Greenbroz, Inc. v. Laeger Built, LLC et al

Filing 30

ORDER Granting Motion to Dismiss Counterclaim and Motion to Strike Affirmative Defense [Doc. No. 19 ]. Signed by Judge Cathy Ann Bencivengo on 8/22/2017. (jjg)

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1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 12 GREENBROZ, INC., a Nevada corporation, 15 16 ORDER GRANTING MOTION TO DISMISS COUNTERCLAIM AND MOTION TO STRIKE AFFIRMATIVE DEFENSE Plaintiff/Counter-Defendant, 13 14 Case No.: 16-cv-02946-CAB-BLM v. LAEGER BUILT, LLC d/b/a TRIMBROS.COM, an Oregon limited liability company; and DOES 1-10, Defendant/Counter-Claimant. 17 [Doc. No. 19] 18 19 This matter is before the Court on Plaintiff’s motion to dismiss Defendant’s 20 counterclaims and motion to strike an affirmative defense. The motion is fully briefed and 21 the Court deems it suitable for submission without oral argument. For the reasons set forth 22 below, the motion is granted. 23 I. Background 24 Plaintiff Greenbroz, Inc. (“Greenbroz”) is the owner of a design patent for a blade 25 assemble apparatus for trimming agricultural products (“the Patent”). [Doc. No. 1 ¶¶ 4, 26 12.] On June 13, 2016, Greenbroz sent a cease and desist letter to Defendant Laeger Built 27 LLC d/b/a (“Trimbros”), stating that Trimbros’s agricultural trimmer was 28 infringing on Greenbroz’s Patent. [Id. at ¶ 16.] Trimbros responded on June 29, 2016, 1 16-cv-02946-CAB-BLM 1 denying it was infringing and refusing to comply with the demands contained therein. 2 [Doc. No. 12-4 at 2-3.] On December 2, 2016, Greenbroz filed its Complaint against 3 Trimbros alleging patent infringement, California trademark infringement, and unfair 4 competition under state common law and the Lanham Act. [Doc. No. 1.] 5 After filing a motion to dismiss for lack of personal jurisdiction, which the Court 6 denied, Trimbros filed an answer, affirmative defenses, and four counterclaims for 7 declaratory judgment of trademark and patent non-infringement and invalidity. [Doc. No. 8 16.] Greenbroz now moves to dismiss the counterclaims and to strike an affirmative 9 defense that “Plaintiff’s allegations are barred, in whole or in part, to the extent that 10 Plaintiff has misused its intellectual property by knowingly asserting rights against 11 Defendant when Plaintiff knows or should know that the asserted rights are invalid and/or 12 not infringed and/or unenforceable.” [Doc. No. 16 at ¶ 69.] 13 II. 14 Legal Standards A. Motion to Dismiss Counterclaims 15 “A motion to dismiss a counterclaim brought pursuant to Federal Rule of Civil 16 Procedure 12(b)(6) is analyzed under the same standard as a Rule 12(b)(6) motion to 17 dismiss a plaintiff's complaint.” Leadership Studies, Inc. v. Blanchard Training & Dev., 18 Inc., No. 15CV1831-WQH-KSC, 2017 WL 3315652, at *4 (S.D. Cal. Aug. 2, 2017). To 19 survive a motion to dismiss under Rule 12(b)(6), “a complaint must contain sufficient 20 factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” 21 Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 22 U.S. 544, 570 (2007)). Thus, the Court “accept[s] factual allegations in the complaint as 23 true and construe[s] the pleadings in the light most favorable to the nonmoving party.” 24 Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008).1 On 25 the other hand, the Court is “not bound to accept as true a legal conclusion couched as a 26 27 1 28 The Federal Circuit applies regional circuit law to the review of motions to dismiss. OIP Tech., Inc. v., Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015). 2 16-cv-02946-CAB-BLM 1 factual allegation.” Iqbal, 556 U.S. at 678; see also Lee v. City of Los Angeles, 250 F.3d 2 668, 679 (9th Cir. 2001) (“Conclusory allegations of law are insufficient to defeat a motion 3 to dismiss”). Nor is the Court “required to accept as true allegations that contradict exhibits 4 attached to the Complaint or . . . allegations that are merely conclusory, unwarranted 5 deductions of fact, or unreasonable inferences.” Daniels-Hall v. Nat’l Educ. Ass’n, 629 6 F.3d 992, 998 (9th Cir. 2010). “In sum, for a complaint to survive a [12(b)(6)] motion to 7 dismiss, the non-conclusory factual content, and reasonable inferences from that content, 8 must be plausibly suggestive of a claim entitling the plaintiff to relief.” Moss v. U.S. Secret 9 Serv., 572 F.3d 962, 969 (9th Cir. 2009) (quotations omitted). 