FLEXCO MICROWAVE, INC. v. MEGAPHASE LLC
OPINION filed. Signed by Judge Michael A. Shipp on 8/24/2015. (mmh)
NOT FOR PUBLICATION
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
FLEXCO MI CROWAVE, INC.,
Civil Action No. 14-6947 (MAS) (LHG)
SHIPP, District Judge
This matter comes before the Court on Plaintiff Flexco Microwave, Inc.' s ("Flexco" or
"Plaintiff') motion to dismiss Defendant MegaPhase LLC' s ("MegaPhase" or "Defendant")
counterclaim for failure to state a claim and to strike several of Defendant's affirmative defenses,
pursuant to Federal Rule of Civil Procedure 12(b)(6) and (f). (ECF No. 8.) Defendant has opposed
the motions (ECF No. 9), and Plaintiff has replied (ECF No. 13). The Court has carefully
considered the parties' submissions and decides the matter without oral argument pursuant to Local
Civil Rule 78.1. For the reasons stated below, Plaintiff's motion to dismiss Defendant's
counterclaim is granted and Plaintiff's motion to strike is granted in part and denied in part.
Plaintiff brings suit alleging that Defendant breached the terms of the parties' settlement
ofa priorlawsuit, Flexco Microwave, Inc. v. MegaPhase LLC, No. 04-1339 (D.N.J. Mar. 6, 2009)
("Flexco I"). In 2004, Flexco, a New Jersey corporation engaged in the design, manufacture, and
sale of coaxial cables, filed Flexco I against MegaPhase, a Pennsylvania limited liability company
also engaged in the manufacturing of coaxial cables. (Compl. ,, 2-3, 6, ECF No. 1-2.) Flexco's
president William Pote, Jr. ("Pote II"), is the father of MegaPhase' s Chief Executive Officer and
founder, William Pote, III ("Pote III"). (Id.
iii! 5-7.) Pote III, along with the other founders of
MegaPhase, are former employees of Flexco. (Id.
In Flexco I, Flexco brought claims of, inter alia, patent infringement in connection with
Flexco's allegation that MegaPhase willfully and deliberately infringed U.S. Patent No. 5,181,316
("' 316 Patent") 1 and misappropriated Flexco' s trade secrets and confidential business information.
The parties reached a settlement of Flexco I ("Settlement") on June 12, 2008. (Compl. if 9.) Shortly
thereafter, on August 18, 2008, Flexco moved to enforce the Settlement or, alternatively, to extend
the time to re-open the action. (Id.
if 12.) MegaPhase filed opposition papers acknowledging that
a settlement had been reached but raised an objection to certain language in the Settlement. (Id.)
By Memorandum Opinion and Order on March 5, 2009, the Honorable Tonianne J. Bongiovanni,
U.S.M.J., granted Flexco's motion to enforce the Settlement and resolved a dispute between the
parties as to a term in the Settlement. (Id.
The terms of the Settlement most pertinent to the action at hand are:
1. The Defendant, MegaPhase, LLC, will pay to the Plaintiff the
sum of $125,000 as follows:
a) $25,000 upon the execution of this stipulation;
b) $25,000 on or before April 11, 2009;
c) $25,000 on or before April 11, 2010;
d) $25,000 on or before April 11, 2011;
e) $25,000 on or before April 11, 2012.
2. The Defendants hereby acknowledge that the Plaintiff is the
owner and/or holder of the ['316 Patent] ....
6. In consideration thereof, MegaPhase shall pay to the Plaintiff
payments on net sales2 of convoluted flexible coaxial cable and
The '316 Patent describes a particular method for making flexible coaxial cables. (Compl. if 19.)
