VitalGo, Inc. v. Kreg Therapeutics, Inc., No. 16 C 5577, Slip Op. (N.D. Ill. Dec. 21, 2017) (Dow, J.).

Judge Dow granted in part defendants’ (collectively “Kreg”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s (collectively “VitalGo”) claims and Fed. R. Civ. P. 12(f) motion to strike portions of its complaint in this copyright and Lanham Act suit involving VitalGo’s Total Lift Beds and Catalyst Beds. The Court also denied Kreg’s motion to stay discovery pending resolution of its motion.

Motion to Strike

The Court struck those allegations in VitalGo’s complaint that had “no apparent relevance” to its Catalyst Bed-related complaints, but did relate solely to legal theories previously dismissed from suit. Allowing VitalGo’s unrelated allegations to remain would “confuse” the issues and prejudice Kreg. The Court did, however, refuse to strike paragraphs related to the prior claims that provided context regarding the parties’ relationship, the TOTAL LIFT BED marks at issue, and VitalGo’s copyrighted works.

Motion to Dismiss

  1. Fed. R. Civ. P. 12(g)

Kreg’s motion was not barred pursuant to Rule 12(g) by the filing of its earlier motion to dismiss for two reasons:

  • The claims made in the instant motion were not available to Kreg until after the Court ruled on the initial motion to dismiss because they are premised upon the removal of the stricken allegations, which were struck based only upon the Court’s order dismissing certain claims.
  • The Seventh Circuit has held that Rule 12(g)(2) does not bar a successive motion to dismiss.
  1. Judicial Estoppel

Judicial estoppel did not bar Kreg’s motion. Kreg’s prior arguments were focused upon legal defenses, as opposed to the sufficiency of VitalGo’s allegations. The Court also had not previously decided whether Rule 9(b) applied to the allegations.

  1. Unfair Competition Claims Sounding in Fraud

While district courts in the Seventh Circuit split on whether Rule 9(b) pleading is required for unfair competition Lanham Act and related state law claims, the Court held that Rule 9(b) heightened pleading was required as to VitalGo’s claims because they sounded in fraud. Because VitalGo gave “the headline of the newspaper story, but not its ‘first paragraph,’” the claims were dismissed.

  1. Trademark & Copyright Infringement

VitalGo sufficiently pled its infringement claims by pleading ownership, knowledge and infringement for copyright, and ownership and likelihood of confusion as to VitalGo’s trademarks.