Case 2:12-cv-02781-JPM-cgc Document 44 Filed 07/26/13 Page 1 of 19 PageID 300
`
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Civil Action No. 2:12-cv-02781-JPM
`
`JURY DEMAND
`
`B.E. TECHNOLOGY, L.L.C.,
`
`
`GROUPON, INC.
`
`
`
`Defendant.
`
`
`
`
`
`
`
`Plaintiff,
`
`vs.
`
`
`
`
`
`GROUPON, INC.’S OPPOSITION TO PLAINTIFF’S MOTION TO DISMISS
`COUNTERCLAIMS AND TO STRIKE CERTAIN AFFIRMATIVE DEFENSES
`
`
`
`

`
`Case 2:12-cv-02781-JPM-cgc Document 44 Filed 07/26/13 Page 2 of 19 PageID 301
`Case 2:l2—cv—O2781—JPM—cgc Document 44 Filed 07/26/13 Page 2 of 19 Page|D 301
`
`
`TABLE OF CONTENTS
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ................................................................................................................ .. 5
`
`II. RELEVANT BACKGROUND .......................................................................................... .. 5
`
`II. ARGUMENT ....................................................................................................................... .. 6
`
`A. Groupon’s Counterclaims of Non-Infringement and Invalidity Satisfy
`the Notice Pleading Standard of Rule 8(a). ...................................................... .. 6
`B. Groupon’s Counterclaims of Non-Infringement and Invalidity Satisfy
`the “Plausibility” Test Set Forth in Twombly and Iqbal. ................................. .. 9
`C. Groupon’s Affirmative Defenses are Adequately Stated Under Rules
`8(b) and 8(c) and Applicable Case Precedent................................................. .. 12
`1. Non-Infringement ...................................................................................... .. 14
`2.
`Invalidity ..................................................................................................... .. 14
`3. Prosecution History Estoppel.................................................................... .. 15
`4. Ensnarement ............................................................................................... .. 15
`
`INTRODUCTION .................................................................................................................. 5
`I.
`II. RELEVANT BACKGROUND ............................................................................................ 5
`II. ARGUMENT ......................................................................................................................... 6
`A. Groupon’s Counterclaims of Non-Infringement and Invalidity Satisfy
`the Notice Pleading Standard of Rule 8(a). ........................................................ 6
`B. Groupon’s Counterclaims of Non-Infringement and Invalidity Satisfy
`the “Plausibility” Test Set Forth in Twombly and Iqbal. ................................... 9
`C. Groupon’s Affirmative Defenses are Adequately Stated Under Rules
`8(b) and 8(c) and Applicable Case Precedent................................................... 12
`1. Non-Infringement ........................................................................................ 14
`2.
`Invalidity ....................................................................................................... 14
`3. Prosecution History Estoppel...................................................................... 15
`4. Ensnarement ................................................................................................. 15
`5. Failure to State a Claim ............................................................................... 16
`6. No Injunctive Relief and Other Defenses Based on Later
`Discovered Evidence ............................................................................... 16
`D. B.E. Will Not Be Unfairly Prejudiced If Groupon’s Affirmative Defenses
`Are Not Stricken ................................................................................................. 16
`III. CONCLUSION .................................................................................................................. 17
`
`5. Failure to State a Claim ............................................................................. .. 16
`
`6. No Injunctive Relief and Other Defenses Based on Later
`Discovered Evidence ............................................................................. .. 16
`
`D. B.E. Will Not Be Unfairly Prejudiced If Groupon’s Affirmative Defenses
`Are Not Stricken ............................................................................................... .. 16
`
`III. CONCLUSION ................................................................................................................ .. 17
`
`-2-
`
`

