SunEarth Inc. et al v. Sun Earth Solar Power Co., Ltd. et al

Filing 105


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1 IN THE UNITED STATES DISTRICT COURT 2 FOR THE NORTHERN DISTRICT OF CALIFORNIA 3 4 5 SUNEARTH, INC.; and THE SOLARAY CORPORATION, Plaintiffs, 6 7 8 9 United States District Court For the Northern District of California 10 11 v. SUN EARTH SOLAR POWER CO., LTD.; NBSOLAR USA, INC.; and DOES 1-10, No. C 11-4991 CW ORDER GRANTING PLAINTIFFS’ MOTION TO STRIKE DEFENDANTS’ AFFIRMATIVE DEFENSES (Docket No. 91) Defendants. ________________________________/ Plaintiffs SunEarth, Inc. and The Solaray Corporation move to 12 strike the affirmative defenses of Defendants Sun Earth Solar 13 Power Company, Limited (SESP) and NBSolar USA, Inc. 14 oppose Plaintiffs’ motion. 15 presented by the parties in their papers and at the hearing, the 16 Court GRANTS Plaintiffs’ motion, STRIKES Defendants’ affirmative 17 defenses, and GRANTS Defendants leave to amend. Having considered the arguments 18 19 Defendants BACKGROUND On October 11, 2011, Plaintiffs initiated this trade name and 20 trademark infringement action, alleging that Defendants have 21 misappropriated and infringed Plaintiffs’ “Sun Earth” trademark, 22 service mark and trade name. 23 On November 8, 2011, Defendants filed their answer to 24 Plaintiffs’ complaint, pleading as affirmative defenses that 25 “Plaintiffs’ claims are barred by laches and estoppel,” without 26 elaboration. Answer, Docket No. 23, 4. 27 On January 26, 2011, the parties filed a joint case 28 management statement, stating that a disputed legal issue was 1 whether laches bars Plaintiffs’ claims. 2 Statement, Docket No. 55, 9. 3 Joint Case Management Estoppel was not mentioned. On March 13, 2012, after this Court granted Plaintiffs leave 4 to do so, Plaintiffs filed their first amended complaint (1AC). 5 Docket No. 81. 6 On March 27, 2012, Defendants filed their answer to the 1AC 7 and included counterclaims for unfair competition based on common 8 law and California statute. 9 included as affirmative defenses that “Plaintiffs’ claims are United States District Court For the Northern District of California 10 Docket No. 84. Defendants again barred by estoppel and laches,” without elaboration. 11 Id. at 6. On April 5, 2012, Plaintiffs filed their answer to 12 Defendants’ counterclaims. 13 Defendants filed an amended answer to the 1AC, removing their 14 counterclaims completely but making no other alterations. 15 No. 86. 16 barred by estoppel and laches,” without elaboration. 17 18 21 On the same day, Docket Defendants again asserted that “Plaintiffs’ claims are Id. at 6. On April 26, 2012, Plaintiffs filed the instant motion to strike. 19 20 Docket No. 85. Docket No. 91. DISCUSSION I. Timeliness of Plaintiffs’ Motion to Strike Federal Rule of Civil Procedure 12(f) states that a party may 22 make a motion to strike material from a pleading “either before 23 responding to the pleading or, if a response is not allowed, 24 within 21 days after being served with the pleading.” 25 It is undisputed that Plaintiffs filed their motion to strike 26 within twenty-one days of being served with the amended answer to 27 the 1AC. 28 nonetheless untimely because it was not filed within twenty-one Defendants argue that Plaintiffs’ motion to strike is 2 1 days of November 8, 2011, when Defendants first asserted their 2 affirmative defenses. 3 courts have denied a motion to strike as untimely when it was 4 filed a long time after the filing of the pleading it challenged, 5 but do not provide authority in which a court has done so when a 6 motion to strike a pleading was filed within the applicable time 7 period after service of that pleading, because the material it 8 sought to strike was also contained in an earlier version of the 9 pleading. United States District Court For the Northern District of California 10 In support, Defendants cite cases in which At least one other judge in this District has rejected 11 Defendants’ argument as “unpersuasive.” 12 Telcoms., 1995 U.S. Dist. LEXIS 22325, at *5 (N.D. Cal.). 13 Court agrees that Defendants’ argument is unavailing. 14 previously stated, Rule 12(f) allows a party to file a motion to 15 strike “within 21 days after being served with the pleading,” and 16 the operative pleading was served exactly twenty-one days before 17 Plaintiffs filed their motion to strike. 18 is timely. 19 See Raychem Corp. v. PSI This As Thus, Plaintiffs’ motion Further, even if Plaintiffs’ motion were untimely, this Court 20 retains the discretion to consider the arguments they raise sua 21 sponte. 22 time restriction. 23 properly consider arguments raised in an untimely motion to strike 24 under this rule. 25 1388, 1399 (7th Cir. 1991); Abarca v. Franklin County Water Dist., 26 2009 U.S. Dist. LEXIS 42609, at*16 (E.D. Cal.); United States v. 27 Global Mortg. Funding, Inc., 2008 U.S. Dist. LEXIS 102897, at *6 Rule 12(f) allows the court to act “on its own” without a Thus, a number of courts have found they may See, e.g., Williams v. Jader Fuel Co., 944 F.2d 28 3 1 (C.D. Cal.). 