Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA686212
`ESTTA Tracking number:
`07/28/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91222103
`Defendant
`Disney Enterprises, Inc.
`LINDA K MCLEOD
`KELLY IP LLP
`1919 M ST, NWSUITE 610
`WASHINGTON, DC 20036
`UNITED STATES
`linda.mcleod@kelly-ip.com, david.kelly@kelly-ip.com, DisneyOpp@kelly-ip.com,
`Docketing@kelly-ip.com
`Opposition/Response to Motion
`Linda K. McLeod
`Linda.McLeod@kelly-ip.com, DisneyOpp@kelly-ip.com, docketing@kelly-ip.com
`/Linda K. McLeod/
`07/28/2015
`Opposition to Motion to Strike.pdf(318674 bytes )
`
`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
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`AUDEMARS PIGUET HOLDINGS S.A.,
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`Opposition No. 91222103
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` Opposer
`
` v.
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`DISNEY ENTERPRISES, INC.,
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` Applicant.
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`
`
`
`
`App. No. 86380278
`Application Date: August 28, 2014
`Mark: GOLDEN OAK
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`
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`
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`APPLICANT’S OPPOSITION TO OPPOSER’S MOTION TO STRIKE
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`Disney Enterprises, Inc. (“Applicant” or “Disney”) submits the following
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`Opposition to Audemars Piguet Holdings S.A.’s (“Opposer” or “Audemars Piguet”)
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`Motion to Strike filed on July 9, 2015 (“Motion”).
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`As detailed below, Applicant’s answer contains short and plain straight-forward
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`denials and affirmative allegations that are allowed under Fed. R. Civ. P. 8(c). Rather
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`than identifying any harm or prejudice to Opposer by Applicant’s straight-forward
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`answer and affirmative allegations, Opposer filed a motion to strike Applicant’s
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`affirmative allegations. Opposer’s Motion should be summarily denied as a baseless
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`litigation tactic aimed at delaying the proceedings. See 5 Write & Miller, Federal
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`Practice and Procedure § 1380 (3d ed.) (stating that motions to strike pleadings are a
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`“drastic remedy and because it often is sought by the movant simply as a dilatory or
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`[harassing] tactic, [and therefore] numerous judicial decisions make it clear that motions
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`under Rule 12(f) are viewed with disfavor by the federal courts and are infrequently
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`granted.”).
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`1
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`

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`ARGUMENT
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`Motions to strike are not favored, and matter will not be stricken unless it clearly
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`has no bearing upon the issues in the case. See Ohio State Univ. v. Ohio Univ., 51
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`USPQ2d 1289, 1292 (TTAB 1999); Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d
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`1570, 1571 (TTAB 1988). The Board may decline to strike even objectionable pleadings
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`where their inclusion will not prejudice the adverse party, but rather will provide fuller
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`notice of the basis for a claim or defense. See, e.g., Order of Sons of Italy in America v.
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`Profumi, 36 USPQ2d 1221, 1223 (TTAB 1995) (amplification of applicant’s denial of
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`opposer’s claims not stricken).
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`In this case, Opposer seeks to strike Applicant’s affirmative allegation that:
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`Disney reserves all affirmative defenses under Rule 8(c) of the Federal
`Rules of Civil Procedure, the Lanham Act, and any other defenses at law
`or in equity, that may now exist or in the future be available based on
`discovery and further factual investigation in this case.”
