Pemberton v. Jack in the Box Inc.

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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF CALIFORNIA
KIRK PEMBERTON,
Plaintiff,
v.
JACK IN THE BOX INC.,
Defendant.
Case No.: 24-CV-1179 TWR (BJW)
ORDER GRANTING DEFENDANT’S
MOTION TO DISMISS
PLAINTIFF’S SECOND AMENDED
COMPLAINT WITH PREJUDICE
(ECF No. 34)
Presently before the Court is the Motion to Dismiss Plaintiff Kirk Pemberton’s
Second Amended Complaint (“Mot.,” ECF No. 34) filed by Defendant Jack in the Box Inc.
(“JITB”), as well as Pemberton’s Response in Opposition to (“Opp’n,” ECF No. 37) and
JITB’s Reply in Support of (“Reply,” ECF No. 38) the Motion and Pemberton’s Notice of
Supplemental Authority (“Not.,” ECF No. 39). The Court held a hearing on December 18,
2025. 	(See ECF No. 40.) 	Having carefully considered Pemberton’s Second Amended
Complaint (“SAC,” ECF No. 33), those materials properly incorporated by reference, the
Parties’ arguments, and the relevant law, the Court 	GRANTS 	JITB’s Motion and
DISMISSES WITH PREJUDICE Pemberton’s Second Amended Complaint.
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BACKGROUND1
Pemberton is the inventor of a menu board system called the “Re-Facing Magnetic
System” (“RMS”). (See SAC ¶¶ 6, 8, 10.) The components of the RMS are as follows:
“(a) mounting boards; (b) acrylic prints; (c) polycarbonate panels; (d) magnets; (e) price
carriers; (f) seam covers; and (g) pre-press-print production.” (Id. ¶ 11.) Pemberton is the
listed owner and inventor of U.S. Patent Nos. 7,870,687 (the “’687 Patent”); 8,205,369 (the
“’369 Patent”); and 8,464,447 (the “’447 Patent”) (collectively, the “Asserted Patents”).
(Id. ¶¶ 31, 49, 73; ECF No. 1-2 (“Ex. A”).) 	Plaintiff alleges that JITB’s RMS systems
infringe claims 1–13 of the ’687 Patent, claims 1–16 of the ’369 Patent, and claims 1–9 of
the ’447 Patent (collectively, the “Asserted Claims”). (Id. ¶¶ 23, 32–41, 50–65, 74–85.)
The Asserted Patents are related and are all entitled “Signage Apparatus Having
Simple Magnet-Based Structure for Ease of Modification,” and they share overlapping
specifications. 	U.S. Patent No. 7,870,687, at [54] (filed Jan. 18, 2011); U.S. Patent No.
8,205,369, at [54] (filed Jun. 26, 2012); U.S. Patent No. 8,464,447, at [54] (filed Jun. 18,
2013). The inventions claimed in the Asserted Patents relate “to signs of the type used in
fast food restaurants, coffee shops and other retail stores where items offered for sale and
their prices frequently change.” 	’687 Patent col. 1 ll. 8–11; see ’369 Patent col. 1 ll.
15–18; ’447 Patent col. 1 ll. 16–17. More specifically, the inventions relate “to a readily
modifiable menu board or similar sign which employs a relatively simple magnet-based
structure to facilitate easy modifications by non-technical personnel.” ’687 Patent col. 1
ll. 11–14; see ’369 Patent col. 1 ll. 18–21; ’447 Patent col. 1 ll. 17–21
As examples of the claimed invention, independent claim 1 of the ’687 Patent,
independent claim 1 of the ’369 Patent, and independent claim 1 of the ’447 Patent are set
forth in full below.
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
ruling on a motion to dismiss, the Court must “accept all material allegations of fact as true”).
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Independent claim 1 of the ’687 Patent recites:
1. A signage apparatus comprising:
a mounting board having at least one aperture;
a metal member attached to a rear surface of said mounting board at said
aperture;
a first printed sheet having observable indicia thereon;
at least one magnet affixed to a back surface of said first printed sheet, said
magnet being configured to be received in said at least one aperture in
magnetic attraction to said metal member for retaining said first printed sheet
against said mounting board;
wherein said mounting board is translucent.
’687 Patent col. 4 ll. 56–67.
Independent claim 1 of the ’369 Patent recites:
A signage apparatus comprising:
a mounting board having at least one aperture;
a metal member attached to a rear surface of said mounting board at said
aperture and a magnet attached to said metal member within said aperture;
a first printed sheet having observable indicia thereon;
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
having a magnetizable metal for magnetic attraction to said magnet for
retaining said first printed sheet against said mounting board;
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
beveled.
