

, 22–23 (1st Cir. 1991). See also

Rivera-Gomez v. de Castro,

(1st Cir. 1988)

(“[j]udges are not expected to be mindreaders. Consequently, a

litigant has an obligation ‘to spell out its arguments squarely

and distinctly,’ or else forever hold its peace.”) (quoting

Paterson–Leitch Co. v. Massachusetts Municipal Wholesale Elec.

Co.,

(1st Cir. 1988)).

But, to the extent plaintiff might argue that its unjust

enrichment claim is also based on its allegations regarding

defendant’s “tarnish[ing]” of Emseal’s reputation, compl. ¶ 24,

plaintiff’s complaint offers no allegation that such conduct

resulted in a benefit to defendants. Nor does plaintiff allege

any benefit to defendants resulting from defendants’ provision

of “inferior support infrastructure which tarnishes the fire

seal industry.” Compl. ¶ 24. The court is disinclined to

concoct an argument on plaintiff’s behalf, and need proceed no

further. Cf., United States v. Zannino,

(1st

Cir. 1990) (“It is not enough merely to mention a possible

argument in the most skeletal way, leaving the court to do

8 counsel's work, create the ossature for the argument, and put

flesh on its bones.”).

Resolution of plaintiff’s unjust enrichment claim as pled

depends entirely on resolution of plaintiff’s patent

infringement claims. Therefore, plaintiff’s unjust enrichment

claim is preempted by federal patent law, and must be dismissed. 3

2. New Hampshire Consumer Protection Act

Defendants Robinson and Iske seek judgment on plaintiff’s

Consumer Protection Act claim. They argue that plaintiff has

not asserted any basis upon which the corporate veil might be

pierced to reach and hold them liable for the actions of Schul,

Ion or Willseal (collectively, the “Corporate Defendants”).

And, defendants further contend, plaintiff’s allegations in

support of its CPA claim are based entirely on the conduct of

3 Even if plaintiff’s unjust enrichment claim were not subject to dismissal due to preemption, it would probably fail as a matter of law because it is focused “on the savings that [defendants] incurred – that is, money not spent – rather than on a benefit bestowed – that is, money or some good received.” Brown v. Saint-Gobain Performance Plastics Corp., No. 16-cv-242- JL,

, at *9 (D.N.H. Dec. 12, 2017). “New Hampshire has not recognized negative unjust enrichment – that is, unjust enrichment through a defendant’s failure to incur costs rather than through receipt of a benefit – as a cause of action.” Id. at *1; see also id. at *10 (discussing cases, and dismissing unjust enrichment claim where it was “not based on a ‘specific legal principle or situation which equity has established or recognized’ in New Hampshire so as ‘to bring [this] case within the scope of the doctrine’.”) (quoting Cohen v. Frank Developers, Inc.,

(1978)).

9 the Corporate Defendants, not the actions of Robinson or Iske.

Because plaintiff does not allege that Robinson or Iske are

market participants, defendants say, the CPA claim against them

must be dismissed.

In response, Emseal takes the position that its CPA claim

against Robinson and Iske is not predicated on their capacity as

principles of the Corporate Defendants. See Pl.’s Obj. to Mot.

for Judgment on the Pleadings (Document No. 119) at 4 (“Emseal

is not trying to impose the LLC’s underlying liability upon the

Individual Defendants, but rather alleges that all five named

Defendants are individually liable for their own actions.”)

(emphasis in original). Therefore, piercing the corporate veil

is unnecessary. Instead, Emseal argues, it has alleged that all

defendants collectively (including Robinson and Iske) have

engaged in conduct that violates the CPA. Plaintiff notes that

Robinson and Iske are personally liable for any tort in which

they participated or authorized as members and managers of the

Corporate Defendants.

Plaintiff’s position, however, is at odds with the

governing legal standard. “The general rule, and the rule in

this circuit, is that an officer of a corporation ‘is liable for

torts in which he personally participated, whether or not he was

acting within the scope of his authority.’” Escude Cruz v. Ortho

10 Pharm. Corp.,

(1st Cir. 1980) (quoting Lahr v.

Adell Chemical Co.,

(1st Cir. 1962)). “What

is required is some showing of direct personal involvement by

the corporate officer in some decision or action which is

causally related to plaintiff's injury.”

Plaintiff’s complaint includes no factual allegations

related to Robinson or Iske, beyond their names, job titles, and

their addresses as listed with the New Hampshire Secretary of

State. Plaintiff instead lumps together all defendants,

corporate and individual, and does not allege that either

Robinson or Iske had any direct personal involvement in the

challenged conduct. Plaintiff’s allegations are utterly

insufficient to establish a basis for Robinson or Iske to be

held individually liable for the “alleged actions of the

corporations with which they are associated.” Galvin v.

Metrocities Mortg., LLC, No. 1:16-CV-00268-JDL,

,

at *8 (D.N.H. Nov. 17, 2017) (citations omitted).

Accordingly, Robinson’s and Iske’s motion for judgment on

the pleadings on plaintiff’s CPA claim is granted.

Conclusion

For the foregoing reasons, as well as those set forth in

defendants’ memoranda (documents. nos. 113-1, 114-1, and 123)

defendants’ motion for judgment on the pleadings on plaintiff’s

11 unjust enrichment claim (document no. 113) is GRANTED.

Robinson’s and Iske’s motion for judgment on the pleadings on

plaintiff’s Consumer Protection Act/Unfair and Deceptive Trade

Practices claim (document no. 114) is GRANTED.

SO ORDERED.

____________________________ Steven J. McAuliffe United States District Judge

August 6, 2018

cc: Michael K. Kinney, Esq. Robert R. Lucic, Esq. Robert L. Rispoli, Esq. Brian D. Thomas, Esq. Bryanna K. Devonshire, Esq. James P. Harris, Esq. Peter A. Nieves, Esq. Brendan M. Shortell, Esq. David J. Connaughton, Jr., Esq. James E. Hudson, III, Esq. Gary E. Lambert, Esq.

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