`
`Case 2:12-cv-02781-JPM-cgc Document 44 Filed 07/26/13 Page 3 of 19 PageID 302
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ...................................................................................................................9
`
`Avocent Redmond Corp. v. United States,
`85 Fed. Cl. 724 (Fed. Cl. 2009) ...............................................................................................14
`
`Barry Fiala, Inc. v. Arthur Blank & Co., Inc.,
`No. 2:02-cv-2282, 2003 U.S. Dist. LEXIS 2609 (W.D. Tenn. Feb. 19, 2003) .......................12
`
`Bayer Cropscience AG v. Dow Agrosciences LLC,
`No. 10-CV-1045, 2011 U.S. Dist. LEXIS 149636 (D. Del. Dec. 30, 2011)................10, 11, 13
`
`Bell Atl. Corp. v. Twombly,
`550 U.S. 544 (2007) ...............................................................................................................6, 9
`
`Damron v. ATM Central LLC,
`No. 1:10-cv-01210, 2010 U.S. Dist. LEXIS 142812 (W.D. Tenn. Oct. 29, 2010) ..................12
`
`Elan Pharma Int’l Ltd. v. Lupin Ltd.,
`No. 09-1008, 2010 U.S. Dist. LEXIS 32306 (D.N.J. Mar. 31, 2010)..................................8, 14
`
`Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
`493 F.3d 1368 (Fed. Cir. 2007)................................................................................................15
`
`Graphic Packaging Int’l, Inc. v. C.W. Zumbiel Co.,
`No. 1:10-cv-3008, 2011 U.S. Dist. LEXIS 135675 (N.D. Ga. Aug. 1, 2011) .....................8, 14
`
`In re Bill of Lading Transmission & Processing Sys. Patent Litig.,
`681 F.3d 1323 (Fed. Cir. 2012)..............................................................................................7, 8
`
`InvestmentSignals, LLC v. Irrisoft, Inc.,
`No. 10-cv-600, 2011 U.S. Dist. LEXIS 85646 (D.N.H. Aug. 1, 2011) ...............................7, 10
`
`Kilgore-Wilson v. Home Depot U.S.A.,
`No. 2:11-cv-02601, 2012 U.S. Dist. LEXIS 131166 (W.D. Tenn. Sept. 14, 2012) ................12
`
`Mark IV Indus. Corp. v. Transcore, L.P.,
`No. 09-418, 2009 U.S. Dist. LEXIS 112069 (D. Del. Dec. 2, 2009) ................................6, 8, 9
`
`Pfizer Inc. v. Apotex Inc.,
`726 F. Supp. 2d 921 (N.D. Ill. 2010) .........................................................................................8
`
`Teirstein v. AGA Med. Corp.,
`No. 6:08cv14, 2009 U.S. Dist. LEXIS 20850 (E.D. Tex. Mar. 16, 2009) ..................... 9-10, 15
`
`-3-
`
`

`
`Case 2:12-cv-02781-JPM-cgc Document 44 Filed 07/26/13 Page 4 of 19 PageID 303
`
`
`OTHER AUTHORITIES
`
`Fed. R. Civ. P. 8 ..................................................................................................................... Passim
`
`Fed. R. Civ. P. 11 ...........................................................................................................................11
`
`Fed. R. Civ. P. 12 .......................................................................................................................7, 11
`
`Fed. R. Civ. P. 84 .............................................................................................................................6
`
`Form 18, Fed. R. Civ. P. ..................................................................................................................7
`
`Form 30, Fed. R. Civ. P. ..................................................................................................................7
`
`-4-
`
`

`
`Case 2:12-cv-02781-JPM-cgc Document 44 Filed 07/26/13 Page 5 of 19 PageID 304
`
`
`I.
`
`INTRODUCTION
`
`The notice pleading requirement of Fed. R. Civ. P. 8 applies equally to plaintiffs and
`
`defendants in patent cases. Plaintiff B.E. Technology, LLC (“B.E.”) filed nineteen patent
`
`lawsuits with non-specific allegations of infringement. Many defendants, including Defendant
`
`Groupon, Inc. (“Groupon”), filed answers asserting affirmative defenses and counterclaims of
`
`non-infringement and invalidity. Groupon pled the same level of specificity as B.E. had in the
`
`complaint. Neither the federal rules nor established case law support B.E.’s position that in
`
`patent cases a defendant should be held to a higher pleading standard when asserting
`
`counterclaims or defenses than a plaintiff is held to when filing an initial complaint.
`
`Groupon’s counterclaims satisfy both the notice pleading standard of Rule 8(a) and the
`
`“plausibility” test set forth in Twombly and Iqbal. Similarly, Groupon’s affirmative defenses are
`
`adequately stated under Rules 8(b) and 8(c), including the applicable Fed. R. Civ. P. Forms and
`
`case precedent. B.E.’s claims of unfair prejudice also ring hollow as the local rules and
`
`scheduling order require Groupon to provide B.E. detailed non-infringement and invalidity
`
`contentions.
`
`Alternatively, and to the extent the Court grants B.E.’s Motion, Groupon requests leave
`
`to amend its Answer to amend any counterclaims or affirmative defenses found to be
`
`insufficiently pled.
`
`II.
`
`RELEVANT BACKGROUND
`
`B.E. sued Groupon on September 10, 2012, accusing Groupon of infringing U.S. Patent
`
`No. 6,628,314 (“’314 patent”). B.E. filed similar lawsuits against eighteen other defendants as
`
`well. In its Complaint, B.E. alleged that “Groupon has infringed the ’314 patent by using a
`
`method of providing demographically targeted advertising that directly infringes at least Claim
`
`11 of the ’314 patent either literally or under the doctrine of equivalents.” (D.E. 1, ¶11.) The
`
`-5-
`
`