’369 Patent col. 6 ll. 23–37.
Independent claim 1 of the ’447 Patent recites:
1. A readily modifiable signage apparatus comprising:
a wall having a planar surface for receiving a printed sheet thereon;
a plurality of printed sheets for being releasably affixed to said planar surface,
each of said printed sheets and said planar surface having corresponding
magnetic attraction devices affixed at selected locations for retaining at least
one of said printed sheets on said planar surface in a precisely aligned position
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and for selective removal of one said printed sheet for replacement by another
said printed sheet;
wherein said magnetic attraction devices comprise a respective metal device
affixed to a rear surface of each said printed sheet and a magnet affixed to said
planar surface of said wall and accessible for magnetic retention of said
magnet to said metal device;
wherein each said respective metal device is affixed to said rear surface of a
printed sheet through a respective sponge-like member interposed between
said each metal device and a rear surface of a printed sheet.
’447 Patent col. 6 ll. 32–51.
On July 9, 2024, Pemberton filed the instant action against JITB, asserting three
claims of patent infringement as to each of the Asserted Patents. (See generally Compl.)
On November 13, 2024, Pemberton filed a motion to dismiss Pemberton’s complaint, (ECF
No. 14), which the Court granted with leave to amend on February 26, 2025, (ECF No.
21).
Pemberton subsequently filed a First Amended Complaint on March 11, 2025. (See
generally ECF No. 22 (“FAC”).) 	On March 26, 2025, JITB filed a motion to dismiss
Pemberton’s claims for patent infringement contained in the First Amended Complaint,
(see generally ECF No. 23), which the Court granted with leave to amend on August 26,
2025. 	(See generally ECF No. 31 (the “Prior Order”).) 	In the Prior Order, the Court
construed the claim term “affixed to” from the ’687 Patent and the ’447 Patent to require
that the magnet/magnetic device be either: (1) directly attached to the printed sheet; or
(2) be directly attached to an intermediary component/device that is then directly attached
to the printed sheet. 	(See id. at 13–15.) 	Similarly, the Court construed the claim term
“secured 	to” 	from 	the 	’369 	Patent 	to 	require 	that 	the 	connection 	device 	having
magnetizable metal be either: (1) directly attached to the printed sheet; or (2) be directly
attached to an intermediary component/device that is then directly attached to the printed
sheet. (Id. at 15–16.) In light of those two claim constructions, the Court granted JITB’s
motion to dismiss because a document attached to Pemberton’s First Amended Complaint
showed that the JITB accused system had nothing directly fastened to the identified printed
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sheet, meaning that the attached document indisputably showed that the accused JITB
system does not infringe each and every element of the asserted claims in the First
Amended Complaint. (See id.)
Pemberton subsequently filed his Second Amended Complaint on September 8,
2025. (See generally SAC.) In the Second Amended Complaint, Pemberton now alleges
that JITB infringes each and every claim contained in the Asserted Patents. (See id. ¶¶ 23,
32–41, 50–65, 74–85.) 	In addition, the Second Amended Complaint adds “claim
construction” allegations that Pemberton applies to the infringement allegations contained
in the Second Amended Complaint. 	(See id. ¶¶ 20–22.) 	The instant Motion seeking to
dismiss Pemberton’s claims for patent infringement contained in the Second Amended
Complaint followed on September 23, 2025. (See generally ECF No. 34.)
LEGAL STANDARD
“A motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) for failure to
state a claim upon which relief can be granted ‘tests the legal sufficiency of a claim.’”
Conservation Force v. Salazar, 646 F.3d 1240, 1241–42 (9th Cir. 2011) (quoting Navarro
v. Block, 250 F.3d 729, 732 (9th Cir. 2001)). 	“A district court’s dismissal for failure to
state a claim under Federal Rule of Civil Procedure 12(b)(6) is proper if there is a ‘lack of
a cognizable legal theory or the absence of sufficient facts alleged under a cognizable legal
theory.’” 	Id. at 1242 (quoting Balistreri v. Pacifica Police Dep’t, 901 F.2d 696, 699 (9th
Cir. 1988)).
“To survive a motion to dismiss, a complaint must contain sufficient factual matter,
accepted as true, to ‘state a claim to relief that is plausible on its face.’” Iqbal, 556 U.S. at
677–78 (quoting Twombly, 550 U.S. at 570). 	“A claim has facial plausibility when the
plaintiff pleads factual content that allows the court to draw the reasonable inference that
the defendant is liable for the misconduct alleged.” Id. (citing Twombly, 550 U.S. at 556).
