Pemberton

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8 UNITED STATES DISTRICT COURT

9 SOUTHERN DISTRICT OF CALIFORNIA

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11 KIRK PEMBERTON, Case No.: 24-CV-1179 TWR (BJW)

12 Plaintiff,

ORDER GRANTING DEFENDANT’S

13 v. MOTION TO DISMISS

PLAINTIFF’S SECOND AMENDED

14 JACK IN THE BOX INC.,

COMPLAINT WITH PREJUDICE

15 Defendant.

(ECF No. 34)

16

17 Presently before the Court is the Motion to Dismiss Plaintiff Kirk Pemberton’s

18 Second Amended Complaint (“Mot.,” ECF No. 34) filed by Defendant Jack in the Box Inc.

19 (“JITB”), as well as Pemberton’s Response in Opposition to (“Opp’n,” ECF No. 37) and

20 JITB’s Reply in Support of (“Reply,” ECF No. 38) the Motion and Pemberton’s Notice of

21 Supplemental Authority (“Not.,” ECF No. 39). The Court held a hearing on December 18,

22 2025. (See ECF No. 40.) Having carefully considered Pemberton’s Second Amended

23 Complaint (“SAC,” ECF No. 33), those materials properly incorporated by reference, the

24 Parties’ arguments, and the relevant law, the Court GRANTS JITB’s Motion and

25 DISMISSES WITH PREJUDICE Pemberton’s Second Amended Complaint.

26 / / /

27 / / /

28 / / /

1 BACKGROUND

2 Pemberton is the inventor of a menu board system called the “Re-Facing Magnetic

3 System” (“RMS”). (See SAC ¶¶ 6, 8, 10.) The components of the RMS are as follows:

4 “(a) mounting boards; (b) acrylic prints; (c) polycarbonate panels; (d) magnets; (e) price

5 carriers; (f) seam covers; and (g) pre-press-print production.” (Id. ¶ 11.) Pemberton is the

6 listed owner and inventor of U.S. Patent Nos. 7,870,687 (the “’687 Patent”); 8,205,369 (the

7 “’369 Patent”); and 8,464,447 (the “’447 Patent”) (collectively, the “Asserted Patents”).

8 (Id. ¶¶ 31, 49, 73; ECF No. 1-2 (“Ex. A”).) Plaintiff alleges that JITB’s RMS systems

9 infringe claims 1–13 of the ’687 Patent, claims 1–16 of the ’369 Patent, and claims 1–9 of

10 the ’447 Patent (collectively, the “Asserted Claims”). (Id. ¶¶ 23, 32–41, 50–65, 74–85.)

11 The Asserted Patents are related and are all entitled “Signage Apparatus Having

12 Simple Magnet-Based Structure for Ease of Modification,” and they share overlapping

13 specifications. U.S. Patent No. 7,870,687, at [54] (filed Jan. 18, 2011); U.S. Patent No.

14 8,205,369, at [54] (filed Jun. 26, 2012); U.S. Patent No. 8,464,447, at [54] (filed Jun. 18,

15 2013). The inventions claimed in the Asserted Patents relate “to signs of the type used in

16 fast food restaurants, coffee shops and other retail stores where items offered for sale and

17 their prices frequently change.” ’687 Patent col. 1 ll. 8–11; see ’369 Patent col. 1 ll.

18 15–18; ’447 Patent col. 1 ll. 16–17. More specifically, the inventions relate “to a readily

19 modifiable menu board or similar sign which employs a relatively simple magnet-based

20 structure to facilitate easy modifications by non-technical personnel.” ’687 Patent col. 1

21 ll. 11–14; see ’369 Patent col. 1 ll. 18–21; ’447 Patent col. 1 ll. 17–21

22 As examples of the claimed invention, independent claim 1 of the ’687 Patent,

23 independent claim 1 of the ’369 Patent, and independent claim 1 of the ’447 Patent are set

24 forth in full below.

25

26

27 1 For purposes of the Motion, the facts alleged in Pemberton’s Second Amended Complaint are

accepted as true. See Vasquez v. Los Angeles Cnty., 487 F.3d 1246, 1249 (9th Cir. 2007) (holding that, in

28

1 Independent claim 1 of the ’687 Patent recites:

2 1. A signage apparatus comprising:

3 a mounting board having at least one aperture;

4 a metal member attached to a rear surface of said mounting board at said

aperture;

5

a first printed sheet having observable indicia thereon;

6

at least one magnet affixed to a back surface of said first printed sheet, said

7

magnet being configured to be received in said at least one aperture in

8 magnetic attraction to said metal member for retaining said first printed sheet

against said mounting board;

9

wherein said mounting board is translucent.

10

’687 Patent col. 4 ll. 56–67.

11

Independent claim 1 of the ’369 Patent recites:

12

A signage apparatus comprising:

13

a mounting board having at least one aperture;

14

a metal member attached to a rear surface of said mounting board at said

15 aperture and a magnet attached to said metal member within said aperture;

16 a first printed sheet having observable indicia thereon;

17 at least one connection device secured to a surface of said first printed sheet,

said device being configured to be received in said at least one aperture and

18

having a magnetizable metal for magnetic attraction to said magnet for

19 retaining said first printed sheet against said mounting board;

20 wherein said magnet and said at least one aperture are both circular cylindrical

in shape and where said circular cylindrical aperture is at least partially

21

beveled.