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`Contrary to Opposer’s argument, Applicant’s affirmative allegation is not an
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`“affirmative defense,” but rather an affirmative allegation giving Opposer fair notice that
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`Applicant may in the future move the Board under Fed. R. Civ. P. 15 to amend its
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`answer to include affirmative defenses if, during discovery, facts are discovered that
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`support such defenses. Other courts have allowed such affirmative allegations, and
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`denied motions to strike them, particularly where the defendant recognizes the
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`constrains of Fed. R. Civ. P. 15. See Wi3, Inc. v. Actiontec Electronics, Inc., 71
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`F.Supp.3d 358 (W.D.N.Y. 2014) (denying plaintiff’s motion to strike reservation of
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`defenses clause, which provided that alleged infringer of patent reserved all affirmative
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`defenses at law or in equity that “may now exist or in the future be available based on
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`discovery and further factual investigation”) (attached as Exhibit A); Conoco Phillips
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`2
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`

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`Pipe Line Co. v. Rogers Cartage Co., 2012 WL 1231998, * 4 (S.D. Ill 2012) (denying to
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`strike defendant's “statement that it reserves the right to raise additional affirmative
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`defenses” because the reservation would not prejudice the plaintiff) (attached as Exhibit
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`B); Gruenberg v. Bittleman, 2014 WL 3736497, *4 (W.D. Wis. 2014) (“Affirmative
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`defenses [. . .] are protected by the direction of Rule 15(a)” and thus a “reservation of
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`rights [clause] is not patently defective and will not be stricken.”) (attached as Exhibit C);
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`Bartram, LLC v. Landmark American Ins. Co., 2010 WL 4736830, *1 (N.D. Florida 2010)
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`(denying motion to strike the reservation of right to add affirmative defenses because
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`defendant retains the right to seek leave of the court to amend defendant's pleading
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`under Fed. R. Civ. P. 15) (attached as Exhibit D).
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`Additionally, Opposer’s reliance on Kiko Foods, Inc. v. Land O’Lakes, Inc., 1996
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`TTAB LEXIS 87, (TTAB. June 6,1996), Patterson Enterprises d/b/a Suncare
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`Distributors, v. Selk, 2013 WL 6664933 (TTAB 2013), and other cases are inapposite.
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`In Patterson, applicant did not plead any affirmative allegations, but rather alleged that
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`opposer’s mark was “illegal” without any factual basis for the allegation. (Patterson at
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`*1). Applicant’s answer and affirmative allegations do not contain any such allegations.
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`Similarly, in Kiko Foods, the defendant’s answer contained broad allegations that the
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`plaintiff was “estopped from asserting the claims asserted in the Opposition” and “has
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`waived the claims asserted in the Opposition.” (Kiko Foods at *1-2). Here again,
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`Applicant’s answer does not contain any broad estoppel or waiver allegations. Thus,
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`the cases relied upon by Opposer have no bearing on this case or the instant Motion.
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`Finally, motions to strike affirmative allegations where the plaintiff cannot show
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`prejudice are routinely denied. See Conoco Phillips Pipe Line Co. v. Rogers Cartage
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`3
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`

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`Co., 2012 WL 1231998, * 4 (S.D. Ill 2012) (finding no prejudice where a defendant could
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`move to amend pleading ); Am. Chiropractic Ass’n v. Trigon Healthcare, Inc., 2001 WL
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`1180469, at *3 (W.D. Va. Oct. 3, 2001) (“Courts are reluctant to grant motions to strike
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`merely to “prune” the pleadings, especially when no prejudice has been shown by the
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`movant” and referring to such motions as “time wasters” when prejudice could not be
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`shown) (quoting Wright & Miller § 1382) (attached as Exhibit E). Opposer has not only
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`failed to show prejudice, but has not even argued that Applicant’s affirmative allegation
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`could prejudice Opposer. Here, Opposer’s Motion is clearly an unnecessary litigation
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`tactic, which wastes both the parties and the Board’s time and resources. Accordingly,
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`the Motion should be denied on that ground alone.
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`CONCLUSION
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`For the foregoing reasons, Applicant respectfully requests that the Board deny
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`Opposer’s Motion to Strike.
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`Dated: July 29, 2015
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`Respectfully submitted,
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` /Linda K. McLeod/
`Linda K. McLeod
`linda.mcleod@kelly-ip.com
`David M. Kelly
`david.kelly@kelly-ip.com
`KELLY IP, LLP
`1919 M St. NW
`Suite 610
`Washington, D.C. 20036
`Telephone: (202) 808-3570
`Facsimile:
`(202) 354-5232
`
`Attorney for
`Disney Enterprises, Inc.
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`4
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`CERTIFICATE OF SERVICE
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`I certify that a true and correct copy of the foregoing APPLICANT’S
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`OPPOSITION TO OPPOSER’S MOTION TO STRIKE was served by first class
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`mail, postage prepaid, on July 29, 2015, upon Audemars Piguet’s counsel of
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`record at the following correspondence address of record:
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`John A. Galbreath
`Galbreath Law Offices, P.C.
`2516 Chestnut Woods Ct.