“[W]here the well-pleaded facts do not permit the court to infer more than the mere
possibility of misconduct, the complaint has alleged—but it has not ‘show[n]’—‘that the
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pleader is entitled to relief.’” 	Id. at 679 (second alteration in original) (quoting Fed. R.
Civ. P. 8(a)(2)).
“If a complaint is dismissed for failure to state a claim, leave to amend should be
granted ‘unless the court determines that the allegation of other facts consistent with the
challenged pleading could not possibly cure the deficiency.’” 	DeSoto v. Yellow Freight
Sys., Inc., 957 F.2d 655, 658 (9th Cir. 1992) (quoting Schreiber Distrib. Co. v. Serv-Well
Furniture Co., 806 F.2d 1393, 1401 (9th Cir. 1986)). 	“A district court does not err in
denying leave to amend where the amendment would be futile.” Id. (citing Reddy v. Litton
Indus., 912 F.2d 291, 296 (9th Cir. 1990), cert. denied, 502 U.S. 921 (1991)).
ANALYSIS
JITB argues that Pemberton’s Second Amended Complaint should be dismissed
because Pemberton’s operative complaint has again failed adequately to plead claims for
patent infringement and also violates the Court’s Prior Order. 	(See Mot. at 1–2.)
Specifically, JITB contends that the Second Amended Complaint should be dismissed
because the screenshots attached to the First Amended Complaint and referenced in the
Second Amended Complaint conclusively show that the JITB accused system does not
infringe the Asserted Claims under the claim constructions set forth in the Court’s Prior
Order. (See Mot. at 1–2, 10–19.) In response, Pemberton argues that JITB’s Motion should
be denied because the Court erred in its prior claim constructions and the claim
construction issues in this case should be resolved through a Markman hearing rather than
a Rule 12(b)(6) motion. (See Opp’n at 1–2.)
I. 	Claim Construction
A. 	Legal Standard
Claim construction “is exclusively within the province of the court [to decide],” not
the jury. Markman v. Westview Instruments, Inc., 517 U.S. 370, 373 (1996) (en banc); see
Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 326 (2015) (holding claim
construction is an issue of law for the court to decide). 	Although claim construction is
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ultimately a question of law, “subsidiary factfinding is sometimes necessary.” 	Teva, 574
U.S. at 326.
“It is a ‘bedrock principle’ of patent law that the ‘claims of a patent define the
invention to which the patentee is entitled the right to exclude.’” 	Phillips v. AWH Corp.,
415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citations omitted). “The purpose of claim
construction is to ‘determin[e] the meaning and scope of the patent claims asserted to be
infringed.’” 	O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360
(Fed. Cir. 2008) (quoting Markman, 52 F.3d at 976); accord Kaufman v. Microsoft Corp.,
34 F.4th 1360, 1369 (Fed. Cir. 2022).
Claim terms “‘are generally given their ordinary and customary meaning[,]’” which
“is the meaning that the term would have to a person of ordinary skill in the art in question
at the time of the invention.” Phillips, 415 F.3d at 1312–13. “In some cases, the ordinary
meaning of claim language as understood by a person of skill in the art [(“POSITA”)] may
be readily apparent even to lay judges, and claim construction in such cases involves little
more than the application of the widely accepted meaning of commonly understood
words.” Id. at 1314. “However, in many cases, the meaning of a claim term as understood
by persons of skill in the art is not readily apparent.” O2 Micro, 521 F.3d at 1360. If the
meaning of the term is not readily apparent, the court must look to “‘those sources available
to the public that show what a person of skill in the art would have understood disputed
claim language to mean.’” Phillips, 415 F.3d at 1314 (quoting Innova/Pure Water, Inc. v.
Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)). “Those sources
include ‘the words of the claims themselves, the remainder of the specification, the
prosecution history, and extrinsic evidence.’” Id. (quoting Innova, 381 F.3d at 1116); see
Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1217–18 (Fed. Cir. 2014).
In determining the proper construction of a claim, a court should first look to the
language of the claims. See Allergan Sales, LLC v. Sandoz, Inc., 935 F.3d 1370, 1373 (Fed.
Cir. 2019) (“‘[C]laim construction must begin with the words of the claims themselves.’”);
Source Vagabond Sys. Ltd. v. Hydrapak, Inc., 753 F.3d 1291, 1299 (Fed. Cir. 2014) (“‘a
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claim construction analysis must begin and remain centered on the claim language itself’”).
The context in which a disputed term is used in the asserted claims may provide substantial
guidance as to the meaning of the term. See Phillips, 415 F.3d at 1314.
A court must also read claims “in view of the specification, of which they are a part.”