22 ’369 Patent col. 6 ll. 23–37.

23 Independent claim 1 of the ’447 Patent recites:

24 1. A readily modifiable signage apparatus comprising:

25 a wall having a planar surface for receiving a printed sheet thereon;

26 a plurality of printed sheets for being releasably affixed to said planar surface,

each of said printed sheets and said planar surface having corresponding

27

magnetic attraction devices affixed at selected locations for retaining at least

28 one of said printed sheets on said planar surface in a precisely aligned position

1 and for selective removal of one said printed sheet for replacement by another

said printed sheet;

2

wherein said magnetic attraction devices comprise a respective metal device

3

affixed to a rear surface of each said printed sheet and a magnet affixed to said

4 planar surface of said wall and accessible for magnetic retention of said

magnet to said metal device;

5

wherein each said respective metal device is affixed to said rear surface of a

6

printed sheet through a respective sponge-like member interposed between

7 said each metal device and a rear surface of a printed sheet.

8 ’447 Patent col. 6 ll. 32–51.

9 On July 9, 2024, Pemberton filed the instant action against JITB, asserting three

10 claims of patent infringement as to each of the Asserted Patents. (See generally Compl.)

11 On November 13, 2024, Pemberton filed a motion to dismiss Pemberton’s complaint, (ECF

12 No. 14), which the Court granted with leave to amend on February 26, 2025, (ECF No.

13 21).

14 Pemberton subsequently filed a First Amended Complaint on March 11, 2025. (See

15 generally ECF No. 22 (“FAC”).) On March 26, 2025, JITB filed a motion to dismiss

16 Pemberton’s claims for patent infringement contained in the First Amended Complaint,

17 (see generally ECF No. 23), which the Court granted with leave to amend on August 26,

18 2025. (See generally ECF No. 31 (the “Prior Order”).) In the Prior Order, the Court

19 construed the claim term “affixed to” from the ’687 Patent and the ’447 Patent to require

20 that the magnet/magnetic device be either: (1) directly attached to the printed sheet; or

21 (2) be directly attached to an intermediary component/device that is then directly attached

22 to the printed sheet. (See id. at 13–15.) Similarly, the Court construed the claim term

23 “secured to” from the ’369 Patent to require that the connection device having

24 magnetizable metal be either: (1) directly attached to the printed sheet; or (2) be directly

25 attached to an intermediary component/device that is then directly attached to the printed

26 sheet. (Id. at 15–16.) In light of those two claim constructions, the Court granted JITB’s

27 motion to dismiss because a document attached to Pemberton’s First Amended Complaint

28 showed that the JITB accused system had nothing directly fastened to the identified printed

1 sheet, meaning that the attached document indisputably showed that the accused JITB

2 system does not infringe each and every element of the asserted claims in the First

3 Amended Complaint. (See id.)

4 Pemberton subsequently filed his Second Amended Complaint on September 8,

5 2025. (See generally SAC.) In the Second Amended Complaint, Pemberton now alleges

6 that JITB infringes each and every claim contained in the Asserted Patents. (See id. ¶¶ 23,

7 32–41, 50–65, 74–85.) In addition, the Second Amended Complaint adds “claim

8 construction” allegations that Pemberton applies to the infringement allegations contained

9 in the Second Amended Complaint. (See id. ¶¶ 20–22.) The instant Motion seeking to

10 dismiss Pemberton’s claims for patent infringement contained in the Second Amended

11 Complaint followed on September 23, 2025. (See generally ECF No. 34.)

12 LEGAL STANDARD

13 “A motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) for failure to

14 state a claim upon which relief can be granted ‘tests the legal sufficiency of a claim.’”

15 Conservation Force v. Salazar, 646 F.3d 1240, 1241–42 (9th Cir. 2011) (quoting Navarro

16 v. Block, 250 F.3d 729, 732 (9th Cir. 2001)). “A district court’s dismissal for failure to

17 state a claim under Federal Rule of Civil Procedure 12(b)(6) is proper if there is a ‘lack of

18 a cognizable legal theory or the absence of sufficient facts alleged under a cognizable legal

19 theory.’” Id. at 1242 (quoting Balistreri v. Pacifica Police Dep’t, 901 F.2d 696, 699 (9th

20 Cir. 1988)).

21 “To survive a motion to dismiss, a complaint must contain sufficient factual matter,

22 accepted as true, to ‘state a claim to relief that is plausible on its face.’” Iqbal, 556 U.S. at

23 677–78 (quoting Twombly, 550 U.S. at 570). “A claim has facial plausibility when the

24 plaintiff pleads factual content that allows the court to draw the reasonable inference that

25 the defendant is liable for the misconduct alleged.” Id. (citing Twombly, 550 U.S. at 556).

