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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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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GREENBROZ, INC., a Nevada
corporation,

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ORDER GRANTING MOTION TO
DISMISS COUNTERCLAIM AND
MOTION TO STRIKE
AFFIRMATIVE DEFENSE

Plaintiff/Counter-Defendant,

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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.

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[Doc. No. 19]

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This matter is before the Court on Plaintiff’s motion to dismiss Defendant’s

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counterclaims and motion to strike an affirmative defense. The motion is fully briefed and

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the Court deems it suitable for submission without oral argument. For the reasons set forth

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below, the motion is granted.

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I.

Background

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Plaintiff Greenbroz, Inc. (“Greenbroz”) is the owner of a design patent for a blade

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assemble apparatus for trimming agricultural products (“the Patent”). [Doc. No. 1 ¶¶ 4,

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12.] On June 13, 2016, Greenbroz sent a cease and desist letter to Defendant Laeger Built

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LLC d/b/a Trimbros.com (“Trimbros”), stating that Trimbros’s agricultural trimmer was

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infringing on Greenbroz’s Patent. [Id. at ¶ 16.] Trimbros responded on June 29, 2016,
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denying it was infringing and refusing to comply with the demands contained therein.

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[Doc. No. 12-4 at 2-3.] On December 2, 2016, Greenbroz filed its Complaint against

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Trimbros alleging patent infringement, California trademark infringement, and unfair

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competition under state common law and the Lanham Act. [Doc. No. 1.]

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After filing a motion to dismiss for lack of personal jurisdiction, which the Court

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denied, Trimbros filed an answer, affirmative defenses, and four counterclaims for

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declaratory judgment of trademark and patent non-infringement and invalidity. [Doc. No.

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16.] Greenbroz now moves to dismiss the counterclaims and to strike an affirmative

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defense that “Plaintiff’s allegations are barred, in whole or in part, to the extent that

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Plaintiff has misused its intellectual property by knowingly asserting rights against

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Defendant when Plaintiff knows or should know that the asserted rights are invalid and/or

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not infringed and/or unenforceable.” [Doc. No. 16 at ¶ 69.]

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II.

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Legal Standards
A.

Motion to Dismiss Counterclaims

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“A motion to dismiss a counterclaim brought pursuant to Federal Rule of Civil

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Procedure 12(b)(6) is analyzed under the same standard as a Rule 12(b)(6) motion to

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dismiss a plaintiff's complaint.” Leadership Studies, Inc. v. Blanchard Training & Dev.,

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Inc., No. 15CV1831-WQH-KSC, 2017 WL 3315652, at *4 (S.D. Cal. Aug. 2, 2017). To

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survive a motion to dismiss under Rule 12(b)(6), “a complaint must contain sufficient

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factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’”

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Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550

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U.S. 544, 570 (2007)). Thus, the Court “accept[s] factual allegations in the complaint as

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true and construe[s] the pleadings in the light most favorable to the nonmoving party.”

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Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008).1 On

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the other hand, the Court is “not bound to accept as true a legal conclusion couched as a

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The Federal Circuit applies regional circuit law to the review of motions to dismiss. OIP Tech., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015).
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factual allegation.” Iqbal, 556 U.S. at 678; see also Lee v. City of Los Angeles, 250 F.3d

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668, 679 (9th Cir. 2001) (“Conclusory allegations of law are insufficient to defeat a motion

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to dismiss”). Nor is the Court “required to accept as true allegations that contradict exhibits

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attached to the Complaint or . . . allegations that are merely conclusory, unwarranted

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deductions of fact, or unreasonable inferences.” Daniels-Hall v. Nat’l Educ. Ass’n, 629

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F.3d 992, 998 (9th Cir. 2010). “In sum, for a complaint to survive a [12(b)(6)] motion to

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dismiss, the non-conclusory factual content, and reasonable inferences from that content,

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must be plausibly suggestive of a claim entitling the plaintiff to relief.” Moss v. U.S. Secret

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Serv., 572 F.3d 962, 969 (9th Cir. 2009) (quotations omitted).

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B.