Markman, 52 F.3d at 979; see 35 U.S.C. § 112(b) (“The specification shall conclude with
one or more claims particularly pointing out and distinctly claiming the subject matter
which the inventor or a joint inventor regards as the invention.”). “‘Apart from the claim
language itself, the specification is the single best guide to the meaning of a claim term.’”
Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1382 (Fed. Cir. 2014) (quoting AIA Eng’g Ltd.
v. Magotteaux Int’l S/A, 657 F.3d 1264, 1272 (Fed. Cir. 2011)).
But “[t]he written description part of the specification does not delimit the right to
exclude. That is the function and purpose of claims.” Markman, 52 F.3d at 980. Therefore,
“it is improper to read limitations from a preferred embodiment described in the
specification—even if it is the only embodiment—into the claims absent a clear indication
in the intrinsic record that the patentee intended the claims to be so limited.” Dealertrack,
Inc. v. Huber, 674 F.3d 1315, 1327 (Fed. Cir. 2012); accord Openwave Sys., Inc. v. Apple
Inc., 808 F.3d 509, 514 (Fed. Cir. 2015).
In addition to the claim language and the specification, the patent’s prosecution
history may be considered if it is in evidence. Phillips, 415 F.3d at 1317. The prosecution
history “consists of the complete record of the proceedings before the [Patent and
Trademark Office (“PTO”)] and includes the prior art cited during the examination of the
patent.” Id. “Like the specification, the prosecution history provides evidence of how the
PTO and the inventor understood the patent.” 	Id. 	“Yet because the prosecution history
represents an ongoing negotiation between the PTO and the applicant, rather than the final
product of that negotiation, it often lacks the clarity of the specification and thus is less
useful for claim construction purposes.” 	Id. 	In addition, a court should also consult the
prosecution history “so that the court can exclude any interpretation that was disclaimed
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during prosecution.” 	Sorensen v. Int’l Trade Comm’n, 427 F.3d 1375, 1378 (Fed. Cir.
2005) (citing Phillips, 415 F.3d at 1317).
In most situations, analysis of the intrinsic evidence will resolve claim construction
disputes. 	See Vitronics, 90 F.3d at 1583; Teva, 574 U.S. at 331; see also Seabed
Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 1287 (Fed. Cir. 2021) (“If the
meaning of a claim term is clear from the intrinsic evidence, there is no reason to resort to
extrinsic evidence.”). 	However, “[w]here the intrinsic record is ambiguous, and when
necessary,” district courts may “rely on extrinsic evidence, which ‘consists of all evidence
external to the patent and prosecution history, including expert and inventor testimony,
dictionaries, and learned treatises.’” Power Integrations, Inc. v. Fairchild Semiconductor
Int’l, Inc., 711 F.3d 1348, 1360 (Fed. Cir. 2013) (quoting Phillips, 415 F.3d at 1317). A
court must evaluate all extrinsic evidence in light of the intrinsic evidence. 	Phillips, 415
F.3d at 1319. 	“‘[E]xtrinsic evidence is to be used for the court’s understanding of the
patent, not for the purpose of varying or contradicting the terms of the claims.’” Genuine
Enabling Tech. LLC v. Nintendo Co., 29 F.4th 1365, 1373 (Fed. Cir. 2022); see also Summit
6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1290 (Fed. Cir. 2015) (“Extrinsic evidence
may not be used ‘to contradict claim meaning that is unambiguous in light of the intrinsic
evidence.’”). 	In cases where subsidiary facts contained in the extrinsic evidence “are in
dispute, courts will need to make subsidiary factual findings about that extrinsic evidence.”
Teva, 574 U.S. at 332.
“[D]istrict courts are not (and should not be) required to construe every limitation
present in a patent’s asserted claims.” O2 Micro, 521 F.3d at 1362; see also Eon Corp. IP
Holdings v. Silver Spring Networks, 815 F.3d 1314, 1318–19 (Fed. Cir. 2016) (“‘[O]nly
those terms need be construed that are in controversy, and only to the extent necessary to
resolve the controversy.’”). In certain situations, it is appropriate for a court to determine
that a claim term needs no construction and its plain and ordinary meaning applies. 	O2
Micro, 521 F.3d at 1360; Phillips, 415 F.3d at 1314. But “[a] determination that a claim
term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate
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when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’
meaning does not resolve the parties’ dispute.” O2 Micro, 521 F.3d at 1361. If the parties
dispute the scope of a certain claim term, it is the court’s duty to resolve the dispute. Id. at
1362; Eon, 815 F.3d at 1319.