"Net sales is ... defined as all sales less credits for returns." (Compl., Ex. A, Settlement if 6.)
cable assemblies during the 7-year period described above as
a) 3% of the first $1,000,000 of net sales;
b) 2% of net sales in excess of $1,000,000 up to and
c) 1% of net sales in excess of $2,000,000. 3
7. Identification of Equipment and Documentation
All equipment currently used by [MegaPhase],
including but not limited to, machines, dies, locking
dies, fixtures, form rolls, etc., related to the
fabrication or manufacture of Licensed Products will
be identified, numbered with metallic tag or stamp
by persons selected by Flexco and will upon the
Effective Date of this Stipulation constitute property
of [Flexco]. [Flexco] shall permit [MegaPhase] to
continue to use the equipment to manufacture
Licensed Products. [MegaPhase] will be responsible
for maintaining the equipment in excellent operating
[MegaPhase] will notify [Flex co] of any additions,
deletions or changes to [MegaPhase' s] equipment
inventory. All equipment relating to the fabrication
or manufacture of Licensed Products acquired by
[MegaPhase] during the Term of this Stipulation
shall also become the property of [Flexco]. Any
discontinued equipment shall be delivered to
All engineering prints and documentation in
[MegaPhase's] possession on the Effective Date of
this Stipulation relating to the Licensed Products and
all engineering prints and documents acquired or
created during the Term of this Stipulation are and
shall be the proprietary property of [Flexco ], and
shall be maintained by MegaPhase at its place of
(Settlement if 1-2, 6-7.) After Flexco I was settled and Judge Bongiovanni resolved the remaining
issue, MegaPhase paid the first three installments required in Section 1 of the Settlement. (Compl.
"Payments under Section 6 shall be paid on a monthly basis with the payment for the preceding
month due and payable on or before the tenth day of each month." (Settlement~ 6.1.) "Any late
payments of payments due under Section 6 shall incur a late payment charge in the amount of 4%
of the payment amount." (Id. if 6.3.)
ifif 16-17.) However, Flexco alleges it has yet to receive the fourth and fifth installments required
under Section 1, in addition to the portion of MegaPhase's net sales as agreed to in Section 6. (Id.
ifif 26, 30.) Plaintiff further alleges that MegaPhase breached the Settlement by failing to identify
and record Flexco's equipment and documents that are in its possession in accordance with Section
35.) Due to MegaPhase's alleged failure to comply with the terms of the Settlement,
Plaintiff brings suit for breach of contract, specifically breach of Sections 1, 6, and 7. (Id.
36.) Plaintiff seeks as damages the amounts required under the Settlement, as well as specific
performance of the obligations contained in Section 7. (Id.
MegaPhase, in response, asserts a counterclaim and several affirmative defenses.
Defendant's counterclaim seeks "judgment against the Plaintiff for the sum of$224,769 ... under
a joint mistake of fact, or a unilateral mistake together with the deceitful and fraudulent conduct
of Plaintiff." (Def. 's Answer & Countercl.
66, ECF No. 6.) Additionally, Defendant asserts
sixteen affirmative defenses, eleven of which are the subject of the motion to strike:
First Affirmative Defense: "The Complaint, as a whole, and as to
individual counts, fails to state a cause of action for which relief can
be granted." (Id. if 18.)
Second Affirmative Defense: "The Plaintiff's claims are barred by
the doctrine of waiver." (Id. if 19.)
Third Affirmative Defense: "The Plaintiffs claims are barred by the
doctrine of estoppel." (Id. if 20.)
Fourth Affirmative Defense: "The Plaintiffs claims are barred by
its unclean hands." (Id. if 21.)
Fifth Affirmative Defense: "Any damages alleged to have been
sustained by Plaintiff are due to the acts, conduct and omissions on
the part of the Plaintiff." (Id. if 22.)
Sixth Affirmative Defense: "The Plaintiffs claims are barred by the
operation of the doctrine oflaches." (Id. if 23.)
Seventh Affirmative Defense: "The Plaintiffs claims for damages
are barred due to the Plaintiff's failure to sustain or suffer any
damages." (Id. ,-r 24.)
Ninth Affirmative Defense: "The Plaintiff's claims for damages are
barred due to the Plaintiff's failure to mitigate its damages." (Id.