`
`Case 2:12-cv-02781-JPM-cgc Document 44 Filed 07/26/13 Page 6 of 19 PageID 305
`
`
`Complaint does not provide any specific details on how Groupon infringes the ’314 patent, nor
`
`does B.E. identify any specific accused products or methods.
`
`On December 31, 2012, Groupon filed its Answer, Affirmative Defenses, and
`
`Counterclaims, asserting multiple affirmative defenses and counterclaims for declaratory
`
`judgment of non-infringement and invalidity. (D.E. 19.) Groupon provided the same level of
`
`specificity in its claims as B.E. provided in its Complaint. Approximately one month later, B.E.
`
`filed its Motion to Dismiss under Fed. R. Civ. P. 12(b)(6) and Motion to Strike under Fed. R.
`
`Civ. P. 12(f). (D.E. 24.)
`
`II.
`
`ARGUMENT
`
`Groupon’s Counterclaims of Non-Infringement and Invalidity Satisfy the
`A.
`Notice Pleading Standard of Rule 8(a).
`
`Groupon pleaded its counterclaims of non-infringement and invalidity in accordance with
`
`Forms 18 and 30 of the Federal Rules of Civil Procedure, and thus satisfies the notice pleading
`
`requirement of Rule 8(a).
`
`In particular, the notice pleading standard of Rule 8(a) “requires only ‘a short and plain
`
`statement of the claim showing that the pleader is entitled to relief’ in order to ‘give the
`
`defendant fair notice of what the . . . claim is and the grounds upon which it rests.’” Bell Atl.
`
`Corp. v. Twombly, 550 U.S. 544, 555 (2007) (quoting Conley v. Gibson, 355 U.S. 41, 47 (1957)).
`
`The forms in the Appendix of the Federal Rules of Civil Procedure “illustrate the simplicity and
`
`brevity that the[] rules contemplate,” and thus a party is entitled to rely on those forms as being
`
`sufficient under Rule 8(a). Fed. R. Civ. P. 84; see also Mark IV Indus. Corp. v. Transcore, L.P.,
`
`No. 09-418, 2009 U.S. Dist. LEXIS 112069, at *9 (D. Del. Dec. 2, 2009) (“Absent an explicit
`
`abrogation of the[] forms by the Supreme Court, this court presumes that they are ‘sufficient to
`
`withstand attack under the rules under which they are drawn’ and ‘practitioner[s] using them
`
`-6-
`
`