10 B. Motion to Strike 11 Under Federal Rule of Civil Procedure 12(f), a court “may order stricken from any 12 pleading any insufficient defense or any redundant, immaterial, impertinent, or scandalous 13 matter.” Fed. R. Civ. P. 12(f). “Motions to strike are generally disfavored and ‘should not 14 be granted unless the matter to be stricken clearly could have no possible bearing on the 15 subject of the litigation.’” Synopsys, Inc. v. Ubiquiti Networks, Inc., No. 17-CV-00561- 16 WHO, 2017 WL 3485881, at *6 (N.D. Cal. Aug. 15, 2017) (quoting Platte Anchor Bolt, 17 Inc. v. IHI, Inc., 352 F.Supp.2d 1048, 1057 (N.D. Cal. 2004)). “[C]ourts often require a 18 showing of prejudice by the moving party as a condition to granting such relief.” Nestle 19 USA, Inc. v. Crest Foods, Inc., No. LACV1607519JAKAFMX, 2017 WL 3267665, at *22 20 (C.D. Cal. July 28, 2017) (internal quotation marks and citation omitted). “[T]he key to 21 determining the sufficiency of pleading an affirmative defense is whether it gives plaintiff 22 fair notice of the defense.” Wyshak v. City Nat’l Bank, 607 F.2d 824, 827 (9th Cir. 1979) 23 (citing Conley v. Gibson, 355 U.S. 41, 47–48 (1957)). “[T]he ‘fair notice’ required by the 24 pleading standards only requires describing the defense in ‘general terms.’” Kohler v. 25 Flava Enterprises, Inc., 779 F.3d 1016, 1019 (9th Cir. 2015) (citing 5 Charles Alan Wright 26 & Arthur R. Miller, Federal Practice and Procedure § 1274 (3d ed. 1998)). 27 28 3 16-cv-02946-CAB-BLM 1 III. 2 Trimbros asserts counterclaims for declaratory judgments of: (1) patent non- 3 infringement; (2) trademark and/or trade dress non-infringement; (3) patent invalidity; and 4 (4) trademark and/or trade dress invalidity. “[T]o be entitled to the presumption of truth, 5 allegations in a complaint or counterclaim may not simply recite the elements of a cause 6 of action, but must contain sufficient allegations of underlying facts to give fair notice and 7 to enable the opposing party to defend itself effectively.” Star v. Baca, 652 F.3d 1202, 8 1216 (9th Cir. 2011). Here, Trimbros’s counterclaims contain no factual allegations 9 whatsoever, asserting only legal conclusions. Accordingly, the counterclaims do not 10 Discussion contain sufficient factual matter to state plausible claims for relief. 11 Greenbroz also moves to strike Trimbros’s affirmative defense of misuse of 12 intellectual property because Trimbros does not allege any facts to give Greenbroz fair 13 notice. Unlike with its counterclaims, Trimbros “must merely provide [Greenbroz] fair 14 notice of the issue involved through their affirmative defenses.” Wyshak, 607 F.2d at 827. 15 Nevertheless, the affirmative defense in question does not satisfy this lesser standard 16 because it refers generally to Greenbroz’s “intellectual property” without distinguishing 17 between misuse of patent rights or misuse of trademark rights. If Treebros is asserting an 18 affirmative defense of patent misuse, it must “allege facts that plausibly suggest that 19 [Greenbroz] has impermissibly broadened the scope of a patent with anticompetitive 20 effect.” Beco Dairy Automation, Inc. v. Glob. Tech Sys., Inc., No. 112CV01310LJOSMS, 21 2015 WL 9583012, at *2 (E.D. Cal. Dec. 31, 2015). 22 IV. 23 For the reasons set forth above, it is hereby ORDERED as follows: 24 1. The motion to dismiss Trimbros’s counterclaims is GRANTED; 25 2. The motion to strike Trimbros’s affirmative defense is GRANTED; 26 3. Trimbros’s counterclaims and the affirmative defense at paragraph 69 of the 27 Conclusion Answer and Counterclaim are DISMISSED WITHOUT PREJUDICE; and 28 4 16-cv-02946-CAB-BLM 1 2 3 4 4. Trimbros must file any amended answer and counterclaims on or before September 5, 2017. It is SO ORDERED. Dated: August 22, 2017 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 5 16-cv-02946-CAB-BLM

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