26 “[W]here the well-pleaded facts do not permit the court to infer more than the mere

27 possibility of misconduct, the complaint has alleged—but it has not ‘show[n]’—‘that the

28 / / /

1 pleader is entitled to relief.’” Id. at 679 (second alteration in original) (quoting Fed. R.

2 Civ. P. 8(a)(2)).

3 “If a complaint is dismissed for failure to state a claim, leave to amend should be

4 granted ‘unless the court determines that the allegation of other facts consistent with the

5 challenged pleading could not possibly cure the deficiency.’” DeSoto v. Yellow Freight

6 Sys., Inc., 957 F.2d 655, 658 (9th Cir. 1992) (quoting Schreiber Distrib. Co. v. Serv-Well

7 Furniture Co., 806 F.2d 1393, 1401 (9th Cir. 1986)). “A district court does not err in

8 denying leave to amend where the amendment would be futile.” Id. (citing Reddy v. Litton

9 Indus., 912 F.2d 291, 296 (9th Cir. 1990), cert. denied, 502 U.S. 921 (1991)).

10 ANALYSIS

11 JITB argues that Pemberton’s Second Amended Complaint should be dismissed

12 because Pemberton’s operative complaint has again failed adequately to plead claims for

13 patent infringement and also violates the Court’s Prior Order. (See Mot. at 1–2.)

14 Specifically, JITB contends that the Second Amended Complaint should be dismissed

15 because the screenshots attached to the First Amended Complaint and referenced in the

16 Second Amended Complaint conclusively show that the JITB accused system does not

17 infringe the Asserted Claims under the claim constructions set forth in the Court’s Prior

18 Order. (See Mot. at 1–2, 10–19.) In response, Pemberton argues that JITB’s Motion should

19 be denied because the Court erred in its prior claim constructions and the claim

20 construction issues in this case should be resolved through a Markman hearing rather than

21 a Rule 12(b)(6) motion. (See Opp’n at 1–2.)

22 I. Claim Construction

23 A. Legal Standard

24 Claim construction “is exclusively within the province of the court [to decide],” not

25 the jury. Markman v. Westview Instruments, Inc., 517 U.S. 370, 373 (1996) (en banc); see

26 Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 326 (2015) (holding claim

27 construction is an issue of law for the court to decide). Although claim construction is

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1 ultimately a question of law, “subsidiary factfinding is sometimes necessary.” Teva, 574

2 U.S. at 326.

3 “It is a ‘bedrock principle’ of patent law that the ‘claims of a patent define the

4 invention to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp.,

5 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citations omitted). “The purpose of claim

6 construction is to ‘determin[e] the meaning and scope of the patent claims asserted to be

7 infringed.’” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360

8 (Fed. Cir. 2008) (quoting Markman, 52 F.3d at 976); accord Kaufman v. Microsoft Corp.,

9 34 F.4th 1360, 1369 (Fed. Cir. 2022).

10 Claim terms “‘are generally given their ordinary and customary meaning[,]’” which

11 “is the meaning that the term would have to a person of ordinary skill in the art in question

12 at the time of the invention.” Phillips, 415 F.3d at 1312–13. “In some cases, the ordinary

13 meaning of claim language as understood by a person of skill in the art [(“POSITA”)] may

14 be readily apparent even to lay judges, and claim construction in such cases involves little

15 more than the application of the widely accepted meaning of commonly understood

16 words.” Id. at 1314. “However, in many cases, the meaning of a claim term as understood

17 by persons of skill in the art is not readily apparent.” O2 Micro, 521 F.3d at 1360. If the

18 meaning of the term is not readily apparent, the court must look to “‘those sources available

19 to the public that show what a person of skill in the art would have understood disputed

20 claim language to mean.’” Phillips, 415 F.3d at 1314 (quoting Innova/Pure Water, Inc. v.

21 Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)). “Those sources

22 include ‘the words of the claims themselves, the remainder of the specification, the

23 prosecution history, and extrinsic evidence.’” Id. (quoting Innova, 381 F.3d at 1116); see

24 Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1217–18 (Fed. Cir. 2014).

25 In determining the proper construction of a claim, a court should first look to the

26 language of the claims. See Allergan Sales, LLC v. Sandoz, Inc., 935 F.3d 1370, 1373 (Fed.

27 Cir. 2019) (“‘[C]laim construction must begin with the words of the claims themselves.’”);

28 Source Vagabond Sys. Ltd. v. Hydrapak, Inc., 753 F.3d 1291, 1299 (Fed. Cir. 2014) (“‘a

1 claim construction analysis must begin and remain centered on the claim language itself’”).

2 The context in which a disputed term is used in the asserted claims may provide substantial

3 guidance as to the meaning of the term. See Phillips, 415 F.3d at 1314.

4 A court must also read claims “in view of the specification, of which they are a part.”

5 Markman, 52 F.3d at 979; see 35 U.S.C. § 112(b) (“The specification shall conclude with

6 one or more claims particularly pointing out and distinctly claiming the subject matter

7 which the inventor or a joint inventor regards as the invention.”). “‘Apart from the claim

8 language itself, the specification is the single best guide to the meaning of a claim term.’”