`Reisterstown, MD 21136-5523
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`
`
`/Larry L. White/
`Larry L. White
`Litigation Case Manager
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`5
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`
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`EXHIBIT A
`EXHIBIT A
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`

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`Wi3, Inc. v. Actiontec Electronics, Inc., 71 F.Supp.3d 358 (2014)
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`71 F.Supp.3d 358
`Only the Westlaw citation is currently available.
`United States District Court,
`W.D. New York.
`
`WI3, INC., Plaintiff,
`v.
`ACTIONTEC ELECTRONICS, INC., Defendant.
`
`No. 14–CV–6321 EAW.
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` | Signed Nov. 21, 2014.
`
`Synopsis
`Background: Owner of patent directed to single medium wiring scheme for multiple signal distribution filed infringement
`action against competitor that made and sold network adapters or extenders. Competitor counterclaimed seeking declaratory
`judgments of non-infringement and invalidity of patent. Patent owner moved to dismiss invalidity counterclaim and to strike
`portion of competitor's answer.
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`Holdings: The District Court, Elizabeth A. Wolford, J., held that:
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`[1] invalidity counterclaim was not sufficiently alleged;
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`[2] reservation of defenses clause in answer would not be stricken; and
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`[3] motion to amend answer was procedurally improper.
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`Motion granted in part and denied in part.
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`West Headnotes (10)
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`[1]
`
`Federal Civil Procedure
`A motion to dismiss counterclaims is governed by the standard for determining a motion to dismiss for failure to state
`a claim upon which relief can be granted. Fed.Rules Civ.Proc.Rule 12(b)(6), 28 U.S.C.A.
`
`Counterclaim
`
`Cases that cite this headnote
`
`[2]
`
`Federal Civil Procedure
`Counterclaims must meet the requirements of the notice pleading rule. Fed.Rules Civ.Proc.Rule 8(a), 28 U.S.C.A.
`
`Sufficiency of Counterclaims
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`Cases that cite this headnote
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`[3]
`
`Federal Civil Procedure
`Federal Civil Procedure
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`Motion not favored
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`Affirmative Defense or Avoidance
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
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`

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`Wi3, Inc. v. Actiontec Electronics, Inc., 71 F.Supp.3d 358 (2014)
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`[4]
`
`[5]
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`A motion to strike an affirmative defense from an answer, due to legal insufficiency, is not favored, and district court
`will not strike an affirmative defense unless the moving party can establish that the defense is totally insufficient as
`a matter of law. Fed.Rules Civ.Proc.Rule 12(f), 28 U.S.C.A.
`
`Cases that cite this headnote
`
`Federal Civil Procedure
`A motion to strike an affirmative defense from an answer is committed to the district court's discretion. Fed.Rules
`Civ.Proc.Rule 12(f), 28 U.S.C.A.
`
`Affirmative Defense or Avoidance
`
`Cases that cite this headnote
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`Counterclaims
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`Patents
`Alleged infringer of patent directed to single medium wiring scheme for multiple signal distribution failed to
`sufficiently allege counterclaim for invalidity of patent, although alleged infringer argued that counterclaim was
`consistent with federal rules of civil procedure form governing complaints for patent infringement, since alleged
`infringer made only barebones allegations that patent was invalid for failure to comply with particular sections of
`patent law, and form applied only to direct infringement claims, not invalidity claims. 35 U.S.C.A. §§ 101, 102, 103,
`112.
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`Cases that cite this headnote
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`[6]
`
`Patents
`A counterclaim for invalidity of a patent must contain the minimal factual allegations required to show plausibility.
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`Counterclaims
`
`Cases that cite this headnote
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`[7]
`
`[8]
`
`[9]
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`Counterclaims
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`Patents
`A declaration that a statute has been violated, standing alone, is insufficient to meet the standard for stating a
`counterclaim for invalidity of a patent.
`
`Cases that cite this headnote
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`Grounds
`
`Federal Civil Procedure
`To the extent that a reservation of defenses clause in an answer seeks to reserve the unilateral right to add new and
`different affirmative defenses as they become known to defendant at indeterminate times in the future, it is improper
`and inconsistent with rule governing amendment of pleadings; however, to the extent that the clause seeks only to
`reserve the right to seek leave to amend, the clause should not be stricken even though the language of the reservation is
`imprecise, because defendant retains the right to seek leave of the court to amend the answer. Fed.Rules Civ.Proc.Rule
`15, 28 U.S.C.A.