B. 	Analysis
All of the asserted claims of the ’687 Patent and the ’447 Patent include the
requirement that the claimed apparatus include a magnet/magnetic attraction device that is
“affixed to” the rear/back surface of the printed sheet. See ’687 Patent col. 4 ll. 62–63 (“at
least one magnet affixed to a back surface of said first printed sheet”), col. 5 ll. 26–28; ’447
Patent col. 6 ll. 43–46 (“said magnetic attraction devices comprise a respective metal
device affixed to a rear surface of each said printed sheet and a magnet affixed to said
planar surface of said wall”), col. 7 ll. 8–10, 25–26. In the Court’s Prior Order, the Court
construed this claim language to require that the magnet/magnetic device be either:
(1) directly attached to the printed sheet; or (2) be directly attached to an intermediary
component/device that is then directly attached to the printed sheet. 	(See Prior Order at
13–15.)
Similarly, all of the asserted claims from the ’369 Patent include a limitation
requiring that the accused apparatus/method include a magnetic connection device that is
“secured to” the surface of the printed sheet. See ’369 Patent col. 6 ll. 29–32 (“at least one
connection device secured to a surface of said first printed sheet, said device . . . having a
magnetizable metal for magnetic attraction”), 58–61, col. 7 ll. 8–10, 46–48, col. 8 ll. 7–9,
29–30. In the Court’s Prior Order, the Court construed this claim language to require that
the magnetic connection device be either: (1) directly attached to the printed sheet; or
(2) directly attached to an intermediary component/device that is then directly attached to
the printed sheet. (See Prior Order at 15–16.)
As an initial matter, it should be noted that, in deciding JITB’s Rule 12(b)(6) Motion,
the Court need not accept as true any of the claim construction allegations contained in the
Second Amended Complaint. 	Those allegations assert that the claim terms “affixed to”
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and “secured to” should be given their plain and ordinary meaning and set forth what
Pemberton contends is the plain and ordinary meaning of those terms. 	(See SAC
¶¶ 20–22.) 	As explained above, claim construction is an issue of law for the Court to
decide. 	See Teva, 574 U.S. at 326; Markman, 517 U.S. at 373. And, in deciding a Rule
12(b)(6) motion to dismiss, a court need not accept as true any legal conclusions set forth
in the complaint. 	Whitaker v. Tesla Motors, Inc., 985 F.3d 1173, 1176 (9th Cir. 2021)
(citing Iqbal, 556 U.S. at 678–79). The Court therefore need not accept as true Pemberton’s
allegations in the Second Amended Complaint regarding the proper meaning of the claim
terms “affixed to” and “secured to.”
In its Opposition, Pemberton provides several reasons for why the Court erred in
rendering its claim constructions for the terms “affixed to” and “secured to” in the Prior
Order. All of these arguments fail.
First, Pemberton notes that figure 4 from the ’687 Patent’s specification depicts an
embodiment of the invention where the “magnets are received—not glued—within the
apertures.” 	(Opp’n at 7.) 	Although this is a correct statement by Pemberton, it is of no
consequence. The “apertures” Pemberton is referring to are the apertures on the mounting
board. 	The claim constructions at issue relate to how the claimed magnets/magnetic
attraction devices are attached to the claimed printed sheet—not how the magnets/magnetic
attraction devices are received by the apertures on the mounting board. 	Further, in
describing figure 4, the ’687 Patent’s specification states:
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
flat cylindrical magnets 28. 	Each such magnet is adhesively affixed to a
sponge-like material 29 which is, in turn, glued to the back of the printed sheet
22 at precisely selected locations.
’687 Patent col. 4 ll. 7–12 (italics added). 	As such, figure 4 of the specification and its
corresponding description are consistent with the Court’s claim construction for the term
“affixed to” from the ’687 Patent. (See Prior Order at 13–14.)
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Second, Pemberton contends that figure 5 from the ’687 Patent’s specification
depicts 	an 	embodiment 	where 	the 	edge 	members 	are 	magnetically 	coupled 	to
corresponding apertures in the mounting board. (Opp’n at 8–10.) Pemberton argues that
the Court’s claim construction for the term “affixed to” is improper because it excludes
this preferred embodiment. 	(Id. at 12); see also Kaufman, 34 F.4th at 1372 (“‘A claim
construction that excludes a preferred embodiment is rarely, if ever correct and would
require highly persuasive evidentiary support.’”). 	Pemberton is wrong, and the Court’s
claim 	construction 	does 	not 	exclude that 	embodiment. 	Again, 	the 	Court’s 	claim
construction for the ’687 Patent relates to how magnets/magnetic attraction devices are
attached to the printed sheet in the claimed invention. 	The claim language and the
specification make clear that the claimed “edge member” is a different component than the
claimed “printed sheets.” 	See, e.g., ’687 Patent col. 6 ll. 33–36 (“The signage apparatus
recited in claim 5 further comprising at least one elongated edge member magnetically
attached to said mounting board in overlapping relation to at least one of said printed
sheets.” (emphasis added)). As such, the specification’s discussion of edge members and
how they attach to the mounting board is irrelevant to the Court’s construction of the claim
terms at issue. (See Prior Order at 14–15.)
