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THE UNITED STATES DISTRICT COURT FOR THE

NORTHERN DISTRICT OF FLORIDA

GAINESVILLE DIVISION

VICTOR MANUEL CELORIO,

Plaintiff,

v. Case No. 1:11-cv-79-SPM-GRJ

GOOGLE INC., ON DEMAND BOOKS, LLC,

JASON EPSTEIN, AND JOHN DOES 1-3,

Defendants.

______________________________________,

REPORT & RECOMMENDATION

Pending before the Court is Defendant Google Inc.’s Motion to Dismiss Amended

Complaint. (Doc. 23.) Plaintiff filed a Response in Opposition (Doc. 30) to Defendant

Google Inc.’s motion to dismiss and therefore the motion is ripe for review. For the

reasons discussed below, it is recommended that the motion to dismiss be DENIED.

 I. BACKGROUND

Plaintiff Victor Manuel Celorio, proceeding pro se, holds U.S. Patent No.

6,012,890 (the “‘890 Patent”). The ‘890 Patent, titled ELECTRONIC BOOKSTORE

VENDING MACHINE was issued January 11, 2000 and claims an apparatus, method,

and a system for efficiently distributing electronic books into paper books printed ondemand and perfect bound at a point of sale.” (Doc. 13, p. 5.) Plaintiff describes his

invention as a vending machine where consumers can have electronic books printed

and bound on demand. (Id.). 

Defendant On Demand Books LLC, which prevailed on a motion to dismiss for

lack of jurisdiction (Doc. 41), sells the Espresso Book Machine, a machine that prints

books on demand. Defendant Google Inc. operates an online service called Google

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Books, where internet users can access electronic books. Visitors to Google Books can

also purchase a hard copy of the electronic book to be printed at an Espresso Book

Machine located at bookstores, libraries, and other locations where the machines are

operated. Customers select from an online directory of Espresso Book Machine

retailers and complete the purchase through the individual retailers. Google and On

Demand Books have a contractual agreement whereby Google electronic files can be

printed on Espresso Book Machines. Google also leases an Espresso Book Machine

for use in its California offices. (Doc. 13.)

On April 27, 2011, Plaintiff filed this lawsuit alleging infringement of the ‘890

Patent by Google, On Demand Books, On Demand Books corporate officer Jason

Epstein, and John Doe 1-3. (Doc. 1.) On July 21, 2011, Plaintiff filed an Amended

Complaint. (Doc. 13.) The Amended Complaint alleges that Google:

• Directly infringes “out of his premises in California” by installing one or

more Espresso Book Machines in its offices, where a user can request a

book be downloaded and printed on demand.

• Commits contributory infringement because it offers to sell and sells

electronic books, which are component of a patented device and

apparatus.

• Commits contributory infringement by transferring its files to Espresso

Book Machines, knowing the files will be transformed into a physical book

using the ‘890 Patent without permission. 

• Induces infringement “by promoting and encouraging the purchase of

electronic books to [be] printed on demand” by Espresso Book Machines.

• Induces infringement by virtue of Google Books’ ability to provide

searches of indexed book content.

(Id. at pp. 8-17.)

The claims against On Demand and Mr. Epstein were dismissed for lack of

jurisdiction. (Docs. 22, 38, 41.) Google has moved to dismiss Counts I and II of the

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amended complaint for failure to state a claim pursuant to Fed. R. Civ. Proc. 12(b)(6). 

Google argues that the Amended Complaint: 1) does not plead plausible claims; and 2)

does not cover a device or method of printing books from raster images of the type that

Google provides. (Doc. 23.) In his response, Plaintiff maintains that he has sufficiently

pleaded his patent infringement claims. Plaintiff contends that Google’s description of

the file format of its electronic books is incorrect and that the file specifications for his

book printing machines “are met by the PDF files the Defendants [sic] admits they use to

store and transmit the e-books.” (Doc. 30, p. 12.)

II. STANDARD OF REVIEW

For the purposes of the motion to dismiss, the Court must view the allegations of

the complaint in the light most favorable to Plaintiffs, consider the allegations of the

complaint as true, and accept all reasonable inferences therefrom. See, e.g., Erickson

v. Pardus, 551 U.S. 89, 94 (2007), Jackson v. Okaloosa County, Fla., 21 F. 3d 1532,

1534 (11 Cir. 1994). The Court must limit its consideration to the complaint and written th

instruments attached as exhibits. FED. R. CIV. P. 10(c); GSW, Inc. v. Long County, Ga.,

999 F.2d 1508, 1510 (11 Cir. 1993). In passing on a motion to dismiss under Rule th

12(b)(6), the Court is mindful that “[d]ismissal of a claim on the basis of barebones

pleadings is a precarious disposition with a high mortality rate.” Int’l Erectors, Inc. v.

Wilhoit Steel Erectors Rental Serv., 400 F.2d 465, 471 (5th Cir. 1968). 

“Factual allegations must be enough to raise a right to relief above the speculative

level,” and the complaint “must contain something more . . . than . . . a statement of facts

that merely creates a suspicion [of] a legally cognizable right of action.” Bell Atlantic

Corp. v. Twombly, 550 U.S. 544, 555 (2007). “When there are well-pleaded factual

allegations, a court should assume their veracity and then determine whether they

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plausibly give rise to an entitlement to relief.” Ashcroft v. Iqbal, ___ U.S. ___, 129 S.Ct.

1937, 1950 (2009). 

A pro se litigant's allegations are entitled to the benefit of liberal construction.

Haines v. Kerner, 404 U.S. 519, 520 (1972). However, a court does not have “license . .

. to rewrite an otherwise deficient pleading [by a pro se litigant] in order to sustain an

action.” GJR Investments v. County of Escambia, Fla., 132 F.3d 1359, 1369 (11th

Cir.1998) (overruled on other grounds).