`
`Case 2:12-cv-02781-JPM-cgc Document 44 Filed 07/26/13 Page 7 of 19 PageID 306
`
`
`may rely on them to that extent.’” (quoting Fed. R. Civ. P. 84)). Moreover, the Federal Circuit
`
`has held that the forms remain the standard against which claims for direct infringement are to be
`
`measured. In re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1323,
`
`1334 (Fed. Cir. 2012) (“[T]o the extent the parties argue that Twombly and its progeny conflict
`
`with the Forms and create differing pleading requirements, the Forms control.” (citing McZeal v.
`
`Sprint Nextel Corp., 501 F.3d 1354, 1360 (Fed. Cir. 2007)). Other courts have agreed. See, e.g.,
`
`InvestmentSignals, LLC v. Irrisoft, Inc., No. 10-cv-600, 2011 U.S. Dist. LEXIS 85646, at *2
`
`(D.N.H. Aug. 1, 2011) (“[T]he better-reasoned view holds that as long as patent claims and
`
`counterclaims meet the minimal pleading standards modeled in Form 18, they adequately state
`
`viable causes of action.”). Thus, any claim pleaded in accordance with a form is sufficient under
`
`Rule 8(a) and must survive a motion to dismiss under Fed. R. Civ. P. 12(b).
`
`Groupon’s counterclaims are governed by Form 30. Form 30 provides a sample answer
`
`to a complaint with counterclaims, and specifically states that a counterclaimant (such as
`
`Groupon in this case) should “[s]et forth any counterclaim in the same way a claim is pleaded in
`
`a complaint” and “[i]nclude a further statement of jurisdiction if needed.” Thus, according to
`
`Form 30, a counterclaim in a patent case should be pleaded in the “same way” as a complaint.
`
`Form 18 provides a sample complaint for patent infringement and only requires the
`
`following: “‘(1) an allegation of jurisdiction; (2) a statement that the plaintiff owns the patent;
`
`(3) a statement that the defendant has been infringing the patent “by making, selling and using
`
`[the device] embodying the patent”; (4) a statement that the plaintiff has given the defendant
`
`notice of its infringement; and (5) a demand for an injunction and damages.’” In re Bill of
`
`Lading, 681 F.3d at 1334 (quoting McZeal, 501 F.3d at 1356-57). The Federal Circuit and other
`
`-7-
`
`

`
`Case 2:12-cv-02781-JPM-cgc Document 44 Filed 07/26/13 Page 8 of 19 PageID 307
`
`
`courts have held that a claim for patent infringement that complies with Form 18 is sufficient
`
`under Rule 8(a), as interpreted in Twombly. Id.; Mark IV, 2009 U.S. Dist. LEXIS 112069, at *4.
`
`Like the claims in the Complaint, Groupon’s counterclaims are pleaded in accordance
`
`with Form 30 and follow the template of Form 18. Specifically, Groupon’s counterclaims for
`
`non-infringement contain the following:
`
`1) an allegation of jurisdiction;
`2) a statement that an actual case or controversy exists because B.E. brought this
`infringement action against Groupon;
`3) a statement that Groupon does not directly or indirectly infringe the patent-in-suit;
`4) a statement that Groupon does not infringe the patent-in-suit literally or under the
`doctrine of equivalents; and
`5) a demand for relief in the form of a declaratory judgment of non-infringement.
`
`(See, e.g., D.E. 19 at 7-8, ¶¶ 3-9.) Similarly, Groupon’s counterclaims for invalidity include:
`
`1) an allegation of jurisdiction;
`2) a statement that an actual case or controversy exists because B.E. brought this
`infringement action against Groupon;
`3) a statement that the patent-in-suit is invalid;
`4) a statement of the specific statutory provisions under which the patent-in-suit is
`invalid; and
`5) a demand for relief in the form of a declaratory judgment of invalidity.
`
`(See, e.g., id. ¶¶ 3-6, 10-12.) District courts have held that counterclaims for invalidity and non-
`
`infringement satisfied Rule 8 where language mirrored the language employed by the plaintiff in
`
`its complaint. See, e.g., Elan Pharma Int’l Ltd. v. Lupin Ltd., No. 09-1008, 2010 U.S. Dist.
`
`LEXIS 32306, at *4 (D.N.J. Mar. 31, 2010); see also Graphic Packaging Int’l, Inc. v. C.W.
`
`Zumbiel Co., No. 1:10-cv-3008, 2011 U.S. Dist. LEXIS 135675, at *3 (N.D. Ga. Aug. 1, 2011)
`
`(“[I]nvalidity counterclaims and affirmative defenses that allege only their statutory bases are
`
`adequate to survive a Rule 12 motion . . . .”); Pfizer Inc. v. Apotex Inc., 726 F. Supp. 2d 921,
`
`927, 937-38 (N.D. Ill. 2010) (finding invalidity counterclaim sufficient where it alleged that the
`
`“Unasserted Patents are invalid for failure to comply with one or more of the conditions of
`
`patentability set forth in Title 35 of the United States Code”). Because its counterclaims comply
`
`-8-
`
`