Eleventh Affirmative Defense: "The business of MegaPhase and its
sales of cables does not involve any manufacturing process by
MegaPhase. Thus, there could not be any infringement of a
manufacturing process by the Defendant ...." (Id. ,-r 45.)
Fifteenth Affirmative Defense: "The patent alleged to be owned by
Plaintiff ... is void, inasmuch as process [sic] claimed to have been
patented was already in the public domain, in common use by the
public for many years prior to the issuance of the said patent, and
the patent did not cover any improvement or novelty over and above
those in common use prior to the date of the registration of the
same." (Id. ,-r 59.)
Sixteenth Affirmative Defense: The Settlement was entered into
based on "a joint mistake of fact, or a unilateral mistake together
with the deceitful and fraudulent conduct of the Plaintiff." (Id.
, 66.) 4
Flexco now moves to dismiss the counterclaim and to strike the above affirmative defenses.
Subject Matter Jurisdiction
"A federal court does not have jurisdiction over a settlement agreement just because that
agreement settled a federal cause of action." Nelson v. Pennsylvania, 125 F. App'x 380, 382 (3d
Cir. 2005). The dismissal of the first action generally terminates federal jurisdiction. Id. However,
"a district court may have ancillary jurisdiction to enforce a settlement agreement if the court
retains jurisdiction by a separate provision or by incorporating the terms of the settlement
agreement into an order." Id. at 381-82. A federal court can retain jurisdiction "if the parties'
obligation to comply with the terms of the settlement agreement had been made part of the order
Defendant's responsive pleading asserts the doctrine of mistake as both an affirmative defense
and a counterclaim. (See id. ifif 63-66.)
of dismissal-either by separate provision (such as a provision 'retaining jurisdiction' over the
settlement agreement) or by incorporating the terms of the settlement agreement in the order." In
re Phar-Mor, Inc. Sec. Litig., 172 F.3d 270, 274 (3d Cir. 1999) (quoting Kokkonen v. Guardian
Life Ins. Co. ofAm., 511 U.S. 375, 381 (1994)). In either case, "a breach of the agreement would
be a violation of the order, and ancillary jurisdiction to enforce the agreement would therefore
exist." Id. The 2008 Consent Order dismissing the complaint with prejudice and without costs in
Flexco I, states that "the Court shall retain jurisdiction to enforce the settlement." (Compl., Ex. A,
Order of Dismissal 2, ECF No. 1-2.) Since the Consent Order contains a provision stating the
District ofNew Jersey shall retain jurisdiction over the settlement, the Court possesses jurisdiction
to adjudicate this matter.
Motion to Dismiss Counterclaim
A district court conducts a three-part analysis when considering a Rule 12(b)(6) motion.
Malleus v. George, 641 F.3d 560, 563 (3d Cir. 2011). "First, the court must 'tak[e] note of the
elements a plaintiff must plead to state a claim."' Id. (quoting Ashcroft v. Iqbal, 556 U.S. 662, 675
(2009)). Second, the court must accept as true all of a plaintiffs well-pleaded factual allegations
and construe the complaint in the light most favorable to the plaintiff. Fowler v. UPMC Shadyside,
578 F.3d 203, 210-11 (3d Cir. 2009). The court, however, must disregard any conclusory
allegations proffered in the complaint. Id. For example, the court is free to ignore legal conclusions
or factually unsupported accusations that merely state "the-defendant-unlawfully-harmed-me."
Iqbal, 556 U.S. at 678 (citing Bell At!. Corp. v. Twombly, 550 U.S. 544, 555 (2007)). Finally, once
the well-pleaded facts have been identified and the conclusory allegations ignored, a court must
next "determine whether the facts alleged in the complaint are sufficient to show that the plaintiff
has a 'plausible claim for relief."' Fowler, 578 F.3d at 211 (quoting Iqbal, 556 U.S. at 679). On a
motion to dismiss for failure to state a claim, a "defendant bears the burden of showing that no
claim has been presented." Hedges v. United States, 404 F.3d 744, 750 (3d Cir. 2005).