III. DISCUSSION

 The Federal Circuit has held that a patentee claiming infringement need only: “(1)

allege ownership of the asserted patent; (2) name each individual defendant; (3) cite the

patent that is allegedly infringed; (4) describe the means by which the defendants

allegedly infringe; and (5) point to the specific sections of patent law invoked.” Mesh

Comm. LLC v . EKA Sys., Inc., No. 809-cv-1064-T-33TGW, 2010 WL 750337, 2010

U.S. Dist. LEXIS 19452, at *4 (M.D. Fla. Mar. 4, 2010) (citing McZeal Corp. v. Sprint

Nextel Corp., 501 F.3d 1354, 1357 (Fed. Cir. 2007) (holding that “a patentee need only

plead facts sufficient to place the alleged infringer on notice as to what he must

defend”); see also Phonometrics, Inc. v. Hospitality Franchise Sys.,203 F.3d 790, 794

(Fed. Cir. 2000). These elements mirror those in Form 18 of the Federal Rules of Civil

Procedure. “In analyzing claims arising under the Patent Act, the Court is bound by

decisions of the U.S. Court of Appeals for the Federal Circuit.” Gelsomino v. Horizon

Unlimited, Inc., No. 07-80697-CIV, 2008 U.S. Dist. LEXIS 68907, at *6 (S.D. Fla. 2008).

Pleading Requirements for Direct and Indirect Infringement post-Iqbal

Plaintiff asserts claims of both direct and indirect (e.g., contributory) infringement. 

Google argues, and some district courts have agreed, that the pleading standard

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outlined by the Federal Circuit in McZeal is applicable to direct infringement claims, but

the pleading requirements for indirect infringement claims is heightened because these

claims include additional elements not addressed in Form 18. See, e.g., Elan

Microelectronics Corp. v. Apple, Inc., 2009 WL 2972374 (N.D. Cal. Sept. 14, 2009)

(holding that when pleading a cause of indirect infringement, a plaintiff must comply with

the standards in Iqbal and Twombly). Google also argues, in line with the Elan decision,

that Plaintiff’s infringement claims–both direct and indirect–should be analyzed under

(and fail to meet) the plausibility standard set in Iqbal. (Doc. 23); Ashcroft v. Iqbal, ___

U.S. ___, 129 S.Ct. 1937, 1950 (2009). 

Other district courts, however, including those in the Eleventh Circuit, have

declined to find a difference in the pleading standards for direct and indirect infringement

claims. See Mesh Comm. LLC v . EKA Sys., Inc., No. 809-cv-1064-T-33TGW, 2010 WL

750337, 2010 U.S. Dist. LEXIS 19452, at *4 (M.D. Fla. 2010) (using the Form 18

elements to find that a plaintiff’s claims for direct and indirect infringement did not

warrant dismissal); Minsurg Intern., Inc. v. Frontier Devices, Inc., No. 810-cv-1589-T-33-

EAJ, 2011 WL 1326863 (M.D. Fla. 2011) (rejecting defendants’ argument that indirect

infringement was insufficiently pled, where the complaint asserted allegations similar to

those approved by Form 18); CBT Flint Partners, LLC v. Goodmail Systems, Inc., 529 F.

Supp. 2d 1376 (N.D. Ga. 2007) (holding that Twombly did not alter the pleading

standard for patent infringement claims and that specificity greater than that found in

Form 18 was not required for indirect infringement claims); Sikes Cookers & Grill, Inc. v.

Vidalia Outdoor Products, Inc., 2009 WL 427227 (N.D. Ga. 2009) (holding that a

patentee’s claims for direct and indirect infringement were sufficiently pled using the

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Form 18 elements). These decisions post-Twombly and in some cases post-Iqbal did

not hold patent pleadings to a heightened standard in light of those Supreme Court

decisions. 

Analysis

In his Amended Complaint, considering only the claims against Google, Plaintiff

has alleged that: (1) he owns the ‘890 Patent; (2) Google, On Demand Books, Jason

Epstein, and John Doe 1-3 are the individual defendants; (3) the ‘890 Patent was

infringed; (4) Google infringed the patent by installing and using an Espresso Book

Machine in its California offices, by selling and offering to sell books printed on demand,

and by providing electronic books to be printed on Espresso Book Machines; and that

Google’s actions invoke, inter alia, 35 U.S.C. § 271. (Doc. 13.) These allegations are

in conformity with Form 18 and the holding in McZeal. The undersigned agrees with

other district courts in the Eleventh Circuit who have, in the absence of additional

authority from the Federal Circuit, applied McZeal to direct and indirect infringement

claims without incorporating additional pleading requirements. Accordingly, the

undersigned concludes that Plaintiff has sufficiently pleaded his Amended Complaint to

avoid dismissal for failure to state a claim. Furthermore, a resolution of the parties’

dispute over the format of the electronic book files, as raised in the motion to dismiss

and response in opposition, is not appropriate at this state in the litigation on a motion to

dismiss.

IV. RECOMMENDATION

In light of the foregoing, it is respectfully RECOMMENDED that the Motion To

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Dismiss Amended Complaint (Doc. 23) should be DENIED. 

IN CHAMBERS in Gainesville, Florida, this 23 day of May, 2012. rd

s/ Gary R. Jones

GARY R. JONES

United States Magistrate Judge

NOTICE TO THE PARTIES

Pursuant to Fed. R. Civ. P. 72(b)(2), a party may file specific, written objections to the proposed

findings and recommendations within 14 days after being served with a copy of this report and

recommendation. A party may respond to another party’s objections within 14 days after being served

with a copy thereof. Failure to file specific objections limits the scope of review of proposed factual

findings and recommendations.

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