`
`Case 2:12-cv-02781-JPM-cgc Document 44 Filed 07/26/13 Page 9 of 19 PageID 308
`
`
`with Forms 18 and 30, Groupon satisfies Rule 8(a) under the precedent of the Federal Circuit and
`
`other courts.
`
`Groupon’s Counterclaims of Non-Infringement and Invalidity Satisfy the
`B.
`“Plausibility” Test Set Forth in Twombly and Iqbal.
`
`Neither Twombly nor Iqbal support a differing pleading standard for defendants than for
`
`plaintiffs in patent cases. Rather, these cases require only that a claim be “plausible” on its face.
`
`Twombly and Iqbal provide the standard for pleading claims for relief as set forth in
`
`Federal Rule of Civil Procedure 8(a)(2) in all civil actions in federal court. The Supreme Court
`
`held that “Federal Rule of Civil Procedure 8(a)(2) requires only ‘a short and plain statement of
`
`the claim showing that the pleader is entitled to relief,’ in order to ‘give the defendant fair notice
`
`of what the . . . claim is and the grounds upon which it rests.’” Twombly, 550 U.S. at 555
`
`(quoting Conley v. Gibson, 355 U.S. 41, 47 (1957)). A claim for relief “does not require
`
`‘detailed factual allegations,’” but it must be “‘plausible on its face.’” Ashcroft v. Iqbal, 556
`
`U.S. 662, 678 (2009) (quoting Twombly, 550 U.S. at 570).
`
`In the patent context, district courts have noted that there are “practical difficulties of
`
`pleading patent infringement with more specificity than that required by Form 18.” Mark IV
`
`Indus. Corp. v. TransCore, L.P., No. 09-418 GMS, 2009 U.S. Dist. LEXIS 112069, at *10 (D.
`
`Del. Dec. 2, 2009). Courts that have adopted local patent rules have determined the level of
`
`specificity required at the pleading stage in light of those rules’ requirements for early disclosure
`
`of infringement and invalidity theories. For example, the Eastern District of Texas has held that
`
`in a counterclaim for invalidity―much like in a claim for infringement―allegations must be
`
`“clear enough as to effectively put Plaintiff on notice of the legal and factual grounds for the
`
`asserted invalidity.” Teirstein v. AGA Med. Corp., No. 6:08cv14, 2009 U.S. Dist. LEXIS 20850,
`
`at *4 (E.D. Tex. Mar. 16, 2009). In Teirstein, the court denied a motion to dismiss the
`
`-9-
`
`

`
`Case 2:12-cv-02781-JPM-cgc Document 44 Filed 07/26/13 Page 10 of 19 PageID 309
`
`
`defendant’s counterclaim for declaratory judgment of invalidity. Id. at *6. Similar to Groupon’s
`
`counterclaim in this case, the counterclaim in Teirstein alleged “[t]he claims of the [patent-in-
`
`suit] are invalid for failing to satisfy one or more of the statutory requirements for patentability
`
`set forth in 35 U.S.C. §§ 101, 102, 103 and/or 112.” Id. at *4. The court found that this
`
`statement was sufficient under the Twombly standard not only because it put the plaintiff on
`
`notice by listing the statutory sections under which the patent was allegedly invalid, but also
`
`because it was a “short and plain statement of the claim” that “show[ed] that the pleader is
`
`entitled to relief.” Id. (citing Twombly, 550 U.S. at 555).
`
`Additionally, many courts have recognized that imposing different pleading burdens on
`
`plaintiffs and defendants is not justified by Rule 8(a) and would be unfair to defendants. See,
`
`e.g., Bayer Cropscience AG v. Dow Agrosciences LLC, No. 10-CV-1045, 2011 U.S. Dist. LEXIS
`
`149636, at *3 (D. Del. Dec. 30, 2011) (finding heightened pleading standard inapplicable to
`
`patent unenforceability counterclaim based in part on court’s “concern of imposing incongruous
`
`pleading burdens”); InvestmentSignals, LLC v. Irrisoft, Inc., No. 10-cv-600, 2011 U.S. Dist.
`
`LEXIS 85646, at *2 (D.N.H. Aug. 1, 2011) (finding “‘[w]ith respect to invalidity counterclaims,
`
`the Court agrees with other district courts that it would be incongruous to require heightened
`
`pleading when the pleading standard for infringement does not require” specificity of facts)
`
`(quoting Microsoft Corp. v. Phoenix Solutions, Inc., 741 F. Supp. 2d 1156, 1159 (C.D. Cal.
`
`2010))). Subjecting defendants to a higher pleading standard than plaintiffs would, among other
`
`things, place defendants at a significant disadvantage, particularly given the fact that a plaintiff
`
`has until the expiration of the corresponding statute of limitations to develop the allegations in its
`
`complaint, and defendants/counterclaimants have approximately 21 days to do the same. See
`
`-10-
`
`