Additionally, "the standards for a properly pied complaint, by extension[,] apply to
counterclaims." United States v. Boston Scientific Neuromodulation Corp., No. 11-1210, 2014 WL
4402118, at *2 (D.N.J. Sept. 4, 2014).
Plaintiff moves to dismiss Defendant's counterclaim, which seeks relief from the
Settlement and damages in the amount of $224,769 for a "joint mistake of fact, or a unilateral
mistake together with the deceitful and fraudulent conduct of the Plaintiff." (Def. 's Answer &
Countercl. if 66.) Defendant's description of its counterclaim simultaneously invokes the doctrine
of mutual mistake, which is an affirmative defense, and the remedy of rescission. See Bonnco
Petrol, Inc. v. Epstein, 115 N.J. 599, 608, 611 (1989); see also United States v. Failla, 219 F.2d
212, 213 (3d Cir. 1955). Neither, however, standing alone, supports an affirmative counterclaim.
Giving Defendant the benefit of the doubt, the Court construes Defendant's counterclaim to assert
fraud on the part of Flexco. To state a claim for common law fraud under New Jersey law, "a
plaintiff must demonstrate: ' ( 1) a material misrepresentation of a presently existing or past fact;
(2) knowledge or belief by the defendant of its falsity; (3) an intention that the other person rely
on it; (4) reasonable reliance thereon by the other person; and (5) resulting damages."' Hoffman
v. Liquid Health Inc., No. 14-1838, 2014 WL 2999280, at *10 (D.N.J. July 2, 2014) (quoting Banco
Popular N Am. v. Gandi, 184 N .J. 161, 172-73 (2005) ). Defendant alleges that Plaintiff committed
fraud in leading it to believe that the '316 Patent applied to the product it sold. (Def. 's Answer &
Defendant, however, fails to specifically identify what misrepresentation was
made by Plaintiff, other than to refer generally to Plaintiffs "deceitful and fraudulent conduct."
if 66.) Defendant also fails to allege any facts in support ofFlexco's knowledge or belief of its
falsity, or that Flexco intended MegaPhase to rely on that falsity. Consequently, Defendant fails to
properly plead a counterclaim for fraud, and the counterclaim is dismissed without prejudice.
Motion to Strike Affirmative Defenses
Federal Rule of Civil Procedure 12(t) provides that "[t]he court may strike from a pleading
an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter." Fed. R.
Civ. P. 12(t). Motions to strike are "not favored and usually will be denied unless the allegations
have no possible relation to the controversy and may cause prejudice to one of the parties." Tonka
Corp. v. Rose Art Indus., Inc., 836 F. Supp. 200, 217 (D.N.J. 1993) (internal quotation marks
omitted). A court has "considerable discretion" in deciding a Rule 12(t) motion. Id. While it is
recognized that motions to strike are useful in eliminating insufficient defenses and saving the time
and expense oflitigating inconsequential issues, the Third Circuit has instructed that a district court
"should not grant a motion to strike a defense unless the insufficiency of the defense is clearly
apparent." United States v. Kramer, 757 F. Supp. 397, 410 (D.N.J. 1991) (quoting Cipollone v.
Liggett Grp., Inc., 789 F.2d 181, 188 (3d Cir. 1986)). In evaluating the adequacy of a defense,
courts in this district have explained that an affirmative defense is insufficient if "it is not
recognized as a defense to the cause of action." Tonka Corp., 836 F. Supp. at 217 (internal
quotation marks omitted).
Flexco seeks to strike a majority of Defendant's sixteen affirmative defenses. Flexco's
motion to strike contests the sufficiency of six ofMegaPhase's defenses, namely its second, fourth,
fifth, sixth, seventh, and ninth affirmative defenses, on the grounds that the defenses are
"conclusory statements devoid of facts to support the defense's [sic] application to this particular
case." (Pl.'s Moving Br. 13, ECF No. 8-1.) In addition, Plaintiff argues that Defendant's first,
sixth,5 eleventh, fifteenth, and sixteenth affirmative defenses should be stricken because they all
are be barred as a matter oflaw. (See id. at 13.)