Motion to Strike

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Under Federal Rule of Civil Procedure 12(f), a court “may order stricken from any

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pleading any insufficient defense or any redundant, immaterial, impertinent, or scandalous

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matter.” Fed. R. Civ. P. 12(f). “Motions to strike are generally disfavored and ‘should not

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be granted unless the matter to be stricken clearly could have no possible bearing on the

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subject of the litigation.’” Synopsys, Inc. v. Ubiquiti Networks, Inc., No. 17-CV-00561-

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WHO, 2017 WL 3485881, at *6 (N.D. Cal. Aug. 15, 2017) (quoting Platte Anchor Bolt,

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Inc. v. IHI, Inc., 352 F.Supp.2d 1048, 1057 (N.D. Cal. 2004)). “[C]ourts often require a

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showing of prejudice by the moving party as a condition to granting such relief.” Nestle

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USA, Inc. v. Crest Foods, Inc., No. LACV1607519JAKAFMX, 2017 WL 3267665, at *22

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(C.D. Cal. July 28, 2017) (internal quotation marks and citation omitted). “[T]he key to

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determining the sufficiency of pleading an affirmative defense is whether it gives plaintiff

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fair notice of the defense.” Wyshak v. City Nat’l Bank, 607 F.2d 824, 827 (9th Cir. 1979)

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(citing Conley v. Gibson, 355 U.S. 41, 47–48 (1957)). “[T]he ‘fair notice’ required by the

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pleading standards only requires describing the defense in ‘general terms.’” Kohler v.

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Flava Enterprises, Inc., 779 F.3d 1016, 1019 (9th Cir. 2015) (citing 5 Charles Alan Wright

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& Arthur R. Miller, Federal Practice and Procedure § 1274 (3d ed. 1998)).

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III.

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Trimbros asserts counterclaims for declaratory judgments of: (1) patent non-

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infringement; (2) trademark and/or trade dress non-infringement; (3) patent invalidity; and

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(4) trademark and/or trade dress invalidity. “[T]o be entitled to the presumption of truth,

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allegations in a complaint or counterclaim may not simply recite the elements of a cause

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of action, but must contain sufficient allegations of underlying facts to give fair notice and

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to enable the opposing party to defend itself effectively.” Star v. Baca, 652 F.3d 1202,

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1216 (9th Cir. 2011). Here, Trimbros’s counterclaims contain no factual allegations

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whatsoever, asserting only legal conclusions. Accordingly, the counterclaims do not

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Discussion

contain sufficient factual matter to state plausible claims for relief.

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Greenbroz also moves to strike Trimbros’s affirmative defense of misuse of

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intellectual property because Trimbros does not allege any facts to give Greenbroz fair

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notice. Unlike with its counterclaims, Trimbros “must merely provide [Greenbroz] fair

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notice of the issue involved through their affirmative defenses.” Wyshak, 607 F.2d at 827.

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Nevertheless, the affirmative defense in question does not satisfy this lesser standard

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because it refers generally to Greenbroz’s “intellectual property” without distinguishing

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between misuse of patent rights or misuse of trademark rights. If Treebros is asserting an

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affirmative defense of patent misuse, it must “allege facts that plausibly suggest that

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[Greenbroz] has impermissibly broadened the scope of a patent with anticompetitive

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effect.” Beco Dairy Automation, Inc. v. Glob. Tech Sys., Inc., No. 112CV01310LJOSMS,

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2015 WL 9583012, at *2 (E.D. Cal. Dec. 31, 2015).

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IV.

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For the reasons set forth above, it is hereby ORDERED as follows:

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1. The motion to dismiss Trimbros’s counterclaims is GRANTED;

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2. The motion to strike Trimbros’s affirmative defense is GRANTED;

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3. Trimbros’s counterclaims and the affirmative defense at paragraph 69 of the

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Conclusion

Answer and Counterclaim are DISMISSED WITHOUT PREJUDICE; and

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4. Trimbros must file any amended answer and counterclaims on or before
September 5, 2017.
It is SO ORDERED.
Dated: August 22, 2017

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