`
`Case 2:12-cv-02781-JPM-cgc Document 44 Filed 07/26/13 Page 11 of 19 PageID 310
`
`
`Bayer Cropscience AG, 2011 U.S. Dist. LEXIS 149636, at *1 (noting this discrepancy in the
`
`context of affirmative defenses); Fed. R. Civ. P. 12(a).
`
`Finally, Plaintiff argues that there are “compelling practical reasons” to apply a different
`
`pleading standard to Groupon’s counterclaims, namely, to ensure counterclaimants do not assert
`
`frivolous claims as prohibited by Fed. R. Civ. P. 11. (D.E. 24 at 5.) This argument is
`
`particularly misguided given that B.E initiated this litigation―not Groupon. To the extent that
`
`the purpose of Rule 8(a) is to address concerns about frivolous litigation as suggested by B.E.,
`
`then it should apply equally (if not greater) to the party who voluntarily initiates the litigation.
`
`Yet, B.E. proposes the opposite―that the claims in an initial complaint for patent infringement
`
`should be held to a lower standard. That, by itself, demonstrates the flaws in B.E.’s position.
`
`Moreover, regardless of the pleading standard applied under Rule 8(a), a claim is still governed
`
`by Rule 11 and a signatory to a pleading is still representing to the court that “to the best of the
`
`person’s knowledge, information, and belief, formed after an inquiry reasonable under the
`
`circumstances . . . the claims, defenses and other legal contentions are warranted by existing law
`
`or by a nonfrivolous argument . . . [and] the factual contentions have evidentiary support . . . [or]
`
`will likely have evidentiary support after a reasonable opportunity for further investigation or
`
`discovery.” Fed. R. Civ. P. 11.
`
`Groupon’s counterclaims are adequately pled and contain plausible claims for relief that,
`
`in the context of patent litigation, comprise “a short and plain statement of the claim showing
`
`that [Groupon is] entitled to relief.” Fed. R. Civ. P. 8(a)(2). At this early stage of the case, it is
`
`certainly “plausible” that Groupon does not infringe the ’314 patent and that the patent is invalid.
`
`Furthermore, Groupon provides the statutory basis, along with specific sections, for its invalidity
`
`counterclaims. Accordingly, B.E.’s Motion to Dismiss should be denied. Alternatively, to the
`
`-11-
`
`

`
`Case 2:12-cv-02781-JPM-cgc Document 44 Filed 07/26/13 Page 12 of 19 PageID 311
`
`
`extent the Court grants the Motion to Dismiss, Groupon respectfully request leave to amend its
`
`counterclaims in accordance with the Court’s ruling.
`
`Groupon’s Affirmative Defenses Are Adequately Stated Under Rules 8(b)
`C.
`and 8(c) and Applicable Case Precedent.
`
`Groupon’s affirmative defenses are adequately stated under Rules 8(b) and 8(c).
`
`Additionally, this motion is premature given that no discovery has occurred in this case yet.
`
`Thus, Plaintiff’s Motion to Strike Pursuant to Rule 12(f) should be denied.
`
`Motions to strike are disfavored and rarely granted. See Kilgore-Wilson v. Home Depot
`
`U.S.A., No. 2:11-cv-02601, 2012 U.S. Dist. LEXIS 131166, at *2 (W.D. Tenn. Sept. 14, 2012)
`
`(“It is well established that the action of striking a pleading should be sparingly used by the
`
`courts.” (quotations omitted)). Rather, motions to strike pursuant to Rule 12(f) are reserved for
`
`addressing “‘redundant, immaterial, impertinent, or scandalous matter in any pleading, and [it] is
`
`the primary procedure for objecting to an insufficient defense.’” Barry Fiala, Inc. v. Arthur
`
`Blank & Co., Inc., No. 2:02-cv-2282, 2003 U.S. Dist. LEXIS 2609, at *4 (W.D. Tenn., Feb. 19,
`
`2003) (quoting 5A Charles Alan Wright & Arthur R. Miller, Federal Practice & Procedure §
`
`1380 (2d ed. 1990)). Furthermore, this Court has denied a motion to strike affirmative defenses
`
`before any discovery has occurred. See Damron v. ATM Central LLC, No. 1:10-cv-01210, 2010
`
`U.S. Dist. LEXIS 142812, at *2-3 (W.D. Tenn. Oct. 29, 2010).
`
`B.E.’s argument that defendants should be subject to a higher pleading standard than
`
`plaintiffs makes even less sense when applied to Groupon’s affirmative defenses. Unlike a
`
`counterclaim, an affirmative defense does not entitle defendants to any form of relief.
`
`Specifically, Rule 8(a) provides that “a claim for relief” must contain “a short and plain
`
`statement of the claim showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)
`
`(emphasis added). Rule 8(b), by contrast, requires only that a party “state in short and plain
`
`-12-
`
`

