Intelytics, Inc. v. Modiv Media, Inc. et al
Filing
27
ORDER granting in part and denying in part 15 Motion to Strike 10 Answer to Complaint, Counterclaim and to Dismiss Counterclaims or, in the alternative, for a More Definite Statement. So Ordered by Judge William E. Smith on 5/16/13. (Jackson, Ryan)
UNITED STATES DISTRICT COURT
DISTRICT OF RHODE ISLAND
___________________________________
)
)
)
Plaintiff,
)
v.
)
)
MODIV MEDIA, INC. and CATALINA
)
MARKETING CORPORATION,
)
)
Defendants.
)
___________________________________)
INTELYTICS INC.,
C.A. No. 12-636 S
ORDER
WILLIAM E. SMITH, United States District Judge.
On March 6, 2013, Plaintiff Intelytics Inc. filed a motion
to strike and/or dismiss various portions of Defendants Modiv
Media, Inc. and Catalina Marketing Corporation’s Answer.
(ECF
No.
more
15.)
In
the
definite statement.
alternative,
(Id.)
Plaintiff
moved
Court
affirmative
struck
defenses
Defendants’
(the
a
The Court heard arguments on May 6,
2013, and gave a partial ruling from the bench.
the
for
fifth,
former
two
Specifically,
sixth,
without
and
eighth
prejudice)
paragraphs seven and eight of Defendants’ counterclaim.
and
The
remaining issues were taken under advisement, and the Court now
rules as follows:
•
Plaintiff’s motion to strike paragraphs eleven, twelve,
fourteen,
nineteen,
twenty,
and
twenty-two
of
Defendants’ Answer is DENIED.
Supreme
Court’s
Genentech,
Inc.,
Both parties rely on the
decision
in
549
118,
U.S.
MedImmune,
124
Inc.
(2007),
v.
which,
Plaintiff concedes, found that the use of the phrase
“any valid claim” is acceptable if, when read in the
context of the entire pleading, the phrase’s meaning is
clear.
That is the situation presented here.
A full
and fair reading of Defendants’ Answer – including the
affirmative
defenses
and
Defendants’ intent obvious.
counterclaims
–
makes
As in MedImmune, Defendants
are arguing that the ‘889 Patent is invalid, but even if
the Patent or any part of it is deemed valid, Defendants
did not infringe it.
•
Plaintiff’s
motion
to
strike
Defendants’
second
affirmative defense for non-infringement is DENIED.
As
just explained, Defendants’ use of “any valid claim” has
a clear and obvious meaning when read in context.
This
is especially true considering the affirmative defense
is labeled “Non-Infringement” and the third affirmative
defense
located
on
the
same
page
is
entitled
“Invalidity.”
•
Plaintiff’s
motion
to
strike
Defendants’
affirmative defense for invalidity is DENIED.
cites
to
a
number
of
cases
2
which
find
third
Plaintiff
that
simply
asserting
invalidity
multiple
statutes,
insufficient.
and
basing
all
in
that
the
assertion
disjunctive,
on
is
See, e.g., Ferring B.V. v. Wastson Labs.,
Inc., Nos. 3:11-cv-00481-RCJ-VPC, 3:11-cv-00485-RCJ-VPC,
3:11-cv-00853-RCJ-VPC,
3:11-cv-00854-RCJ-VPC,
2012
WL
607539, at *3 (D. Nev. Feb. 24, 2012); TecSec, Inc. v.
Protegrity, Inc., No. CIVA2:01CV233, 2001 WL 802064, at
*2 (E.D. Va. June 27, 2001).
more than this.
statutes,
the
Defendants, however, do
In addition to listing the applicable
third
affirmative
defense
provides
a
patent and four United States Patent Publications as
support for the invalidity defense.
This satisfies the
requirement of Rule 8(c) of the Federal Rules of Civil
Procedure that affirmative defenses be “affirmatively
state[d].”
Fed.
R.