`
`Cases that cite this headnote
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`Motion to strike pleadings
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`Patents
`Reservation of defenses clause, providing that alleged infringer of patent reserved all affirmative defenses at law or in
`equity that “may now exist or in the future be available based on discovery and further factual investigation,” would
`not be stricken from alleged infringer's answer, since district court could not determine whether clause sought more
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`2
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`

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`Wi3, Inc. v. Actiontec Electronics, Inc., 71 F.Supp.3d 358 (2014)
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`than to simply reserve right to seek leave to amend answer should facts supporting additional affirmative defenses
`become known to alleged infringer. Fed.Rules Civ.Proc.Rules 12(f), 15, 28 U.S.C.A.
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`Cases that cite this headnote
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`[10]
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`Amended and supplemental pleadings
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`Patents
`Alleged infringer's cursory request for leave to amend answer was procedurally improper motion for leave to amend
`and failed to comply with local rules requiring movant to attach unsigned copy of proposed amended pleading as
`exhibit to motion and required identification of proposed amendments through word processing “redline” function or
`other similar markings, where alleged infringer's boilerplate request was made solely in memorandum in opposition
`to patent owner's motion to dismiss alleged infringer's invalidity counterclaim and lacked exhibit or markings for
`proposed amendments. Fed.Rules Civ.Proc.Rule 15, 28 U.S.C.A.; U.S.Dist.Ct.Rules W.D.N.Y., Civil Rule 15(a, b).
`
`Cases that cite this headnote
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`Attorneys and Law Firms
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`Ashley E. Lavalley, Timothy J. Haller Niro, Haller & Niro, Chicago, IL, for Plaintiff.
`
`Nicola Anthony Pisano, Scott Richard Kaspar, Foley & Lardner LLP, San Diego, CA, for Defendant.
`
`ELIZABETH A. WOLFORD, District Judge.
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`DECISION AND ORDER
`
`BACKGROUND
`
`Plaintiff Wi3, Inc. (“Plaintiff”) commenced the instant action on June 11, 2014, alleging that Defendant Actiontec Electronics,
`Inc. (“Defendant”) has infringed certain claims of United States Patent No. 6,108,331 (the ‘ “331 Patent”). (Dkt.1). Plaintiff
`alleges that it is the owner of the ′331 Patent, which is entitled “Single Medium Wiring Scheme for Multiple Signal Distribution
`in Building and Access Port Therefor,” and issued on August 22, 2000. (Dkt. 1 at ¶ 1). According to Plaintiff, Defendant
`has infringed “at least claims 26, 27, 29 and 30 of the ′331 Patent” by making and selling products known as Actiontec
`MoCA Network Adapters and/or Network Extenders. (Id. at ¶ 20). Defendant denies infringing the ′331 Patent and brings two
`counterclaims, one seeking a declaratory judgment of non-infringement of the ′ 331 Patent (Counterclaim 1) and one seeking
`a declaratory judgment of invalidity of the ′331 Patent (Counterclaim 2) (the “Invalidity Counterclaim”). (Dkt.13).
`
`On September 15, 2014, Plaintiff filed a motion asking the Court to dismiss Defendant's counterclaims and to strike the portion
`of Defendant's answer entitled “Reservation of Defenses.” (Dkt.17). Defendant filed its opposition to Plaintiff's motion on
`October 6, 2014. (Dkt.20). Plaintiff subsequently withdrew its request to dismiss Defendant's non-infringement counterclaim
`(Counterclaim 1) and filed an answer to that counterclaim only. (Dkt.21, 22). Plaintiff filed reply papers with respect to the
`remaining portions of its motion on October 20, 2014. (Dkt.23). For the reasons set forth below, Plaintiff's motion is granted
`with respect to the request to dismiss the Invalidity Counterclaim and denied with respect to the request to strike the portion
`of Defendant's answer entitled “Reservation of Defenses.”
