12(f)

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TWD, LLC v. Grunt Style LLC, No. 18 C 7695, Slip Op. (N.D. Ill. Oct. 23, 2019) (Kocoras, J.).

Judge Kocoras granted in part defendant-counterclaimant Grunt Style’s Fed. R. Civ. P. 12(c) motion for judgment on the pleadings and granted Grunt Style’s Fed. R. Civ. P. 12(f) motion to strike plaintiff-counterdefendant TWD’s affirmative defenses…

Judge Guzman granted in part plaintiffs’ (collectively “Persis”) Fed. R. Civ. P. 12(f) motion to strike defendant Burgett’s affirmative defenses in this Lanham Act case involving the mark SOHMER. The Court struck those affirmative defenses that just restated the legal standards – failure to state a claim and estoppel.
The Court allowed Burgett’s statute of limitations defense because Burgett sufficiently pled that Persis had delayed more than the required three years in bringing its action.
Finally, the Court dismissed three affirmative defenses based upon an allegedly fraudulent document submitted to the Patent and Trademark Office. Burgett admitted that the allegedly fraudulent document was submitted in a separate application. And Burgett offered no reason that the other application was relevant to this case.
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Continue Reading Affirmative Defenses Must Meet Pleading Requirements

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.
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Continue Reading Affirmative Defense Struck for Insufficient Pleading

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.
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Continue Reading Bald Statement of Patent Misuse Does Not Meet Pleading Standards

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.Continue Reading Liberal Pleading Standards Preserve a Claim for Copyright Infringement Profits

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.Continue Reading Inequitable Conduct Summary Judgment & Reading the Federal Rules