9 Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1382 (Fed. Cir. 2014) (quoting AIA Eng’g Ltd.

10 v. Magotteaux Int’l S/A, 657 F.3d 1264, 1272 (Fed. Cir. 2011)).

11 But “[t]he written description part of the specification does not delimit the right to

12 exclude. That is the function and purpose of claims.” Markman, 52 F.3d at 980. Therefore,

13 “it is improper to read limitations from a preferred embodiment described in the

14 specification—even if it is the only embodiment—into the claims absent a clear indication

15 in the intrinsic record that the patentee intended the claims to be so limited.” Dealertrack,

16 Inc. v. Huber, 674 F.3d 1315, 1327 (Fed. Cir. 2012); accord Openwave Sys., Inc. v. Apple

17 Inc., 808 F.3d 509, 514 (Fed. Cir. 2015).

18 In addition to the claim language and the specification, the patent’s prosecution

19 history may be considered if it is in evidence. Phillips, 415 F.3d at 1317. The prosecution

20 history “consists of the complete record of the proceedings before the [Patent and

21 Trademark Office (“PTO”)] and includes the prior art cited during the examination of the

22 patent.” Id. “Like the specification, the prosecution history provides evidence of how the

23 PTO and the inventor understood the patent.” Id. “Yet because the prosecution history

24 represents an ongoing negotiation between the PTO and the applicant, rather than the final

25 product of that negotiation, it often lacks the clarity of the specification and thus is less

26 useful for claim construction purposes.” Id. In addition, a court should also consult the

27 prosecution history “so that the court can exclude any interpretation that was disclaimed

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1 during prosecution.” Sorensen v. Int’l Trade Comm’n, 427 F.3d 1375, 1378 (Fed. Cir.

2 2005) (citing Phillips, 415 F.3d at 1317).

3 In most situations, analysis of the intrinsic evidence will resolve claim construction

4 disputes. See Vitronics, 90 F.3d at 1583; Teva, 574 U.S. at 331; see also Seabed

5 Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 1287 (Fed. Cir. 2021) (“If the

6 meaning of a claim term is clear from the intrinsic evidence, there is no reason to resort to

7 extrinsic evidence.”). However, “[w]here the intrinsic record is ambiguous, and when

8 necessary,” district courts may “rely on extrinsic evidence, which ‘consists of all evidence

9 external to the patent and prosecution history, including expert and inventor testimony,

10 dictionaries, and learned treatises.’” Power Integrations, Inc. v. Fairchild Semiconductor

11 Int’l, Inc., 711 F.3d 1348, 1360 (Fed. Cir. 2013) (quoting Phillips, 415 F.3d at 1317). A

12 court must evaluate all extrinsic evidence in light of the intrinsic evidence. Phillips, 415

13 F.3d at 1319. “‘[E]xtrinsic evidence is to be used for the court’s understanding of the

14 patent, not for the purpose of varying or contradicting the terms of the claims.’” Genuine

15 Enabling Tech. LLC v. Nintendo Co., 29 F.4th 1365, 1373 (Fed. Cir. 2022); see also Summit

16 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1290 (Fed. Cir. 2015) (“Extrinsic evidence

17 may not be used ‘to contradict claim meaning that is unambiguous in light of the intrinsic

18 evidence.’”). In cases where subsidiary facts contained in the extrinsic evidence “are in

19 dispute, courts will need to make subsidiary factual findings about that extrinsic evidence.”

20 Teva, 574 U.S. at 332.

21 “[D]istrict courts are not (and should not be) required to construe every limitation

22 present in a patent’s asserted claims.” O2 Micro, 521 F.3d at 1362; see also Eon Corp. IP

23 Holdings v. Silver Spring Networks, 815 F.3d 1314, 1318–19 (Fed. Cir. 2016) (“‘[O]nly

24 those terms need be construed that are in controversy, and only to the extent necessary to

25 resolve the controversy.’”). In certain situations, it is appropriate for a court to determine

26 that a claim term needs no construction and its plain and ordinary meaning applies. O2

27 Micro, 521 F.3d at 1360; Phillips, 415 F.3d at 1314. But “[a] determination that a claim

28 term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate

1 when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’

2 meaning does not resolve the parties’ dispute.” O2 Micro, 521 F.3d at 1361. If the parties

3 dispute the scope of a certain claim term, it is the court’s duty to resolve the dispute. Id. at

4 1362; Eon, 815 F.3d at 1319.

5 B. Analysis

6 All of the asserted claims of the ’687 Patent and the ’447 Patent include the

7 requirement that the claimed apparatus include a magnet/magnetic attraction device that is

8 “affixed to” the rear/back surface of the printed sheet. See ’687 Patent col. 4 ll. 62–63 (“at

9 least one magnet affixed to a back surface of said first printed sheet”), col. 5 ll. 26–28; ’447

10 Patent col. 6 ll. 43–46 (“said magnetic attraction devices comprise a respective metal

11 device affixed to a rear surface of each said printed sheet and a magnet affixed to said

12 planar surface of said wall”), col. 7 ll. 8–10, 25–26. In the Court’s Prior Order, the Court

13 construed this claim language to require that the magnet/magnetic device be either:

14 (1) directly attached to the printed sheet; or (2) be directly attached to an intermediary

15 component/device that is then directly attached to the printed sheet. (See Prior Order at

16 13–15.)

