STC.UNM v. Intel Corporation

Filing 169

MOTION to Strike 162 Answer to Counterclaim and Answer to Complaint - Plaintiff's Motion to Strike Intel's Affirmative Defense Nos. 1, 3, 6, 9 & 10 and to Dismiss Intel's Second Counterclaim by STC. UNM. (Attachments: # 1 Exhibit A, # 2 Exhibit B)(Pedersen, Steven) Modified text on 1/9/2012 (vh).

UNITED STATES DISTRICT COURT
DISTRICT OF NEW MEXICO

STC.UNM,
Plaintiff,
Civil No. 1:10-cv-01077-RB-WDS
v.
INTEL CORPORATION,
Defendant.

Plaintiff's Motion to Strike Intel's Affirmative Defense Nos. 1, 3, 6, 9 & 10 and to Dismiss
Intel's Second Counterclaim
I.

INTRODUCTION
Plaintiff in the afore-captioned matter, STC.UNM ("STC") hereby moves pursuant to

Fed. R. Civ. P. 12(f)(2) to strike the Third Affirmative Defense, and, pursuant to Fed. R. Civ. P.
12(b)(6), to dismiss the Second Counterclaim asserted by the defendant, Intel Corp. ("Intel") in
this matter.

Therein, Intel has asserted a laundry list of statutory provisions related to

patentability, providing no notice to STC as to what Intel truly intends to assert in this matter.
See Crystal Photonics, Inc. v. Siemens Medical Solutions USA, Inc., Civ. No. 6:11-cv-1118,
Order (M.D. Fla. Dec. 21, 2011) [ECF No. 22] (Ex. A) at 1. Intel has thus failed to satisfy the
pleading requirements of Fed. R. Civ. P. 8.
II.

DISCUSSION
A.

Intel's Pleadings are Deficient

In response to STC's claim for patent infringement in the afore-captioned matter, Intel
has asserted, inter alia, that the claims of the '998 patent are invalid for a host of reasons.
Specifically, Intel has asserted by way of its Third Affirmative Defense that "[t]he '998 patent is

invalid by reason of having been issued in violation of U.S. patent laws, including but not
limited to 35 U.S.C. §§ 101, 102, 103, 111, 112, 115, or 256, or judicially created doctrines of
invalidity, and the Rules and Regulations of the United States Patent and Trademark Office
("PTO") relating thereto." Intel Corporation's First Amended Answer and Second Amended
Counterclaims to STC.UNM's Complaint (Dec. 7, 2011) [ECF No. 162] at 2 (emphasis added).1
Similarly, Intel's Second Counterclaim seeks a declaration that the '998 patent "is invalid
for failure to comply with the requirements of patentability set forth in 35 U.S.C. §§101 et seq."
Id. at 12. Thus, Intel has failed to provide any notice as to the true bases of its invalidity charge
– either in the form of its affirmative defense or its counterclaim.
Pleadings must serve as something more than a placeholder for potential claims and
defenses. Crystal Photonics, Inc. v. Siemens Medical Solutions USA, Inc., Civ. No. 6:11-cv1118, Order (M.D. Fla. Dec. 21, 2011) [ECF No. 22] (Ex. A) at 2. Conclusory allegations such
as those offered up by Intel do not put anyone on notice, as they do not suggest that Intel actually
intends to pursue them. Id. If anything, they conceal potentially meritorious counterclaims and
affirmative defenses in a "sea of irrelevancies." Id.
In Crystal Photonics, the court struck an affirmative defense that read that the claims in
suit "are invalid for failing to comply with one or more of the conditions for patentability as set
forth in Title 35 of the United States Code, including, without limitation, 35 U.S.C. § 101, 102,
103 and/or 112." Id. (striking all affirmative defenses); and Crystal Photonics, Inc. v. Siemens
Medical Solutions USA, Inc., Civ. No. 6:11-cv-1118, Answers, Defenses, and Counterclaims of
Defendant/ Counterclaim Plaintiff Siemens Medical Solutions USA, Inc. (M.D. Fla. Nov. 10,
2011) [ECF No. 14] (Ex. B) at 5 (Third Defense). Not surprisingly, then, a counterclaim
1

Counsel for Intel suggested that STC should refer to Intel’s interrogatory answers for the details
of these defenses, but the interrogatory answers do not address 35 U.S.C. § 101, 111, 115 or 256.
2

asserting invalidity under 35 U.S.C. §§ 101, et seq. is insufficiently pled. Cleversafe, Inc. v.
Amplidata, Inc., 2011 U.S. Dist. LEXIS 145995 at *6-7 (N.D. Ill. Dec. 20, 2011).
This Court has considered the question of pleading sufficiency for affirmative defenses in
Lane v. Page, 272 F.R.D. 581 (D.N.M. Jan. 14, 2011). The question addressed by this Court in
Lane was whether the heightened pleading standard for plaintiffs set out by the Supreme Court in
Bell Atlantic v. Twombly, 550 U.S. 544 (2007), and Ashcroft v. Iqbal, 556 U.S. 662, 129 S. Ct.
1937 (2009) should be extended to affirmative defenses. Lane, 272 F.R.D. at 589-90. The Court
acknowledged that the majority of jurisdictions considering this question have opted to apply
that pleading standard to affirmative defense. Id.
Nonetheless, this Court determined to follow the minority rule exempting affirmative
defenses from the heightened pleading requirement, given the difference in wording between
Fed. R. Civ. P. 8(a) and (b) on the one hand, and Fed. R. Civ. P. 8(c), on the other hand. Id. at
592. Specifically, the Court noted the "short and plain statement" requirement of Rule 8(a), the
"short and plain terms" requirement of Rule 8(b), and an absence of a corresponding requirement
in Rule 8(c) governing affirmative defenses. Id., quoting First Nat'l Ins. Co. of Am. v. Camps
Servs., 2009 U.S. Dist. LEXIS 149 (E.D. Mich. Jan. 5, 2009).
It is indisputable that the purpose of Rule 8(c) is to provide notice to a plaintiff of any
unanticipated defenses. Yellen v. Cooper, 828 F.2d 1471, 1476 (10th Cir. 1987). Irrespective of
whether Rule 8(c) requires the same degree of factual specificity as Fed. R. Civ. P. 8(a) & (b),
something in the listing of affirmative defenses must put the plaintiff on notice as to which
defenses the defendant actually intends to maintain. Notwithstanding this Court's holding in
Lane, a wholesale listing of statutory provisions as affirmative defenses cannot satisfy the notice
requirement of Rule 8(c), as the courts in Crystal Photonics and Cleversafe ruled.