`
`Case 2:12-cv-02781-JPM-cgc Document 44 Filed 07/26/13 Page 13 of 19 PageID 312
`
`
`terms its defenses.” Fed. R. Civ. P. 8(b) (emphasis added). Further, one district court has noted
`
`a number of reasons why pleading affirmative defenses differs from pleading claims for relief:
`
`(1)
`
`(2)
`
`(3)
`
`(4)
`
`(5)
`
`(6)
`
`(7)
`
`(8)
`
`textual differences between Rule 8(a), which requires that a plaintiff
`asserting a claim show entitlement to relief, and Rule 8(c), which requires
`only that the defendant state any defenses;
`
`a diminished concern that plaintiffs receive notice in light of their ability
`to obtain more information during discovery;
`
`the absence of a concern that the defense is “unlocking the doors of
`discovery”;
`
`the limited discovery costs, in relation to the costs imposed on a
`defendant, since it is unlikely that either side will pursue discovery on
`frivolous defenses;
`
`the unfairness of holding the defendant to the same pleading standard as
`the plaintiff, when the defendant has only a limited time to respond after
`service of the complaint . . . ;
`
`the low likelihood that motions to strike . . . would expedite the litigation,
`given that leave to amend is routinely granted;
`
`the risk that a defendant will waive a defense at trial by failing to plead it
`at the early stage of the litigation;
`
`the lack of detail in Form 30, which demonstrates the appropriate pleading
`of an affirmative defense; and
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`(9)
`
`the fact that a heightened pleading requirement would produce more
`motions to strike, which are disfavored.
`
`Bayer Cropscience AG, 2011 U.S. Dist. LEXIS 149636, at *1-2.
`
`In light of these considerations, each of Groupon’s affirmative defenses is adequately
`
`stated under Rules 8(b) and 8(c) for the reasons set forth below and thus B.E.’s Motion to Strike
`
`should be denied. Alternatively, to the extent that the Court grants B.E.’s Motion, Groupon
`
`respectfully requests leave to amend its affirmative defenses in accordance with the Court’s
`
`ruling.
`
`-13-
`
`

`
`Case 2:12-cv-02781-JPM-cgc Document 44 Filed 07/26/13 Page 14 of 19 PageID 313
`
`
`1.
`
`Non-Infringement.
`
`Groupon’s First Affirmative Defense states that Groupon has not directly or indirectly
`
`infringed any of the patents-in-suit, either literally or under the doctrine of equivalents. (D.E. 19
`
`at 5.) This language provides enough specificity to state a non-infringement defense under Rules
`
`8(b) and (c), particularly since it contains the same level of detail as B.E.’s infringement claim.
`
`See, e.g., Avocent Redmond Corp. v. United States, 85 Fed. Cl. 724, 725 (Fed. Cl. 2009) (finding
`
`affirmative defense of non-infringement sufficient where it stated “[n]either the accused products
`
`nor Rose have infringed or infringe any of the asserted claims of the patents-in-suit, either
`
`directly, indirectly, literally, or under the doctrine of equivalents”). Therefore, Groupon’s First
`
`Affirmative Defense is properly stated under Rules 8(b) and (c), and Plaintiff’s Motion should be
`
`denied.
`
`2.
`
`Invalidity.
`
`Groupon’s Second Affirmative Defense states that “Plaintiff’s claims against Groupon
`
`are barred, in whole or in part, because one or more of the claims of the asserted ’314 patent are
`
`invalid for failure to satisfy one or more of the conditions for patentability set forth in Title 35 of
`
`the United States Code, including without limitation, for example, 35 U.S.C. §§ 101, 102, 103,
`
`and/or 112.” (D.E. 19 at 5.) This short and plain statement of Groupon’s invalidity defense
`
`provides B.E. with adequate notice of the grounds on which the defense is based, such that B.E.
`
`will not suffer any prejudice. See, e.g., Graphic Packaging, 2011 U.S. Dist. LEXIS 135675,
`
`at*3; Elan Pharma, 2010 U.S. Dist. LEXIS 32306, at *5 (affirmative defenses suffice where they
`
`stated “the claims of the [patent-in-suit] are invalid under one or more provisions of 35 U.S.C.
`
`§§ 101-105”). Thus, Plaintiff’s Motion to Strike this defense should be denied.
`
`-14-
`
`