Third, Pemberton notes that the plain language of claim 1 of the ’369 Patent includes
“no requirement that the magnet be glued or permanently fixed.” (Opp’n at 9–10.) This
is true, but the Court’s claim constructions do not include that requirement either. 	The
Court’s constructions simply require that the magnet/magnetic attraction device be either:
(1) directly attached to the printed sheet; or (2) be directly attached to an intermediary
component/device that is then directly attached to the printed sheet. As such, the fact that
the claim language does not require glue or permanent fixation of the magnet does not
demonstrate any error in the Court’s constructions.
Fourth, Pemberton notes that the ’369 Patent introduces a second preferred
embodiment that uses snap-cap connectors where “the magnets remain embedded in the
mounting board, while the washer—secured to the sheet through an intermediate snap-
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cap—completes the magnetic circuit.” (Opp’n at 10–11.) Pemberton again contends that
the Court’s claim construction excludes this specific embodiment. 	Again, Pemberton is
wrong, and the Court’s claim construction for the term “secured to” from the ’369 Patent
encompasses this specific embodiment.
The specification of the ’369 Patent describes this embodiment as follows:
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
mounting board. As shown in FIG. 9, in an embodiment 50, a mounting board
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
a metal shim 70 is secured to the back surface 55 of the board adjacent each
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.
At 	respective corners 	of the graphics 	sheet 	56 	are 	mounted 	snap-cap
connections 58. 	Each has a center protrusion 62 which extends through a
small hole 61 in the sheet 56 and mates with a disk 60. Disk 60 has a sheet
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
in FIGS. 18 to 20, disk 60 has a metal washer 69 secured therein and when
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
magnetically affixed to magnet 74 as shown in FIG. 11. Thus, in this second
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
instead of on the back of the sheets as depicted in the first embodiment of FIG.
4A-4C.
’369 Patent col. 5 ll. 28–54 (emphasis in original); see also id. figs. 9–20.
In the passages above, the ’369 Patent’s specification describes an embodiment
where the magnetic attraction connection device (“metal 69” in “disk 60”) is directly
attached to the printed sheet (“graphics sheet 56”) via “mounted snap-cap connections 58.”
This preferred embodiment is entirely consistent with the Court’s construction of the term
“secured to” from the ’369 Patent because in the embodiment the magnetic attraction
connection devices are directly attached to the printed sheet via the snap-cap connectors.
/ / /
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Fifth, Pemberton notes that the ’447 Patent’s specification explains that “the magnet
may be either on the sign or on the surface and the connecting metal device on the other.”
(Opp’n at 11.) This is of no consequence because the Court’s claim construction for the
’447 Patent simply requires that a magnetic attraction device be attached to the printed
sheet. 	That magnetic attraction device can be either the magnet or the connecting metal
device. Therefore, the Court’s claim construction is not inconsistent with that passage in
the specification.
Sixth, Pemberton cites to the Asserted Patents’ prosecution history. (See Opp’n at
3–7.) All of the prosecution history cited by Pemberton, however, is irrelevant to the claim
construction issues before the Court. 	Pemberton contends that these portions of the
prosecution history demonstrate that in the claimed invention magnetic coupling is used to
connect the printed sheet to the mounting board. (See id.) Again, this is of no consequence.
The claim constructions at issue relate to how the claimed magnets/magnetic attraction
devices are attached to the claimed printed sheet—not how the magnets/magnetic attraction
devices are received by the apertures on the mounting board. 	The Court agrees with
Pemberton that in the claimed inventions, the printed sheets are attached to the mounting
boards via magnetic coupling. But that does not change the fact that the claim language at
issue also specifically requires that the magnets/magnetic attraction devices are “affixed
to” the printed sheet and that the magnetic attraction connection devices are “secured to”
the printed sheets.2 And a proper construction of those terms based on the intrinsic record
requires that the magnets/magnetic attraction devices/ magnetic attraction connection
devices are either: (1) directly attached to the printed sheet; or (2) directly attached to an
/ / /
2 	Indeed, the Court agrees with JITB that Pemberton’s claim construction positions improperly
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
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
the claim language superfluous are disfavored.”).