17 Similarly, all of the asserted claims from the ’369 Patent include a limitation

18 requiring that the accused apparatus/method include a magnetic connection device that is

19 “secured to” the surface of the printed sheet. See ’369 Patent col. 6 ll. 29–32 (“at least one

20 connection device secured to a surface of said first printed sheet, said device . . . having a

21 magnetizable metal for magnetic attraction”), 58–61, col. 7 ll. 8–10, 46–48, col. 8 ll. 7–9,

22 29–30. In the Court’s Prior Order, the Court construed this claim language to require that

23 the magnetic connection device be either: (1) directly attached to the printed sheet; or

24 (2) directly attached to an intermediary component/device that is then directly attached to

25 the printed sheet. (See Prior Order at 15–16.)

26 As an initial matter, it should be noted that, in deciding JITB’s Rule 12(b)(6) Motion,

27 the Court need not accept as true any of the claim construction allegations contained in the

28 Second Amended Complaint. Those allegations assert that the claim terms “affixed to”

1 and “secured to” should be given their plain and ordinary meaning and set forth what

2 Pemberton contends is the plain and ordinary meaning of those terms. (See SAC

3 ¶¶ 20–22.) As explained above, claim construction is an issue of law for the Court to

4 decide. See Teva, 574 U.S. at 326; Markman, 517 U.S. at 373. And, in deciding a Rule

5 12(b)(6) motion to dismiss, a court need not accept as true any legal conclusions set forth

6 in the complaint. Whitaker v. Tesla Motors, Inc., 985 F.3d 1173, 1176 (9th Cir. 2021)

7 (citing Iqbal, 556 U.S. at 678–79). The Court therefore need not accept as true Pemberton’s

8 allegations in the Second Amended Complaint regarding the proper meaning of the claim

9 terms “affixed to” and “secured to.”

10 In its Opposition, Pemberton provides several reasons for why the Court erred in

11 rendering its claim constructions for the terms “affixed to” and “secured to” in the Prior

12 Order. All of these arguments fail.

13 First, Pemberton notes that figure 4 from the ’687 Patent’s specification depicts an

14 embodiment of the invention where the “magnets are received—not glued—within the

15 apertures.” (Opp’n at 7.) Although this is a correct statement by Pemberton, it is of no

16 consequence. The “apertures” Pemberton is referring to are the apertures on the mounting

17 board. The claim constructions at issue relate to how the claimed magnets/magnetic

18 attraction devices are attached to the claimed printed sheet—not how the magnets/magnetic

19 attraction devices are received by the apertures on the mounting board. Further, in

20 describing figure 4, the ’687 Patent’s specification states:

21 Referring first to FIG. 4, it will be seen that each printed sheet 22 is attached

to the mounting board at a pair of apertures 26 using a corresponding pair of

22

flat cylindrical magnets 28. Each such magnet is adhesively affixed to a

23 sponge-like material 29 which is, in turn, glued to the back of the printed sheet

22 at precisely selected locations.

24

25 ’687 Patent col. 4 ll. 7–12 (italics added). As such, figure 4 of the specification and its

26 corresponding description are consistent with the Court’s claim construction for the term

27 “affixed to” from the ’687 Patent. (See Prior Order at 13–14.)

28 / / /

1 Second, Pemberton contends that figure 5 from the ’687 Patent’s specification

2 depicts an embodiment where the edge members are magnetically coupled to

3 corresponding apertures in the mounting board. (Opp’n at 8–10.) Pemberton argues that

4 the Court’s claim construction for the term “affixed to” is improper because it excludes

5 this preferred embodiment. (Id. at 12); see also Kaufman, 34 F.4th at 1372 (“‘A claim

6 construction that excludes a preferred embodiment is rarely, if ever correct and would

7 require highly persuasive evidentiary support.’”). Pemberton is wrong, and the Court’s

8 claim construction does not exclude that embodiment. Again, the Court’s claim

9 construction for the ’687 Patent relates to how magnets/magnetic attraction devices are

10 attached to the printed sheet in the claimed invention. The claim language and the

11 specification make clear that the claimed “edge member” is a different component than the

12 claimed “printed sheets.” See, e.g., ’687 Patent col. 6 ll. 33–36 (“The signage apparatus

13 recited in claim 5 further comprising at least one elongated edge member magnetically

14 attached to said mounting board in overlapping relation to at least one of said printed

15 sheets.” (emphasis added)). As such, the specification’s discussion of edge members and

16 how they attach to the mounting board is irrelevant to the Court’s construction of the claim

17 terms at issue. (See Prior Order at 14–15.)