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`3
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`

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`Wi3, Inc. v. Actiontec Electronics, Inc., 71 F.Supp.3d 358 (2014)
`
`I. Legal Standard
`
`DISCUSSION
`
`A. Motion to Dismiss
`[1]
` “A motion to dismiss counterclaims is governed by the well-known standard for determining a motion under Rule 12(b)(6)
`to dismiss for failure to state a claim upon which relief can be granted.” Excellus Health Plan, Inc. v. Tran, 287 F.Supp.2d 167,
`171 (W.D.N.Y.2003). In considering a motion to dismiss, a court generally may only consider “facts stated in the [pleading] or
`documents attached to the [pleading] as exhibits or incorporated by reference.” Nechis v. Oxford Health Plans, Inc., 421 F.3d
`96, 100 (2d Cir.2005). “In reviewing the motion to dismiss, all reasonable inferences must be drawn in the counterclaimant's
`favor.” Excellus Health Plan, 287 F.Supp.2d at 171.
`
`[2]
` “[C]ounterclaims must meet the pleading requirements of Rule 8(a), as interpreted by [Bell Atl. Corp. v. Twombly, 550
`U.S. 544, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ] and [Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937, 173 L.Ed.2d 868
`(2009) ], in order to survive a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6).” Erickson Beamon
`Ltd. v. CMG Worldwide, Inc., No. 12 CIV. 5105 NRB, 2014 WL 3950897, at *7 (S.D.N.Y. Aug.13, 2014); see also Gradient
`Enterprises, Inc. v. Skype Technologies S.A., 932 F.Supp.2d 447, 452 (W.D.N.Y.2013) (“[A] counterclaim of patent invalidity
`must be measured against the Twombly standard.”). Under Twombly and Iqbal, to withstand dismissal, a counterclaimant must
`set forth “enough facts to state a claim to relief that is plausible on its face.” Twombly, 550 U.S. at 570. “ ‘A claim has facial
`plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant
`is liable for the misconduct alleged.’ “ Turkmen v. Ashcroft, 589 F.3d 542, 546 (2d Cir.2009) (quoting Iqbal, 556 U.S. at 678);
`see also Nielsen v. Rabin, 746 F.3d 58, 62 (2d Cir.2014) ( “The plausibility standard is not akin to a probability requirement.
`A well-pleaded complaint may proceed even if it strikes a savvy judge that actual proof of the facts alleged is improbable, and
`that a recovery is very remote and unlikely.”) (citations and internal quotation marks omitted). A counterclaim attacked by a
`Rule 12(b) (6) motion “does not need detailed factual allegations,” but the counterclaimant must allege “more than labels and
`conclusions, and a formulaic recitation of the elements of a cause of action will not do.” Twombly, 550 U.S. at 555 (internal
`quotation marks and citations omitted).
`
`B. Motion to Strike
`[3]
` [4]
` Rule 12(f) of the Federal Rules of Civil Procedure provides that the Court “may strike from a pleading an insufficient
`defense or any redundant, immaterial, impertinent, or scandalous matter.” Fed.R.Civ.P. 12(f). However, a “motion to strike
`an affirmative defense under Rule 12(f) ... for legal insufficiency is not favored” and “the court will not strike an affirmative
`defense unless the moving party can establish that the defense is totally insufficient as a matter of law.” Resolution Trust Corp.
`v. Mass. Mut. Life Ins. Co., 93 F.Supp.2d 300, 303 (W.D.N.Y.2000). “A motion to strike is committed to the Court's discretion.”
`Britt v. Buffalo Mun. Rous. Auth., No. 06–CV–0057S(SR), 2008 WL 4501929, at *1 (W.D.N.Y. Sept.30, 2008).
`
`II. Plaintiff's Motion to Dismiss
`Plaintiff has moved for dismissal of the Invalidity Counterclaim on the grounds that it does not assert factual allegations
`sufficient to provide fair notice of the basis for the counterclaim. Defendant argues in opposition that the Invalidity Counterclaim
`is consistent with Form 18 of the Federal Rules of Civil Procedure and that it adequately sets forth the basis on which Defendant
`seeks relief.
`
`[5]
`
` The Invalidity Counterclaim provides in its entirety:
`
`13. Actiontec repeats and realleges Paragraphs 1–26 of its Answer, each of its Affirmative defenses, and Paragraphs 1–12
`of its Counterclaims as if fully set forth herein.