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Further, the decision in Lane would not inform as to the sufficiency of Intel's invalidity
counterclaim, which would be subject to heightened pleading requirements, given the wording
of Fed. R. Civ. P. 8(a), pursuant to which such counterclaim was filed, and which requires "a
short and plain statement of the claim showing that the pleader is entitled to relief."
B.

Fed. R. Civ. P. 12(g) Does Not Bar The Instant Motion

Pursuant to Fed. R. Civ. P. 12(g)(2), "[e]xcept as provided in Rule 12(h)(2) or (3), a party
that makes a motion under this rule must not make another motion under this rule raising a
defense or objection that was available to the party but omitted from its earlier motion." It is true
that STC has filed an earlier motion to dismiss Intel's counterclaim for inequitable conduct. See
STC.UNM's Motion to Dismiss Intel's Amended Counterclaim and Strike Intel's Affirmative
Defense for Unenforceability (Feb. 28, 2011) [ECF No. 45].
However, courts faced with successive motions to dismiss "often exercise their discretion
to consider the new arguments in the interests of judicial economy." See, e.g., Amaretto Ranch
Breedables, LLC v. Ozimals, Inc., 2011 U.S. Dist. LEXIS 73853 at 6, n. 1 (N.D. Cal., July 8,
2011), citing Nat. City Bank, N.A. v. Prime Lending, Inc., 2010 U.S. Dist. LEXIS 85888 (E.D.
Wash. July 19, 2010) (emphasis added). The two decisions cited by STC herein, Crystal
Photonics and Cleversafe, were both decided within the last few weeks, and were obviously not
available when Intel filed its earlier affirmative defenses and counterclaims. This Court should
use its discretion in the name of judicial economy to consider these new decisions, and STC's
arguments based thereon, notwithstanding STC's earlier motion to dismiss a completely different
counterclaim and affirmative defense.
Further, by the plain language thereof, Rule 12(g)(2) allows for a successive motion filed
pursuant to Fed. R. Civ. P. 12(h)(2)(B), which, in turn, references Fed. R. Civ. P. 12(c). That

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latter, rule, in turn, provides that, "[a]fter the pleadings are closed—but early enough not to delay
trial—a party may move for judgment on the pleadings." Thus, a party in STC's position could
simply file a motion pursuant to Rule 12(c), as the court in National City Bank recognized:
Judicial economy favors ignoring the motions' technical deficiencies. Rule 12(g)
merely prohibits them from raising it before filing an answer because they did not
raise it in their initial response under Rule 12(b). Plaintiffs do not dispute that
Defendants would simply be able to renew their motion as a Rule 12(c) motion
for judgment on the pleadings after filing an answer. The Court declines to pass
on this opportunity to narrow the issues because Defendants are entitled to raise
these defenses even if they already filed a motion to dismiss. Nor do the motions
result in prejudice or surprise. The Court finds good cause to consider them now.
Nat. City Bank, N.A. v. Prime Lending, Inc., 2010 U.S. Dist. LEXIS 85888 at *6 (E.D.Wash. July
19, 2010).
Thus, despite any "technical difficulties" the instant motion may have, the Court should
avail itself of this opportunity to jettison any invalidity defenses and counterclaims that Intel
simply has no intent of pursuing.
III.

CONCLUSION
Given Intel's complete lack of notice regarding the invalidity defenses it actually intends

to maintain, the appropriate remedy is to dismiss Intel's Third Affirmative Defense, as well as its
Second Counterclaim.

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Dated: January 4, 2012

Respectfully submitted,
/s/ Steven R. Pedersen
Rolf O. Stadheim
Joseph A. Grear
George C. Summerfield
Keith A. Vogt
Steven R. Pedersen
STADHEIM & GREAR, LTD.
400 N. Michigan Ave., Ste. 2200
Chicago, Illinois 60611
[phone]

Deron B. Knoner
KELEHER & MCLEOD, P.A.
201 Third Street NW, 12th Floor
PO Box AA
Albuquerque, New Mexico 87103
[phone]

Attorneys for Plaintiff STC.UNM
Certificate of Conference: The undersigned conferred with counsel for Intel regarding the relief
requested herein and was informed that Intel objects to the motion. /s/ Steven R. Pedersen
Certificate of Service: I hereby certify that on January 4, 2012, I caused the foregoing to be
electronically filed with the Clerk of the Court using the CM/ECF system which will send
notification of such filing via electronic mail to all counsel of record. /s/ Steven R. Pedersen

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