Para Gear Equip. v. Square One Parachute, Inc., No. 04 C 601, Min. Order (N.D. Ill. Sep. 2, 2008) (Brown, Mag. J.)
Judge Brown granted defendants–counterplaintiffs Square One Parachute’s (“SOP”) motion for summary judgment that plaintiff–counterdefendant Para Gear (“Para”) infringed SOP’s design patent based solely upon Para’s failure to plead noninfringement as an affirmative defense. Originally, Para filed this case seeking a declaratory judgment of noninfringement and SOP counterclaimed for infringement. But Para later voluntarily dismissed its claim with prejudice.
When Para answered SOP’s counterclaim, it did not plead noninfringement as an affirmative defense. The Court held that Para’s declaratory judgment noninfringement claim was a sufficient affirmative statement of Para’s defense. But once Para dismissed its claim, Para’s pleadings did not support a noninfringement defense. It was not enough that Para’s answer denied infringement, an affirmative statement of the defense was required. And while Para had not sought to amend its papers to support its defense, the Court would not have granted leave to amend four years into the case.
Practice Tip: Always ask, at least in the alternative, for leave to amend when accused of pleading deficiencies. Even though it would not have worked here, it rarely hurts to ask.