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
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`4
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`

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`Wi3, Inc. v. Actiontec Electronics, Inc., 71 F.Supp.3d 358 (2014)
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`14. By its Complaint, Wi3 asserts that the ′331 Patent is valid. Actiontec has denied this allegation and contends that the ′331
`Patent is invalid under one or more of 35 U.S.C. §§ 101, 102, 103 and/or 112.
`
`15. An actual and justiciable controversy has thus arisen between Wi3 and Actiontec concerning the validity of the ′331
`Patent.
`
`16. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201, et seq., Actiontec is entitled to judgment from this
`Court finding that the ′ 331 Patent is invalid pursuant to 35 U.S.C. §§ 101, 102, 103 and/or 112.
`
`(Dkt. 13 at 8). This Court considered an almost identical counterclaim in Gradient Enterprises. There, the invalidity
`counterclaim at issue alleged, “[t]he claims of the [contested patent] are invalid for failure to comply with one or more of the
`conditions for patentability set forth in Part II of Title 35 of the United States Code, including without limitation, Sections 102,
`103, and/or 112.” Gradient Enterprises, 932 F.Supp.2d at 450. The Court found the Gradient Enterprises invalidity counterclaim
`insufficient as a matter of law because it did not assert any factual allegations on which the Court or the moving party could
`“pin the invalidity of any claim of the patent.” Id . at 452 (quotation omitted). The Court also expressly rejected the argument
`that the invalidity counterclaim was consistent with Form 18, noting that Form 18 “only governs allegations concerning direct
`infringement” and does not apply to claims of invalidity. Id.
`
`Similarly, in Armstrong Pump, Inc. v. Hartman, No. 10–CV–446S SC, 2012 WL 1029645 (W.D.N.Y. Mar.26, 2012), this Court
`granted a motion for dismissal of invalidity counterclaims which asserted that “[a]ll claims of the [contested] patent[s] are
`invalid for failing to meet one or more conditions for patentability set forth in 35 U.S .C. §§ 101, 102, 103, and/or 112.” Id.
`at *2. The Court concluded that the counterclaims failed as a matter of law because they were “devoid of any facts that would
`suggest which deficiency(ies) apply to which patent(s) or claim(s)” and explained that the Appendix Forms (including Form
`18) do not “suggest a declaration that a statute has been violated, standing alone, is sufficient to survive a motion to dismiss.” Id.
`
`The Invalidity Counterclaim at issue in this case contains no more factual allegations than the counterclaims found legally
`insufficient in Gradient Enterprises and Armstrong Pump. Defendant has not identified any reason for the Court to revisit the
`holding in those cases that a counterclaim for patent invalidity must contain more than a barebones assertion that a patent is
`invalid for failure to comply with particular sections of the U.S.Code.
`
`The out-of-circuit cases relied upon by Defendant are unpersuasive. For example, in Microsoft Corp. v. Phoenix Solutions,
`Inc., 741 F.Supp.2d 1156 (C.D.Cal.2010), the district court held that it would be “incongruous to require heightened pleading
`[for an invalidity counterclaim] when the pleading standard for infringement does not require facts such as why the accused
`products allegedly infringe or to specifically list the accused products.” Id. at 1159. Contrary to that reasoning, requiring an
`invalidity counterclaim to comply with the analysis laid out in Twombly and Iqbal does not impose a heightened pleading
`standard. Indeed, the Second Circuit Court of Appeals has made it clear that Twombly and Iqbal do not impose a “heightened”
`pleading standard. See Arista Records, LLC v. Doe 3, 604 F.3d 110, 119 (2d Cir.2010) (“[T]he notion that Twombly imposed
`a heightened standard ... is belied by the Twombly opinion itself.”).
`
` [7]
`[6]
` This Court's adoption of Local Patent Rules (effective January 1, 2014) does not alter the Court's conclusion. The
`detailed disclosures required by Local Patent Rule 3.3 do not alter the pleading standard for asserting an invalidity counterclaim
`in compliance with Twombly and Iqbal. An invalidity counterclaim must contain the minimal factual allegations required to
`show plausibility. As this Court explained in Armstrong Pump, “a declaration that a statute has been violated, standing alone,”
`is insufficient to meet this standard. 2012 WL 1029645 at *2.
`
`For the foregoing reasons, the Court dismisses without prejudice Defendant's Invalidity Counterclaim (Counterclaim 2) for
`failure to state a claim.