18 Third, Pemberton notes that the plain language of claim 1 of the ’369 Patent includes

19 “no requirement that the magnet be glued or permanently fixed.” (Opp’n at 9–10.) This

20 is true, but the Court’s claim constructions do not include that requirement either. The

21 Court’s constructions simply require that the magnet/magnetic attraction device be either:

22 (1) directly attached to the printed sheet; or (2) be directly attached to an intermediary

23 component/device that is then directly attached to the printed sheet. As such, the fact that

24 the claim language does not require glue or permanent fixation of the magnet does not

25 demonstrate any error in the Court’s constructions.

26 Fourth, Pemberton notes that the ’369 Patent introduces a second preferred

27 embodiment that uses snap-cap connectors where “the magnets remain embedded in the

28 mounting board, while the washer—secured to the sheet through an intermediate snap-

1 cap—completes the magnetic circuit.” (Opp’n at 10–11.) Pemberton again contends that

2 the Court’s claim construction excludes this specific embodiment. Again, Pemberton is

3 wrong, and the Court’s claim construction for the term “secured to” from the ’369 Patent

4 encompasses this specific embodiment.

5 The specification of the ’369 Patent describes this embodiment as follows:

6 Reference will now be made to FIGS. 9 to 20 which illustrate an alternative

preferred embodiment of the invention for affixing graphics sheets to a

7

mounting board. As shown in FIG. 9, in an embodiment 50, a mounting board

8 52 has a plurality of bezel apertures 54 for receiving at least one graphics sheet

56 to form a menu board. As seen best in FIGS. 10 and 11, in this embodiment

9

a metal shim 70 is secured to the back surface 55 of the board adjacent each

10 aperture 54 and a round metal projection 72 extends into the aperture. A

watch battery size magnet 74 is secured to the projection 72 by an adhesive.

11

12 At respective corners of the graphics sheet 56 are mounted snap-cap

connections 58. Each has a center protrusion 62 which extends through a

13 small hole 61 in the sheet 56 and mates with a disk 60. Disk 60 has a sheet

14 side surface 64 and a board side surface 66 as seen in FIG. 12. Protrusion 62

is lockably received in a mating member 68 (see FIGS. 15 to 17). As shown

15 in FIGS. 18 to 20, disk 60 has a metal washer 69 secured therein and when

16 mated with snap-cap connection 58 by trapping protrusion 62, sandwiches the

graphic sheet 56 as best shown in FIG. 20. This permits washer 69 to be

17 magnetically affixed to magnet 74 as shown in FIG. 11. Thus, in this second

18 embodiment, each graphics sheet 56 is secured to mounting board 52 by a

plurality of magnets, but those magnets remain in the apertures 54 of the board

19 instead of on the back of the sheets as depicted in the first embodiment of FIG.

20 4A-4C.

21 ’369 Patent col. 5 ll. 28–54 (emphasis in original); see also id. figs. 9–20.

22 In the passages above, the ’369 Patent’s specification describes an embodiment

23 where the magnetic attraction connection device (“metal 69” in “disk 60”) is directly

24 attached to the printed sheet (“graphics sheet 56”) via “mounted snap-cap connections 58.”

25 This preferred embodiment is entirely consistent with the Court’s construction of the term

26 “secured to” from the ’369 Patent because in the embodiment the magnetic attraction

27 connection devices are directly attached to the printed sheet via the snap-cap connectors.

28 / / /

1 Fifth, Pemberton notes that the ’447 Patent’s specification explains that “the magnet

2 may be either on the sign or on the surface and the connecting metal device on the other.”

3 (Opp’n at 11.) This is of no consequence because the Court’s claim construction for the

4 ’447 Patent simply requires that a magnetic attraction device be attached to the printed

5 sheet. That magnetic attraction device can be either the magnet or the connecting metal

6 device. Therefore, the Court’s claim construction is not inconsistent with that passage in

7 the specification.

8 Sixth, Pemberton cites to the Asserted Patents’ prosecution history. (See Opp’n at

9 3–7.) All of the prosecution history cited by Pemberton, however, is irrelevant to the claim

10 construction issues before the Court. Pemberton contends that these portions of the

11 prosecution history demonstrate that in the claimed invention magnetic coupling is used to

12 connect the printed sheet to the mounting board. (See id.) Again, this is of no consequence.

13 The claim constructions at issue relate to how the claimed magnets/magnetic attraction

14 devices are attached to the claimed printed sheet—not how the magnets/magnetic attraction

15 devices are received by the apertures on the mounting board. The Court agrees with

16 Pemberton that in the claimed inventions, the printed sheets are attached to the mounting

17 boards via magnetic coupling. But that does not change the fact that the claim language at

18 issue also specifically requires that the magnets/magnetic attraction devices are “affixed

19 to” the printed sheet and that the magnetic attraction connection devices are “secured to”

20 the printed sheets.2 And a proper construction of those terms based on the intrinsic record

21 requires that the magnets/magnetic attraction devices/ magnetic attraction connection

22 devices are either: (1) directly attached to the printed sheet; or (2) directly attached to an

23 / / /

24

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2 Indeed, the Court agrees with JITB that Pemberton’s claim construction positions improperly

26 attempt to read out this specific claim language and render it meaningless. See Merck & Co. v. Teva

Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“[C]laim construction that gives meaning to all

27 the terms of the claim is preferred over one that does not do so.”); see also SimpleAir, Inc. v. Sony Ericsson

Mobile Commc’ns AB, 820 F.3d 419, 429 (Fed. Cir. 2016) (“[I]nterpretations that render some portion of

28

1 intermediary component/device that is then directly attached to the printed sheet. See

2 supra; (see also ECF No. 31 at 12–16).