Civ.
P.
8(c).
Plaintiff
is
sufficiently on notice.
•
Plaintiff’s
motion
to
strike
Defendants’
fourth
affirmative defense for waiver, estoppel, and laches is
DENIED.
Defendants
have
“affirmatively
avoidance or affirmative defense.”
8(c).
state[d]
any
Fed. R. Civ. P.
Indeed, Plaintiff admitted that the issue is not
that Defendants do not put any allegations or factual
support into the defense, but rather that what they do
state does not add up to laches or any sort of waiver.
3
This argument, however, goes to whether the affirmative
defense
will
be
successful
properly pleaded.
Defendants
level
not
whether
it
is
Plaintiff may be entirely correct and
may
discovery.
and
end
up
dropping
this
defense
after
But at this stage of the proceedings, the
of
detail
and
proof
Plaintiff
seeks
is
not
required.
•
Plaintiff’s
motion
to
dismiss
Defendants’
first
counterclaim for a declaratory judgment of invalidity is
DENIED.
Similar to its argument regarding the third
affirmative defense, Plaintiff contends that by listing
numerous
statutes,
conclusory.”
the
counterclaim
is
“wholly
The argument fails here as well.
Unlike
the cases cited by Plaintiff, where the counterclaims
only list the relevant statutory provisions, Defendants’
counterclaim also adds the following clause:
“because,
for example, they are anticipated or rendered obvious at
least
by
U.S.
Publication
Patent
No.
Nos.
6,014,638
and
2002/0178091,
U.S.
Patent
2004/0181466,
2004/0249717, and 2006/0143067 and/or other art, either
alone or in combination.” This added phrase provides the
necessary
invalidity,
factual
support
readily
for
Defendants’
distinguishes
claim
of
Defendants’
counterclaim from the cited cases, and satisfies Rule
4
8(a)’s requirement of “a short and plain statement of
the
claim
relief.”
•
showing
that
the
pleader
is
entitled
to
Fed. R. Civ. P. 8(a). 1
Plaintiff’s
motion
counterclaim
to
for
a
dismiss
Defendants’
declaratory
judgment
second
of
non-
infringement is GRANTED without prejudice to Defendants.
The ‘889 Patent is publicly available and is attached to
the
Complaint.
Defendants,
allegedly-infringing
product,
as
are
inventors
in
as
of
good
the
of
a
position as anybody, if not in a better position, to
evaluate whether or not they are infringing upon the
‘889 Patent.
infringement,
Plaintiff’s
The determinative information regarding
therefore,
possession,
is
and
not
thus
solely
the
information and belief” is inappropriate.
use
within
of
“on
See, e.g.,
Menard v. CSX Transp., Inc., 698 F.3d 40, 44 (1st Cir.
2012); Kowal v. MCI Commc’ns Corp., 16 F.3d 1271, 1279
n.3 (D.C. Cir. 1994).
used
the
phrase
Defendants’ argument that they
because
they
were
uncertain
what
Plaintiff was basing its claim on is not persuasive.
1
The parties dispute whether the heightened pleading
standard announced in Bell Atlantic Corp. v. Twombly, 550 U.S.
544 (2007), and Ashcroft v. Iqbal, 556 U.S. 662 (2009), applies
to patent counterclaims.
The Court need not decide this issue
because the counterclaim as pleaded provides sufficient facts to
meet Twombly and Iqbal’s plausibility requirement.
5
For Defendants’ non-infringement counterclaim to pass
muster under Rule 8, Defendants cannot merely speculate
but must provide some factual support for their position
that they are not infringing on the Patent. 2
IT IS SO ORDERED.
/s/ William E. Smith
William E. Smith
United States District Judge
Date: May 16, 2013
2
Plaintiff
also
challenges
the
validity
of
this
counterclaim due to the use of the phrase “any valid claim.”
The Court rejects that argument for the same reasons already
discussed in the answer and affirmative defense contexts.
6
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