`
`III. Plaintiffs Motion to Strike
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`5
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`

`
`Wi3, Inc. v. Actiontec Electronics, Inc., 71 F.Supp.3d 358 (2014)
`
`Plaintiff also moves to strike the portion of Defendant's answer entitled “Reservation of Defenses,” which provides: “Actiontec
`reserves all affirmative defenses under Rule 8(c) of the Federal Rules of Civil Procedure, the Patent Laws of the United States,
`and any other defenses, at law or in equity, that may now exist or in the future be available based on discovery and further
`factual investigation in this case.” (Dkt. 13 at 6) (the “Reservation of Defenses Clause”). Plaintiff argues that this portion of the
`answer is an improper attempt to circumvent Federal Rule of Civil Procedure 15, which governs the amendment of pleadings.
`Defendant argues in opposition that it should not be “preclude[d] ... from ever raising additional defenses in the future based
`on newly-discovered facts.” (Dkt. 20 at 9).
`
`[8]
` To the extent that the Reservation of Defenses Clause seeks “to reserve the unilateral right to add new and different
`affirmative defenses as they become known to [Defendant] at indeterminate times in the future,” it is improper and inconsistent
`with Rule 15. Boss Prods Corp. v. Tapco Int'l Corp., No. 00–CV–0689E(M), 2001 WL 135819, at *3 (W.D.N.Y. Feb.16, 2001).
`However, to the extent that the Reservation of Defenses Clause seeks only to reserve the “right to seek leave to amend,” it
`should not be stricken even though “the language of the reservation is imprecise” because Defendant “do[es] retain the right to
`seek leave of the court to amend the[ ] answer.” F.T.C. v. Bronson Partners, LLC, No. 3:04CV1866(SRU), 2006 WL 197357,
`at *4 (D.Conn. Jan.25, 2006).
`
`[9]
` Based on the language of the Reservation of Defenses Clause, the Court cannot determine as a matter of law that Defendant
`seeks more than to simply reserve its right to seek leave to amend the answer should facts supporting additional affirmative
`defenses become known to it. Under these circumstances, the Court declines to strike the Reservation of Defenses Clause.
`The Court's decision not to dismiss the Reservation of Defenses Clause is not and should not be interpreted as “excusing
`the otherwise applicable constraints of Rules 15 and 16 to any future attempt to amend the ... Answer....” Calabrese v. CSC
`Holdings, Inc., No. CV 02–5171(DLI)(JO), 2006 WL 544394, at *7 (E.D.N.Y. Mar. 6, 2006).
`
`IV. Leave to Amend
`[10]
` The final sentence of Defendant's brief in opposition to Plaintiffs motion states, “should the Court grant any portion of
`Wi3's motion, Actiontec respectfully requests leave of Court to file an amended answer in accordance with such order.” (Dkt.
`20 at 13). Defendant's request is not a proper motion for leave to amend, and fails to comply with the Local Rules of Civil
`Procedure with respect to the process for seeking to amend a pleading. In particular, Local Rule 15(a) provides, “[a] movant
`seeking to amend or supplement a pleading must attach an unsigned copy of the proposed amended pleading as an exhibit to the
`motion,” while Local Rule 15(b) requires parties represented by counsel to identify the proposed amendments “through the use
`of a word processing ‘red-line’ function or other similar markings....” L.R. Civ. P. 15(a), (b). Because Defendant has failed to
`comply with the Local Rules, the Court exercises its discretion in denying this “cursory or boilerplate request [ ] ... made solely
`in a memorandum in opposition to a motion to dismiss.” Malin v. XL Capital, Ltd., 312 F. App'x 400, 402 (2d Cir.2009) (citation
`omitted). If Defendant wishes to seek leave to amend its answer, it should do so through a procedurally compliant motion.
`
`CONCLUSION
`
`For the foregoing reasons, Plaintiff's motion is granted without prejudice with respect to the request to dismiss the Invalidity
`Counterclaim (Counterclaim 2) pursuant to Rule 12(b)(6) and denied with respect to the request to strike the Reservation of
`Defenses Clause.
`
`SO ORDERED.