Plaintiff argues that Defendant's mere identification of certain affirmative defenses,
without additional facts or elements, requires that those defenses be stricken. The Court disagrees.
Rule 8(b) provides that "[i]n responding to a pleading, a party must ... state in short and plain
terms its defenses to each claim asserted against it." Fed. R. Civ. P. 8(b). To avoid a motion to
strike affirmative defenses, "the defenses must have some possible relation to the controversy,
must not result in clear confusion or prejudice, and must generally put the adversary on notice of
the nature of the contentions." Gelman v. Rosen, No. 14-6790, 2015 WL 1849903, at *2 (D.N.J.
Apr. 22, 2015). Further, courts have held that the pleading standard set forth in Twombly is not
applicable to affirmative defenses under Rule 8(c). 6 Newborn Bros. Co. v. Albion Eng'g Co., 299
F.R.D. 90, 97 (D.N.J. 2014). Here, Plaintiff has not alleged that Defendant's second, fourth, fifth,
sixth, seventh, and ninth affirmative defenses lack any potential relation to the disputed issues in
Plaintiff identifies Defendant's third affirmative defense as one that should be stricken as a matter
of law, but provides argument in support of striking the sixth affirmative defense. Accordingly,
the Court will address the legal sufficiency of the sixth affirmative defense and not the third.
Federal Rule of Civil Procedure 8(c) requires that a party responding to a pleading must
"affirmatively state any avoidance or affirmative defense." Fed. R. Civ. P. 8(c).
this litigation. Rather, Plaintiffs motion to strike relies exclusively upon the "conclusory" nature
of Defendant's affirmative defenses. (Pl.'s Moving Br. 15.) Accordingly, Plaintiffs motion to
strike is denied as to affirmative defenses two, four, five, six, seven, and nine.
Plaintiff argues that the remaining contested affirmative defenses-the first, third,
eleventh, fifteenth, and sixteenth defenses-should be stricken as a matter oflaw. The Court agrees
with regard to Defendant's sixth affirmative defense, laches, only. "An affirmative defense is
insufficient as a matter of law if it cannot succeed under any circumstance." In re Gabapentin
Patent Litig., 648 F. Supp. 2d 641, 647-48 (D.N.J. 2009). Laches, as a defense is generally
unavailable where there is an applicable statute oflimitations. Fox v. Millman, 210 N.J. 401, 422
(2012); Lavin v. Bd. of Educ. of City of Hackensack, 90 N.J. 145, 151 (1982) (Laches is "an
equitable defense that may be interposed in the absence of the statute oflimitations."); cf Petrella
v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962, 1974 (2014) (holding that, "in the face of statute
of limitations enacted by Congress, laches cannot be invoked to bar legal relief'). Here, Flex co' s
Complaint is based on breach of contract, which is subject to a six-year statute oflimitations. 7
Because there is an applicable statute of limitations that supersedes the doctrine of laches,
Plaintiffs motion to strike Defendant's sixth affirmative defense is granted. However, the Court
does not consider Plaintiffs first, eleventh, fifteenth, and sixteenth affirmative defenses to be
redundant, immaterial, impertinent, or scandalous matter, and therefore, Plaintiffs motion is
denied with respect to those affirmative defenses.
For the reasons discussed above, Plaintiffs motion to strike the sixth affirmative defense
is granted, and in all other respects, Plaintiffs motion to strike is denied.
"[R]ecovery upon a contractual claim ... shall be commenced within 6 years ... after the cause
of any such action shall have accrued." N .J. S.A. 2A: 14-1.
For the reasons set forth above, Plaintiffs motion to dismiss Defendant's counterclaim is
granted, and Plaintiffs motion to strike is granted in part and denied in part.
UNITED STATES DISTRICT JUDGE
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