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.