Free Order - District Court of Delaware - Delaware

Case 1:04-cv-01386-JJF Document 25 Filed 07/07/2005 Page1 of 4
IN THE UNITED STATES DISTRICT COURT l
FOR THE DISTRICT OF DELAWARE
SANITEC INDUSTRIES, INC., :
Plaintiff, E
v. ; Civil Action No. 04—l386—JJF
SANITEC WORLDWIDE, LTD., E
JEFFREY J. WEINSTEN, and :
JAMES H. SMITH, :
Defendants. E
M MORANDUM ORDER
Presently before the Court is Defendants’ Motion To Dismiss
Count VI For Failure To State A Claim (D.I. 10-3). For the
reasons set forth below, the Court will deny Defendants’ motion.
BACKGROUND
This action is for infringement of U.S. Patent No. 5,270,000
(the “000" patent), and infringement of related trademarks under
the Lanham Act and common law. Further, Plaintiff Sanitec
Industries, Inc. (“Sanitec Industries”) alleges claims of
conversion, tortious interference with prospective business
relations, and a violation of Delaware's Deceptive Trade
Practices Act.
Sanitec Industries filed this lawsuit on October 25, 2004.
(D.I. l). It filed a First Amended Complaint on November 29,
2004. (D.I. 7.) On December 15, 2004, Defendants, Sanitec
Worldwide, Ltd. (“Sanitec Worldwide"), Jeffrey J. Weinsten, and
James H. Smith, filed the instant motion.

Case 1:04-cv-01386-JJF Document 25 Filed 07/07/2005 Page 2 of 4
Sanitec Industries is incorporated pursuant to the laws of
the State of California. Defendant Sanitec Worldwide is
incorporated pursuant to the laws of the State of Delaware.
Defendant Jeffrey J. Weinsten is a citizen of the State of New
York. Defendant James H. Smith is a citizen of the State of
California.
By their motion, Defendants seek dismissal of Sanitec
Industries’ claim for deceptive trade practices in violation of
Delaware’s Deceptive Trade Practices Act, 6 Del. C. § 2531, et
seg. (“DTPA”) and the common law because Sanitec Industries did
not allege any facts occurring in Delaware. (D.I. 11 at 14.)
LEGAL STANDARD
Pursuant to Federal Rule of Civil Procedure l2(b)(6), the
Court may dismiss a complaint for failure to state a claim upon
which relief may be granted. Fed. R. Civ. P. 12(b)(6). The
purpose of a motion to dismiss is to test the sufficiency of a
complaint, not to resolve disputed facts or decide the merits of
the case. Kost v. Kozakiewicz, 1 F.3d 176, 183 (3d Cir. 1993).
When considering a motion to dismiss, a court must accept as true
all allegations in the complaint and must draw all reasonable
factual inferences in the light most favorable to the plaintiff.
Neitzke v. Williams, 490 U.S. 319, 326 (1989); Piecknick v.
Pennsylvania, 36 F.3d 1250, 1255 (3d Cir. 1994). The Court is
"not required to accept legal conclusions either alleged or
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inferred from the pleaded facts." Kost, 1 F.3d at 183.
Dismissal is only appropriate when "it appears beyond doubt that
the plaintiff can prove no set of facts in support of his claims
which would entitle him to relief." Conley v. Gibson, 355 U.S.
41, 45 (1957). The burden of demonstrating that the plaintiff has
failed to state a claim upon which relief may be granted rests on
the movant. Young v. West Coast Industrial Relations Assoc.,
Inc., 763 F.Supp. 64, 67 (D. Del. 1991) (citations omitted).
DISCUSSION
The relevant portion of Delaware's Deceptive Trade Practices
Act provides that:
A person engages in a deceptive trade practice, when,
in the course of a business, vocation, or occupation,
that person:
(5) Represents that goods or services have . . .
characteristics . . . that they do not have, or that a
person has a . . . status . . .that the person does
not have;
(8) Disparages the goods, services, or business of
another by false or misleading representations of
fact;
(12) engages in any other conduct which similarly
creates a likelihood of confusion or of
misunderstanding.
6 Del. C. § 2532(a). The Court recognizes that the act is
"remedial in nature and liberally construed." State ex rel.
Brady v. Preferred Florist Network, Inc., 791 A.2d 8, 20 (Del.
Ch. 2001).
In Count IV, Sanitec Industries avers that Defendants 1)
knowingly and willfully misrepresented to the public that they
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had intellectual property rights and could freely offer to sell
and sell products and services using the Sanitec technology; 2)
never had any ownership interest in or license to the Sanitec
technology, and their misrepresentations were made in bad faith
for the purpose of deceiving the public and harming its
competition. (D.I. 7 at 7-8.) Further, Sanitec Industries sets
forth factual allegations as to Defendants’ alleged wrongful
conduct. Specifically, Sanitec Industries alleges that Sanitec
Worldwide maintains a website, on which it represents that it
manufactures and distributes the Sanitec line of microwave
disinfection systems for medical waste treatment. Sanitec
Industries alleges that the website uses Sanitec Industries'
trademarks, including the Sanitec logo. (D.I. 7 at 4.)
Accordingly, the Court finds that all elements required under the
Delaware statutory scheme are sufficiently pled to withstand the
motion to dismiss.
NOW THEREFORE, IT IS HEREBY ORDERED that the Motion To Dismiss
Count VI For Failure To State A Claim (D.I. 10-3) filed by
Defendants is DENIED.
July V7 , 2005 gc-,2,
DATE U I ED AT DISTRICT GE
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