Fleming v. Cobra Electronics Corporation et al

Filing 43

MEMORANDUM DECISION AND ORDER Fleming's motion to dismiss and strike (docket no. 16 ) is granted in part, granted conditionally in part, and denied in part. Signed by Judge B. Lynn Winmill. (caused to be mailed to non Registered Participants at the addresses listed on the Notice of Electronic Filing (NEF) by (jp)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF IDAHO
HOYT A. FLEMING,
Plaintiff,

Case No. 1:12-CV-392-BLW

v.

MEMORANDUM DECISION
AND ORDER

COBRA ELECTRONICS CORPORATION
AND THE WHISTLER GROUP, INC.,
Defendants.

INTRODUCTION
The Court has before it plaintiff Fleming’s motion to dismiss and strike defendant
Whistler’s counterclaims and affirmative defenses. The motion is fully briefed and at issue. For
the reasons expressed below, the Court will grant the motion in part, striking two affirmative
defenses, and requiring the amendment of others to provide more specificity.
ANALYSIS
In this lawsuit, Fleming argues that Whistler is infringing its patents. In response,
Whistler alleges various affirmative defenses and counterclaims. Fleming complains that
Whistler’s allegations lack the required specificity and should either be stricken or dismissed.
Whistler’s affirmative defenses and counterclaims are summarized in the table below:

Memorandum Decision & Order - 1

Whistler Affirmative Defenses & Counterclaims
Description
(From Whistler’s Answer)

Allegation

First Affirmative Defense

Whistler did not infringe

Second Affirmative Defense

Fleming’s patents invalid

Third Affirmative Defense

No notice of patent - No required mark on products

Fourth Affirmative Defense

Laches & Estoppel

Fifth Affirmative Defense

Prosecution History Estoppel

Sixth Affirmative Defense

Improper Joinder

Seventh Affirmative Defense

Fleming may lack standing

Eighth Affirmative Defense

Absolute & Equitable Intervening Rights

“Other Affirmative Defenses”

Reservation of Rights

“Lack of Personal Jurisdiction”

Court lacks personal jurisdiction over Whistler

First Counterclaim

Seeks Declaration that Whistler did not infringe

Second Counterclaim

Seeks Declaration that Fleming’s patents are invalid

Sixth Affirmative Defense & “Other Affirmative Defense”
In its sixth affirmative defense, Whistler raises the issue of improper joinder. Under the
heading “Other Affirmative Defenses,” it reserves its right to assert additional affirmative
defenses. In its briefing, Whistler concedes that these are not “commonly considered” as
affirmative defenses, and the Court agrees. Both will be struck.
Second Affirmative Defense & Second Counterclaim
In both its second affirmative defense and its second counterclaim, Whistler alleges that
Fleming’s patents are invalid. Beyond that bare allegation, Whistler says nothing – it fails to
explain why the patents are invalid. However, Whistler will soon be compelled to provide a
much more detailed explanation of the invalidity defense and counterclaim. The requirements
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set forth in Local Patent Rule 3.3 apply to both the affirmative defense of invalidity and the
counterclaim alleging invalidity. To comply with Local Patent Rule 3.3, and the Court’s Case
Management Order, Whistler must provide a detailed statement supporting these allegations on
or before February 4, 2013. By that date, the insufficiency will either be corrected or the
allegations will, at that time, be subject to dismissal. Consequently, the Court will deny the
motion to dismiss at this time, without prejudice to the right of Fleming to re-raise the issue if
the required detailed statement is insufficient.
Seventh Affirmative Defense & “Lack of Personal Jurisdiction”
In its seventh affirmative defense, Whistler alleges that “[t]o the extent that Fleming does
not hold all substantial rights in the ‘905 patent, Fleming lacks standing to assert the claims of
such patent in relation to Whistler.” Fleming points out that this allegation is prospective in
nature and is not based on any presently existing fact. Fleming also takes issue with Whistler’s
allegation that the Court lacks personal jurisdiction over it, and argues that this defense is
likewise unexplained.
Both of these defenses – lack of standing and lack of personal jurisdiction – are typically
raised by a defense motion early-on in the case, and the plaintiff bears the ultimate burden of
proof on both issues. Native Village of Kivalina v ExxonMobil Corp., 696 F.3d 849 (9th Cir.
2012) (holding that plaintiff bears burden of establishing standing); Mavrix Photo, Inc. v. Brand
Technologies, Inc., 647 F.3d 1218 (9th Cir. 2011) (holding that plaintiff bears the burden of
establishing personal jurisdiction). There appears to be some question whether the specificity
required elsewhere would apply to a defendant pleading lack of standing and lack of personal
jurisdiction. See generally Maya v Centex Corp., 658 F.3d 1060 (9th Cir. 2011) (refusing to

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apply Iqbal to plaintiff’s jurisdictional allegations like constitutional standing). Under these
circumstances, the Court is reluctant to dismiss Whistler’s allegations regarding standing and
personal jurisdiction for a lack of specificity.
First, Third, Fourth, Fifth & Eighth Affirmative Defenses & First Counterclaim
With regard to these affirmative defenses, and counterclaim, Whistler provides no
explanation, leaving Fleming to guess about the basis for the defenses. An affirmative defense is
insufficiently pled where it fails to provide the plaintiff with “fair notice of the defense.”
Wyshak v. City Nat'l Bank, 607 F.2d 824, 827 (9th Cir.1979). “The key to determining the
sufficiency of pleading an affirmative defense is whether it gives plaintiff fair notice of the
defense.” Id. The “fair notice” pleading requirement is met if the defendant “sufficiently
articulated the defense so that the plaintiff was not a victim of unfair surprise.” Smith v. North
Star Charter School, Inc., 2011 WL 3205280 (D.Id. 2011) (internal quotations omitted).
Here, Whistler has failed to provide fair notice of the basis for its claims. The
insufficiency of Whistler’s pleadings exposes Fleming to unfair surprise later in this case.
Fleming is entitled to an explanation of these defenses that includes specific allegations. The
Court will give Whistler one opportunity to amend its defenses to provide more detail.
Accordingly, the Court will conditionally grant Fleming’s motion to dismiss, giving Whistler 14
days to amend its pleadings to provide the requisite detail, and if no amendment is made, the
Court will dismiss the First, Third, Fourth, Fifth & Eighth Affirmative Defenses and the First
Counterclaim.
ORDER
In accordance with the Memorandum Decision set forth above,

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NOW THEREFORE IT IS HEREBY ORDERED, that Fleming’s motion to dismiss and
strike (docket no. 16) is GRANTED IN PART, GRANTED CONDITIONALLY IN PART,
AND DENIED IN PART. It is granted to the extent it seeks to strike the Sixth Affirmative
Defense (improper joinder) and the affirmative defense listed under the heading “Other
Affirmative Defenses” (reservation of rights). It is granted conditionally to the extent it seeks to
give Whistler fourteen (14) days from the date of this decision to amend its pleadings to provide
the requisite detail, and if no amendment is made, the Court will dismiss the First, Third, Fourth,
Fifth & Eighth Affirmative Defenses and the First Counterclaim. It is denied in all other
respects.

DATED: December 26, 2012

Honorable B. Lynn Winmill
Chief U. S. District Judge

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