Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

MPC Containment Sys., Ltd. v. Moreland, No. 05 C 6973, 2008 WL 1775501 (N.D. Ill. Apr. 17, 2008) (Aspen, J.).*

Judge Aspen granted in part plaintiff MPC Containment's ("MPC") Fed. R. Civ. P. 12(f) motion to strike defendants' (collectively "Moreland") waiver and unclean hands defenses. The Court struck Moreland's unclean hands defense. Moreland alleged unclean hands based upon MPC’s allegedly fraudulent procurement of a patent related to the flexible tank technology at issue. But the Court held that Moreland failed to show that MPC's alleged fraud was somehow directed at Moreland. Furthermore, while the patented technology is related to the technology in suit, MPC's alleged misconduct in obtaining the patent had no connection to this suit.

The Court, however, allowed Moreland’s waiver defense. Moreland did not specifically plead that MPC voluntarily relinquished its rights to the claims in suit. But it was sufficient that voluntary relinquishment could be inferred from the pleadings.

*  Click here for more on this case in the Blog's archives.

• Email This
• Print
• Comments
• Trackbacks

Ortho-Tain, Inc. v. Rocky Mountain Orthodontics, Inc., No. 05 C 6656, 2007 WL 1238917 (N.D. Ill. Apr. 25, 2007) (Leinenweber, J.).

Judge Leinenweber granted plaintiff's Fed. R. Civ. P. 12(f) motion to strike, dismissing without prejudice defendants' respective patent misuse affirmative defenses and all patent-related statements in defendants' counterclaims.  Plaintiff, Ortho-Tain ("OT"), sued Rocky Mountain Orthodontics ("RMO") and Planmeca Oy ("Planmeca") alleging that RMO breached the distributorship agreement between the OT and RMO.  Pursuant to the Agreement, OT manufactured dental appliances (allegedly covered by OT's patents) and RMO sold those appliances in France.  RMO allegedly breached the Agreement by sourcing equivalent dental appliances from Planmeca.  RMO counterclaimed for, among other things, declaratory judgment of noninfringement and unenforceability of OT's relevant United States patents.  The Court previously dismissed defendants' patent-related declaratory judgment counterclaims for lack of subject matter jurisdiction.  OT now argues that the Court should strike RMO's and Planmeca's respective patent misuse affirmative defenses because they are insufficient.  The Court first held that patent misuse was a proper affirmative defense, negating the first prong of a Rule 12(f) analysis. 

But neither RMO nor Planmeca met their Fed. R. Civ. P. 8 notice pleading obligations as to the defense.  RMO's and Planmeca's statement of their defenses were identical:  "[OT's] claims are barred by the doctrine of patent misuse."  The defense pled no facts and failed to identify which of OT's "many patents" were allegedly misused.  The Court, therefore, dismissed the affirmative defenses without prejudice.  And because the defenses were not well pled, the Court did not address the third prong of a Rule 12(f) analysis -- whether the defense could withstand a Fed. R. Civ. P. 12(b)(6) motion to dismiss.  The Court also briefly looked at whether Rule 8 notice pleading or Fed. R. Civ. P. 9(b) heightened pleading was required for a patent misuse defense, noting that at least one court had used Rule 9(b) pleading, but did not reach the issue, as the defenses did not meet the Rule 8 standard.

• Email This
• Print
• Comments
• Trackbacks

DeVore Family Partnership LLP v. McDougal Littell, No. 06 C 3484, 2006 WL 2861116 (N.D. Ill. Sept. 26, 2006) (Conlon, J.).

Judge Conlon refused to dismiss or strike plaintiff's claim for defendants' profits from sales of a textbook which allegedly included plaintiff's copyrighted photograph.  Plaintiff alleged that it licensed defendants to include plaintiff's photograph of the Himalaya Mountains in a run of no more than 40,000 textbooks, but that defendants made almost 1.5 million copies of the book.  Plaintiff sought, among other things, defendants' profits from the allegedly infringing textbooks.

Defendants argued that the claim for profits should be dismissed or struck because plaintiff could not show that defendants' profits were attributable to the use of a two inch square copy of plaintiff's copyrighted picture on a single page of the 1,254 page textbook.  The Court ruled that dismissing plaintiff's claim for profits would violate the liberal notice pleading standard, Fed. R. Civ. P. 8(a).  The Court acknowledged that profits are only available if plaintiff establishes that the profits are attributable to the infringement, but held that discovery was required to make that determination.

Defendants also sought to strike the claim for profits from the Complaint pursuant to Fed. R. Civ. P. 12(f).  The Court denied the request, noting that motions to strike are "generally disfavored" and that in order to grant a motion to strike a claim, a court would have to find that the claim was so unrelated to the Complaint that it was meritless and not worthy of any consideration.  Because the claim for profits survived the motion to dismiss, it did not meet the standard for a motion to strike.  I suspect that in the vast majority of cases, when the same claim is the subject of a combined motion to dismiss and to strike, if the motion to dismiss fails it follows that the motion to strike fails.  Having said that, however, I am curious to know whether anyone is aware of a case denying a motion to dismiss a claim, but granting a motion to strike the same claim.  If anyone has seen the case, post a comment or send me an email at chicagoiplitigation@yahoo.com.

• Email This
• Print
• Comments
• Trackbacks

Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 2088437 (N.D. Ill. July 24, 2006) (St. Eve, J.).

Judge St. Eve denied plaintiff, Black & Decker’s (“B&D”) summary judgment motion on defendant Bosch’s inequitable conduct defense. While prosecuting various applications related to a rugged jobsite radio and charger (the “Smith patents”), B&D became aware of inventor Joseph Domes’s similar applications, which later matured into the patents-in-suit. To avoid a possible interference, B&D licensed Domes’s applications (the “Domes patents”) and ultimately became the exclusive licensee of the two Domes patents.

During prosecution, B&D identified the Domes patents to the Examiner of the Smith patents. B&D failed, however, to raise the Smith patents with the Examiner of the Domes patents, despite having the right to suggest changes to or comment upon documents filed with the PTO during prosecution of the Domes patents.

B&D argued that the Smith patents were not material to patentability because the Examiner of the Smith patents did not rely upon the Domes patents. But the Court found a question of material fact as to whether the Domes and Smith patents shared subject matter. B&D also argued that there was no intent to deceive the PTO because Domes prosecuted the patents and was not aware of the Smith patents. The Court found a question of fact on this point also because B&D had the ability to comment on filings during Domes’s prosecution of his patents and because the license agreement between Domes and B&D may have put him on notice of the Smith patents. Finally, the Court found a question of fact as to whether B&D intended to deceive the PTO because B&D purchased exclusive rights to the Domes patents more than one year before the last of the Domes patents issued, and could have disclosed the Smith patents during that year.

On another procedural note, make sure to know the time limits set forth in the Federal Rules. The Court struck B&D’s motion to strike Bosch’s inequitable conduct defense for failure to state a claim because B&D failed to file the motion within twenty days of receiving the Answer, as required by Fed. R. Civ. P. 12(f).

• Email This
• Print
• Comments (1)
• Trackbacks