2 Plaintiffs’ motion. 3 II. 4 Accordingly, the Court will reach the merits of Motion to Strike Plaintiffs argue that Defendants have not adequately plead 5 the factual basis for their laches and estoppel affirmative 6 defenses under either the pleading standard set forth in the 7 Supreme Court’s decisions in Bell Atlantic Corp. v. Twombly, 550 8 U.S. 544 (2007), and Ashcroft v. Iqbal, 556 U.S. 662 (2009), or 9 the less rigorous standard set forth in Wyshak v. City Nat’l Bank, United States District Court For the Northern District of California 10 11 607 F.2d 824, 826 (9th Cir. 1979). Rule 8 requires that, when “responding to a pleading, a party 12 must . . . state in short and plain terms its defenses to each 13 claim asserted against it.” 14 Rule 12(f) provides that, on its own or on a motion from a party, 15 a “court may strike from a pleading an insufficient defense or any 16 redundant, immaterial, impertinent, or scandalous matter.” 17 Federal Rule of Civil Procedure 12(f). 18 12(f) motion is to avoid spending time and money litigating 19 spurious issues.” 20 Nonbargained Program, 718 F. Supp. 2d 1167 (N.D. Cal. 2010) 21 (citing Fantasy, Inc. v. Fogerty, 984 F.2d 1524, 1527 (9th Cir. 22 1993)). 23 Federal Rule of Civil Procedure 8(b). “The purposes of a Rule Barnes v. AT&T Pension Benefit Plan-- Like the other judges in this district who have considered 24 the issue, this Court has recently held that “the heightened 25 pleading standard set forth in Twombly and Iqbal also applies to 26 affirmative defenses.” 27 2012 U.S. Dist. LEXIS 68711, at *13 (N.D. Cal.). 28 v. Gordon & Wong Law Group, P.C., 2012 WL 1029425, at *6 (N.D. Powertech Tech., Inc. v. Tessera, Inc., 4 See also Perez 1 Cal.) (Koh, J.); Barnes & Noble, Inc. v. LSI Corp., 2012 WL 2 359713, at *2 (N.D. Cal.) (Chen, J.); Bottoni v. Sallie Mae, Inc., 3 2011 WL 3678878, at *2 (N.D. Cal.) (Beeler, M.J.); Dion v. Fulton 4 Friedman & Gullace LLP, 2012 WL 160221, at *2 (N.D. Cal.) 5 J.); J & J Sports Productions, Inc. v. Mendoza Govan, 2011 WL 6 1544886, at *1 (N.D. Cal.) (Alsup, J.); Barnes, 718 F. Supp. 2d at 7 1171-72 (Patel, J.). 8 include only conclusory allegations, without providing any 9 information about the grounds upon which they rest, they have (Conti, Because Defendants’ affirmative defenses United States District Court For the Northern District of California 10 insufficiently plead these defenses as required to provide fair 11 notice under either this standard or the earlier Wyshak standard. 12 Thus, the Court GRANTS Plaintiffs’ motion to strike. 13 Defendants ask that the Court either amend their pleadings to 14 conform to the details that they set forth in their prior filings, 15 or grant them leave to amend. 16 proposed amendment to their laches affirmative defense. 17 They also provide a copy of their The authority that Defendants cite does not establish that 18 the Court itself may amend their answer as Defendants have 19 requested. 20 it is not clear how the Court could construe Defendants’ prior 21 filings to allege their affirmative defenses properly; none of the 22 documents to which Defendants point discusses estoppel or provides 23 allegations that would put Plaintiffs on notice of the grounds for 24 an affirmative defense on that basis. 25 Further, even if the Court had the authority to do so, The Court, however, will grant Defendants leave to amend 26 their affirmative defenses. 27 absence of prejudice to the opposing party, leave to amend should 28 be freely given.” If a defense is struck, “[i]n the Wyshak, 607 F.2d at 826. 5 Plaintiffs do not 1 contend that granting Defendants leave to amend would prejudice 2 them. 3 insufficient as a matter of law to allege the affirmative defenses 4 properly, in that it contains only allegations similar to the 5 laches defense that Defendants asserted in opposition to 6 Plaintiffs’ motion for a preliminary injunction, which the Court, 7 in granting the preliminary injunction, found unlikely to succeed, 8 and that amendment would therefore be futile. 9 defense is not likely to succeed on its merits does not United States District Court For the Northern District of California 10 Instead, they argue that Defendants’ proposed amendment is However, that the necessarily mean that it is futile to allege. 11 CONCLUSION 12 For the reasons set forth above, the Court GRANTS Plaintiffs’ 13 motion to strike Defendants’ affirmative defenses (Docket No. 91). 14 Defendants are granted leave to file their amended affirmative 15 defenses within seven days of the date of this Order; Defendants 16 may file their proposed amended affirmative defense or may file a 17 different amended estoppel and/or laches defense. 18 file a motion challenging the sufficiency of Defendants’ 19 amendment, they shall not repeat any of the arguments regarding 20 futility made in their reply to this motion. 21 If Plaintiffs IT IS SO ORDERED. 22 23 24 Dated: 6/19/2012 CLAUDIA WILKEN United States District Judge 25 26 27 28 6

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