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intermediary component/device that is then directly attached to the printed sheet. 	See
supra; (see also ECF No. 31 at 12–16).
Finally, Pemberton contends that a Rule 12(b)(6) motion to dismiss is the wrong
vehicle to decide these claim construction issues and that the issues should be decided at a
proper Markman hearing instead. 	(Opp’n at 2.) 	But the Federal Circuit has sanctioned
deciding claim construction issues at the Rule 12(b)(6) stage a case when the claims are
“construed based on intrinsic evidence alone,” see UTTO, 119 F.4th at 992–94, as is the
case here. Pemberton does not identify any evidence or arguments relevant to the present
claim construction dispute that it can only present to the Court if the Court holds a
Markman hearing. 	All of the claim construction arguments contained in Pemberton’s
briefing are based on the intrinsic record alone. (See generally Opp’n at 3–12, 14–17.) As
such, Pemberton has failed to provide an adequate explanation for why these claim
construction issues cannot be decided at the Rule 12(b)(6) stage.
Pemberton also filed a Notice alerting the Court to the Federal Circuit’s recent
decision in Adnexus Inc. v. Meta Platforms, Inc., No. 2024-1551, 2025 WL 3492653 (Fed.
Cir. Dec. 5, 2025). (See Not.) The Adnexus case, however, has no impact on the Court’s
decision to decide these claim construction issues at the 12(b)(6) stage. 	In Adnexus, the
Federal Circuit reaffirmed that, “[i]n evaluating a motion to dismiss, district courts may, if
they wish, engage in claim construction, provided they give the parties appropriate notice
and an opportunity to be heard.” 2025 WL 3492653, at *5. In Adnexus, the Federal Circuit
held that the district court erred because it had “implicitly constru[ed] the disputed claim
term against Adnexus, the non-moving party, without first giving Adnexus the opportunity
it [had] requested to be heard on the issue of the proper construction of this term.” Id. The
Federal Circuit’s holding in Adnexus has no impact here because, by granting Pemberton
leave to amend and getting a second round of briefing on the claim construction issues in
this case, the Court has given Pemberton adequate “notice and opportunity to be heard” on
these claim construction issues. See id. Indeed, at the hearing, Pemberton conceded that,
at this juncture, the Court has a robust record on the claim construction issues presented by
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the Parties. 	As such, there is no reason to delay resolution of these claim construction
issues to a later stage in the case.
In sum, Pemberton has failed to provide the Court with any reason to revisit or
reconsider it constructions of the claim terms “affixed to” and “secured to.” As such, the
Court reaffirms that the claim terms “affixed to” and “secured to” require that the
magnet/magnetic attraction device/magnetic attraction connection device be either: (1)
directly 	attached 	to 	the 	printed 	sheet; 	or 	(2) 	directly 	attached 	to 	an
intermediary component/device that is then directly attached to the printed sheet.
II. 	Patent Infringement
A. 	Legal Standard
Federal Circuit law applies to the specific question of whether a complaint properly
states a claim for patent infringement on which relief may be granted. 	AlexSam, Inc. v.
Aetna, Inc., 119 F.4th 27, 35 (Fed. Cir. 2024).
Generally, to establish infringement of a patent claim, “a plaintiff must prove the
presence of each and every claim element or its equivalent in the accused method or
device.” 	Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1378 (Fed. Cir.
2011); see SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 983 F.3d
1367, 1380 (Fed. Cir. 2021). A patent infringement analysis proceeds in two steps. Niazi
Licensing Corp. v. St. Jude Med. S.C., Inc., 30 F.4th 1339, 1350 (Fed. Cir. 2022); JVW
Enters., Inc. v. Interact Accessories, Inc., 424 F.3d 1324, 1329 (Fed. Cir. 2005). 	In the
first step, the court construes the asserted claims as a matter of law. See Niazi, 30 F.4th at
1351; JVW, 424 F.3d at 1329. 	In the second step, the factfinder compares the properly
construed claims to the accused device. See id.
The Federal Circuit has explained that, to assert a plausible claim for patent
infringement under the Iqbal/Twombly standard, the complaint must “place the alleged
infringer on notice of what activity is being accused of infringement.” Bot M8 LLC v. Sony
Corp. of Am., 4 F.4th 1342, 1352 (Fed. Cir. 2021) (cleaned up) (quoting Lifetime Indus.,
Inc. v. Trim-Lok, Inc., 869 F.3d 1372, 1379 (Fed. Cir. 2017)). A plausible claim for patent
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infringement “must do more than merely allege entitlement to relief; it must support the
grounds for that entitlement with sufficient factual content.” 	Id. 	Thus, a plaintiff cannot
simply recite the claim elements and merely conclude that the accused product has those
elements. Id. at 1353. Rather, “[t]here must be some factual allegations that, when taken
as true, articulate why it is plausible that the accused product infringes the patent claim.”