3 Finally, Pemberton contends that a Rule 12(b)(6) motion to dismiss is the wrong

4 vehicle to decide these claim construction issues and that the issues should be decided at a

5 proper Markman hearing instead. (Opp’n at 2.) But the Federal Circuit has sanctioned

6 deciding claim construction issues at the Rule 12(b)(6) stage a case when the claims are

7 “construed based on intrinsic evidence alone,” see UTTO, 119 F.4th at 992–94, as is the

8 case here. Pemberton does not identify any evidence or arguments relevant to the present

9 claim construction dispute that it can only present to the Court if the Court holds a

10 Markman hearing. All of the claim construction arguments contained in Pemberton’s

11 briefing are based on the intrinsic record alone. (See generally Opp’n at 3–12, 14–17.) As

12 such, Pemberton has failed to provide an adequate explanation for why these claim

13 construction issues cannot be decided at the Rule 12(b)(6) stage.

14 Pemberton also filed a Notice alerting the Court to the Federal Circuit’s recent

15 decision in Adnexus Inc. v. Meta Platforms, Inc., No. 2024-1551, 2025 WL 3492653 (Fed.

16 Cir. Dec. 5, 2025). (See Not.) The Adnexus case, however, has no impact on the Court’s

17 decision to decide these claim construction issues at the 12(b)(6) stage. In Adnexus, the

18 Federal Circuit reaffirmed that, “[i]n evaluating a motion to dismiss, district courts may, if

19 they wish, engage in claim construction, provided they give the parties appropriate notice

20 and an opportunity to be heard.” 2025 WL 3492653, at *5. In Adnexus, the Federal Circuit

21 held that the district court erred because it had “implicitly constru[ed] the disputed claim

22 term against Adnexus, the non-moving party, without first giving Adnexus the opportunity

23 it [had] requested to be heard on the issue of the proper construction of this term.” Id. The

24 Federal Circuit’s holding in Adnexus has no impact here because, by granting Pemberton

25 leave to amend and getting a second round of briefing on the claim construction issues in

26 this case, the Court has given Pemberton adequate “notice and opportunity to be heard” on

27 these claim construction issues. See id. Indeed, at the hearing, Pemberton conceded that,

28 at this juncture, the Court has a robust record on the claim construction issues presented by

1 the Parties. As such, there is no reason to delay resolution of these claim construction

2 issues to a later stage in the case.

3 In sum, Pemberton has failed to provide the Court with any reason to revisit or

4 reconsider it constructions of the claim terms “affixed to” and “secured to.” As such, the

5 Court reaffirms that the claim terms “affixed to” and “secured to” require that the

6 magnet/magnetic attraction device/magnetic attraction connection device be either: (1)

7 directly attached to the printed sheet; or (2) directly attached to an

8 intermediary component/device that is then directly attached to the printed sheet.

9 II. Patent Infringement

10 A. Legal Standard

11 Federal Circuit law applies to the specific question of whether a complaint properly

12 states a claim for patent infringement on which relief may be granted. AlexSam, Inc. v.

13 Aetna, Inc., 119 F.4th 27, 35 (Fed. Cir. 2024).

14 Generally, to establish infringement of a patent claim, “a plaintiff must prove the

15 presence of each and every claim element or its equivalent in the accused method or

16 device.” Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1378 (Fed. Cir.

17 2011); see SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 983 F.3d

18 1367, 1380 (Fed. Cir. 2021). A patent infringement analysis proceeds in two steps. Niazi

19 Licensing Corp. v. St. Jude Med. S.C., Inc., 30 F.4th 1339, 1350 (Fed. Cir. 2022); JVW

20 Enters., Inc. v. Interact Accessories, Inc., 424 F.3d 1324, 1329 (Fed. Cir. 2005). In the

21 first step, the court construes the asserted claims as a matter of law. See Niazi, 30 F.4th at

22 1351; JVW, 424 F.3d at 1329. In the second step, the factfinder compares the properly

23 construed claims to the accused device. See id.

24 The Federal Circuit has explained that, to assert a plausible claim for patent

25 infringement under the Iqbal/Twombly standard, the complaint must “place the alleged

26 infringer on notice of what activity is being accused of infringement.” Bot M8 LLC v. Sony

27 Corp. of Am., 4 F.4th 1342, 1352 (Fed. Cir. 2021) (cleaned up) (quoting Lifetime Indus.,

28 Inc. v. Trim-Lok, Inc., 869 F.3d 1372, 1379 (Fed. Cir. 2017)). A plausible claim for patent

1 infringement “must do more than merely allege entitlement to relief; it must support the

2 grounds for that entitlement with sufficient factual content.” Id. Thus, a plaintiff cannot

3 simply recite the claim elements and merely conclude that the accused product has those

4 elements. Id. at 1353. Rather, “[t]here must be some factual allegations that, when taken

5 as true, articulate why it is plausible that the accused product infringes the patent claim.”