`
`Case 2:12-cv-02781-JPM-cgc Document 44 Filed 07/26/13 Page 15 of 19 PageID 314
`
`
`3.
`
`Prosecution History Estoppel.
`
`Groupon’s Third Affirmative Defense is also sufficiently stated because it provides B.E.
`
`with fair notice of the defense being advanced. (See, e.g., D.E. 19 at 5.) “Prosecution history
`
`estoppel limits the range of equivalents available to a patentee by preventing recapture of subject
`
`matter surrendered during prosecution of the patent.” Festo Corp. v. Shoketsu Kinzoku Kogyo
`
`Kabushiki Co., 493 F.3d 13668, 1377 (Fed. Cir. 2007). This defense has a “particular and
`
`limited application” such that Groupon’s use of the term “prosecution history estoppel” should
`
`put Plaintiff on ample notice as to the scope of the defense raised thereunder. See Teirstein v.
`
`AGA Medical Corp., No. 6:09-cv-14, 2009 U.S. Dist. LEXIS 20850, at *7 (E.D. Tex. Mar. 16,
`
`2009) (“Because prosecution history estoppel has a particular and limited application, the Court
`
`cannot say that Defendant’s third affirmative defense is insufficient as a matter of law.”).
`
`Moreover, it would be difficult, if not impossible, for Groupon to assert any further
`
`details at this stage in the litigation. The extent to which any of Plaintiff’s claims are barred by
`
`prosecution history estoppel will necessarily depend on the extent to which Plaintiff alleges that
`
`the patents-in-suit are infringed under the doctrine of equivalents. It would be unfair to require
`
`Groupon to plead additional facts regarding the scope of this defense when such facts are
`
`dependent upon B.E.’s future assertions. Thus, Plaintiff’s Motion to Strike Groupon’s Third
`
`Affirmative Defense should be denied.
`
`4.
`
`Ensnarement.
`
`Groupon’s Fourth Affirmative Defense states that “Plaintiff’s enforcement of the asserted
`
`’314 patent against Groupon is barred by the doctrine of ensnarement.” (D.E. 19 at 5.) Groupon
`
`continues that “Plaintiff is foreclosed from asserting infringement under the doctrine of
`
`equivalents to the extent the scope of such equivalent would render the claims invalid for failure
`
`-15-
`
`

`
`Case 2:12-cv-02781-JPM-cgc Document 44 Filed 07/26/13 Page 16 of 19 PageID 315
`
`
`to satisfy one or more of the conditions of patentability as set forth in 35 U.S.C. § 102 and/or
`
`103.” (Id.) As required, this defense includes a short and plain statement of Groupon’s defense.
`
`As with the Third Affirmative Defense, it would be unfair to require Groupon to plead additional
`
`facts regarding the scope of this defense when such facts are dependent upon B.E.’s future
`
`assertions of infringement under the doctrine of equivalents. The statement provides B.E. with
`
`adequate notice of the grounds on which the defense is based, such that B.E. will not suffer any
`
`prejudice. Thus, Groupon has sufficiently stated this defense.
`
`5.
`
`Failure to State a Claim.
`
`Groupon’s Fifth Affirmative Defense states that “[t]