Id. “The level of detail required in any given case will vary depending upon a number of
factors, including the complexity of the technology, the materiality of any given element
to practicing the asserted claim(s), and the nature of the allegedly infringing device.” Id.;
see, e.g., Disc Disease Sols. Inc. v. VGH Solutions, Inc., 888 F.3d 1256, 1260 (Fed. Cir.
2018) (considering the complexity of the technology and the number of claims at issue in
assessing whether the plaintiff had adequately stated a claim for patent infringement).
Nevertheless, the Federal Circuit has explained that the standard for pleading patent
infringement is “not onerous.” Bot M8, 4 F.4th at 1354; see also Bell Semiconductor, LLC
v. NXP USA, Inc., 653 F. Supp. 3d 767, 777 (S.D. Cal. 2023) (“[V]ery little is required in
order to plead a claim of patent infringement.”). A patentee need not prove its case at the
pleading stage.” 	AlexSam, 119 F.4th at 35 (citing Bot M8, 4 F.4th at 1346). 	“More
particularly: ‘[a] plaintiff is not required to plead infringement on an element-by-element
basis. Instead, it is enough that a complaint place the alleged infringer on notice of what
activity . . . is being accused of infringement.’” Id. (quoting Bot M8, 4 F.4th at 1352).
Further, in a recent decision, the Federal Circuit held that a district court may
consider claim construction issues in deciding a Rule 12(b)(6) motion to dismiss. 	See
UTTO Inc. v. Metrotech Corp., 119 F.4th 984, 992–94 (Fed. Cir. 2024) (rejecting per se
rule against construing claim terms at the Rule 12(b)(6) stage of a case); see also, e.g.,
Adnexus Inc., 2025 WL 3492653, at *5. 	In UTTO, The Federal Circuit explained that,
“[w]here claims are construed based on intrinsic evidence alone, a decision on claim
construction is not different in kind from the interpretation of other legal standards, which
is proper and routine in ruling on a motion under Rule 12(b)(6).” 	119 F.4th at 993; see
also id. at 994 (“Some case-specific circumstances can make it improper for a district court
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to resolve a claim construction dispute in the context of adjudicating a Rule 12(b)(6)
motion, but sometimes a claim’s meaning may be so clear on the only point that is
ultimately material to deciding the dismissal motion that no additional process is needed.”);
ALD Soc., LLC v. Verkada, Inc., 654 F. Supp. 3d 972, 979 (N.D. Cal. 2023) (“[T]he Court
may dismiss a complaint prior to claim construction when the complaint rests on an
implausible claim construction.” (citing Ottah v. Fiat Chrysler, 884 F.3d 1135, 1141–42
(Fed. Cir. 2018))).
B. 	Analysis
As previously explained, all of the Asserted Claims include a limitation requiring
that the accused apparatus/method include a magnet/magnetic attraction device/magnetic
attraction connection device that is “affixed to”/“secured to” the surface of the printed
sheet. See ’447 Patent col. 6 ll. 43–46, col. 7 ll. 8–10, 25–26; ’687 Patent col. 4 ll. 63–63,
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,
29–30. Under the claim construction analysis in the Court’s Prior Order and as set forth
above, this claim language requires that the magnet/magnetic device/magnetic connection
device be either: (1) directly attached to the printed sheet; or (2) directly attached to an
intermediary component/device that is then directly attached to the printed sheet.
At the hearing, Pemberton conceded that he cannot plausibly allege infringement of
the Asserted Patents by JITB under the Court’s claim constructions set forth above and that
further amendment of his complaint would be futile. In light of that concession, the Court
concludes that the Second Amended Complaint fails plausibly to allege a claim for patent
infringement 	against 	JITB. 	Accordingly, 	the 	Court 	GRANTS 	JITB’s 	Motion
DISMISSES 	Pemberton’s 	Second 	Amended 	Complaint 	WITHOUT 	LEAVE 	TO
AMEND. See AmerisourceBergen Corp. v. Dialysist W., Inc., 465 F.3d 946, 951 (9th Cir.
2006) (explaining that courts should “not grant leave to amend where the amendment . . .
is futile”).
/ / /
/ / /
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CONCLUSION
In light of the foregoing, the Court GRANTS JITB’s Motion and DISMISSES
WITH PREJUDICE Pemberton’s Second Amended Complaint.
IT IS SO ORDERED.
Dated: January 13, 2026
___________________________
Honorable Todd W. Robinson
United States District Judge
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