6 Id. “The level of detail required in any given case will vary depending upon a number of

7 factors, including the complexity of the technology, the materiality of any given element

8 to practicing the asserted claim(s), and the nature of the allegedly infringing device.” Id.;

9 see, e.g., Disc Disease Sols. Inc. v. VGH Solutions, Inc., 888 F.3d 1256, 1260 (Fed. Cir.

10 2018) (considering the complexity of the technology and the number of claims at issue in

11 assessing whether the plaintiff had adequately stated a claim for patent infringement).

12 Nevertheless, the Federal Circuit has explained that the standard for pleading patent

13 infringement is “not onerous.” Bot M8, 4 F.4th at 1354; see also Bell Semiconductor, LLC

14 v. NXP USA, Inc., 653 F. Supp. 3d 767, 777 (S.D. Cal. 2023) (“[V]ery little is required in

15 order to plead a claim of patent infringement.”). A patentee need not prove its case at the

16 pleading stage.” AlexSam, 119 F.4th at 35 (citing Bot M8, 4 F.4th at 1346). “More

17 particularly: ‘[a] plaintiff is not required to plead infringement on an element-by-element

18 basis. Instead, it is enough that a complaint place the alleged infringer on notice of what

19 activity . . . is being accused of infringement.’” Id. (quoting Bot M8, 4 F.4th at 1352).

20 Further, in a recent decision, the Federal Circuit held that a district court may

21 consider claim construction issues in deciding a Rule 12(b)(6) motion to dismiss. See

22 UTTO Inc. v. Metrotech Corp., 119 F.4th 984, 992–94 (Fed. Cir. 2024) (rejecting per se

23 rule against construing claim terms at the Rule 12(b)(6) stage of a case); see also, e.g.,

24 Adnexus Inc., 2025 WL 3492653, at *5. In UTTO, The Federal Circuit explained that,

25 “[w]here claims are construed based on intrinsic evidence alone, a decision on claim

26 construction is not different in kind from the interpretation of other legal standards, which

27 is proper and routine in ruling on a motion under Rule 12(b)(6).” 119 F.4th at 993; see

28 also id. at 994 (“Some case-specific circumstances can make it improper for a district court

1 to resolve a claim construction dispute in the context of adjudicating a Rule 12(b)(6)

2 motion, but sometimes a claim’s meaning may be so clear on the only point that is

3 ultimately material to deciding the dismissal motion that no additional process is needed.”);

4 ALD Soc., LLC v. Verkada, Inc., 654 F. Supp. 3d 972, 979 (N.D. Cal. 2023) (“[T]he Court

5 may dismiss a complaint prior to claim construction when the complaint rests on an

6 implausible claim construction.” (citing Ottah v. Fiat Chrysler, 884 F.3d 1135, 1141–42

7 (Fed. Cir. 2018))).

8 B. Analysis

9 As previously explained, all of the Asserted Claims include a limitation requiring

10 that the accused apparatus/method include a magnet/magnetic attraction device/magnetic

11 attraction connection device that is “affixed to”/“secured to” the surface of the printed

12 sheet. See ’447 Patent col. 6 ll. 43–46, col. 7 ll. 8–10, 25–26; ’687 Patent col. 4 ll. 63–63,

13 col. 5 ll. 26–28; ’369 Patent col. 6 ll. 29–32, 58–61, col. 7 ll. 8–10, 46–48, col. 8 ll. 7–9,

14 29–30. Under the claim construction analysis in the Court’s Prior Order and as set forth

15 above, this claim language requires that the magnet/magnetic device/magnetic connection

16 device be either: (1) directly attached to the printed sheet; or (2) directly attached to an

17 intermediary component/device that is then directly attached to the printed sheet.

18 At the hearing, Pemberton conceded that he cannot plausibly allege infringement of

19 the Asserted Patents by JITB under the Court’s claim constructions set forth above and that

20 further amendment of his complaint would be futile. In light of that concession, the Court

21 concludes that the Second Amended Complaint fails plausibly to allege a claim for patent

22 infringement against JITB. Accordingly, the Court GRANTS JITB’s Motion

23 DISMISSES Pemberton’s Second Amended Complaint WITHOUT LEAVE TO

24 AMEND. See AmerisourceBergen Corp. v. Dialysist W., Inc., 465 F.3d 946, 951 (9th Cir.

25 2006) (explaining that courts should “not grant leave to amend where the amendment . . .

26 is futile”).

27 / / /

28 / / /

I CONCLUSION

2 In light of the foregoing, the Court GRANTS JITB’s Motion and DISMISSES

3 || WITH PREJUDICE Pemberton’s Second Amended Complaint.

4 IT IS SO ORDERED.

5 || Dated: January 13, 2026 ——

6 | 5) 12, (oe

7 Honorable Todd W. Robinson

United States District Judge

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