`
`All Citations
`
`71 F.Supp.3d 358
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`6
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`

`
`Wi3, Inc. v. Actiontec Electronics, Inc., 71 F.Supp.3d 358 (2014)
`
`End of Document
`
`© 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`7
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`

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`
`
`EXHIBIT B
`EXHIBIT B
`
`
`
`
`
`
`
`

`
`ConocoPhillips Pipe Line Co. v. Rogers Cartage Co., Not Reported in F.Supp.2d (2012)
`2012 WL 1231998
`
`2012 WL 1231998
`Only the Westlaw citation is currently available.
`United States District Court,
`S.D. Illinois.
`
`CONOCOPHILLIPS PIPE LINE COMPANY, Plaintiff,
`v.
`ROGERS CARTAGE COMPANY, Defendant.
`
`No. 3:11–cv–497–DRH–DGW.
`
` | April 12, 2012.
`
`Attorneys and Law Firms
`
`Andrew L. Schulkin, Lathrop & Gage LLP, Chicago, IL, James F. Thompson, Lathrop & Gage, Kansas City, MO, for Plaintiff.
`
`Robert Schultz, Ronald J. Eisenberg, Schultz & Associates LLP, Chesterfield, MO, for Defendant.
`
`WILKERSON, United States Magistrate Judge.
`
`ORDER
`
`*1 Now pending before the Court is a Motion to Strike Insufficient Affirmative Defenses filed by Plaintiff ConocoPhillips
`Company (Doc. 28). The motion is GRANTED in part and DENIED in part.
`
`BACKGROUND
`
`Plaintiff, Conoco Phillips Pipe Line Company (CPPL), owns a 360–acre pipeline terminal property in Cahokia, Illinois.
`Defendant, Rogers Cartage leased a five-acre tract on the southern portion of the property sometime between the 1950s and
`1970s (hereinafter “the site”). CPPL alleges that the site was not used or occupied by anyone since Defendant left the property.
`CPPL also claims that during the time Defendant leased the site and after, Defendant washed out trucks used for hauling
`hazardous substances (including polycholinated biphenyl (PCB) waste) at the site. CPPL claims that washwater was discharged
`into impoundments and drainage features adjacent to the washout area. Plaintiff investigated the site and found PCBs to
`be present in soil at a quantity above the standards required by 40 C.F.R. § 761, creating a risk of groundwater or surface
`water contamination. CPPL incurred “necessary costs of response” to complete an investigation to assess the extent of PCB
`contamination and asked the court to enter judgment on its behalf requiring the Defendant to pay, in whole or in part, the costs
`of response, with interest and costs of suit, compensatory damages, and enter a declaratory judgment requiring Defendant to
`compensate CPPL for all costs to be incurred at the site and to bind the judgment on any subsequent action or actions to recover
`further response costs or damages. CPPL also asks for the Court to compel Defendant to abate the contamination it caused
`at the site, impose civil penalties for Defendant's willful failure and refusal to clean up the site, and, finally, award interest,
`attorney's fees, and other costs of litigation.
`
`Defendant responded to CPPL's complaint with an answer asserting forty-one affirmative defenses and a counterclaim for
`contribution to Plaintiff's first count: cost recovery under the Comprehensive Environmental Response, Compensation and
`Liability Act (“CERCLA”). In response, Plaintiff filed the pending Motion to Strike Insufficient Affirmative Defenses (Doc.
`28). In summary, CPPL askes the Court to strike the majority of Defendant's affirmative defenses, listing them as “irrelevant,
`unavailable, redundant, and inadequately pleaded.”Defendant responded in opposition to Plaintiff's motion, stating that none
`of Defendant's affirmative defenses should be stricken, especially prior to discovery.
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
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`

`
`ConocoPhillips Pipe Line Co. v. Rogers Cartage Co., Not Reported in F.Supp.2d (2012)
`2012 WL 1231998
`
`LEGAL STANDARDS
`
`Pursuant to Rule 12(f) of the Federal Rules of Civil Procedure, the court “may strike from a pleading an insufficient defense or
`any redundant, immaterial, impertinent, or scandalous matter.”If an affirmative defense presents substantial questions of law or
`fact, the motion to strike cannot be granted. U.S. v. 416.81 Acres of Land, 514 F.2d 627, 631 (7th Cir.1975). The defense should
`be stricken if the insufficiency of the defense