Case 2:12-cv-02823-JPM-tmp Document 50 Filed 07/23/13 Page 1 of 17 PageID 300
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
`MEMPHIS DIVISION
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`B.E. TECHNOLOGY, L.L.C.,
`Plaintiff,
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`v.
`BARNES & NOBLE, INC.,
`Defendant.
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`Case No. 2:12-cv-02823-JPM-tmp
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`JURY TRIAL REQUESTED
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`
`
`RESPONSE OPPOSING PLAINTIFF B.E. TECHNOLOGY, L.L.C.’S
`MOTION TO DISMISS UNDER FED. R. CIV. P. 12(B)(6) AND
`MOTION TO STRIKE UNDER FED. R. CIV. P. 12(F)
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`Defendant Barnes & Noble, Inc. (“Barnes & Noble”), by and through its undersigned
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`counsel, hereby submits this memorandum in opposition to B.E. Technology, L.L.C.’s (“B.E.
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`Technology”) Motion to Dismiss Under Fed. R. Civ. P. 12(b)(6) and Motion to Strike Under
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`Fed. R. Civ. P. 12(f). Dkt. No. 33 (“Motion”).
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`I.
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`Statement of Facts
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`B.E. Technology’s Complaint accuses Barnes & Noble of infringing U.S. Patent
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`No. 6,771,290 (“the ‘290 Patent”) by allegedly “using, selling, and offering to sell in the United
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`States tablet computer products” including “Nook Simple Touch; Nook Simple Touch with
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`GlowLight; Nook Color; Nook Tablet.” It alleges that the accused products “directly infringe at
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`least Claim 2 of the ‘290 Patent either literally or under the doctrine of equivalents.” However,
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`the Complaint does not provide any information about why or how it contends Barnes & Noble’s
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`products infringe the ‘290 Patent.
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`On December 31, 2012, Barnes & Noble filed an Answer to B.E. Technology’s
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`Complaint, in which it denied infringing the asserted patent and brought counterclaims seeking
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`declaratory judgments of invalidity and non-infringement of the patent-in-suit. The Answer also
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`Case 2:12-cv-02823-JPM-tmp Document 50 Filed 07/23/13 Page 2 of 17 PageID 301
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`included several affirmative defenses. (Answer, Dkt. No. 26). A month later, without even
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`attempting to confer with Barnes & Noble’s counsel, B.E. Technology filed motions to dismiss
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`Barnes & Noble’s counterclaims pursuant to Rule 12(b)(6) and to strike Barnes & Noble’s
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`affirmative defenses pursuant to Rule 12(f). See Motion, supra. It filed similar motions in most
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`of the eighteen related cases.
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`II.
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`Barnes & Noble’s Counterclaims Should Not Be Dismissed
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`Barnes & Noble’s counterclaims are consistent with the form of complaint for patent
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`infringement set forth in the Federal Rules of Civil Procedure and the level of detail required by
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`Form 30 appended to those Rules, but B.E. Technology has moved to dismiss them -- even
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`though they are stated with substantially the same level of specificity and factual support as B.E.
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`Technology’s own claims. But there is no basis to hold defendants in patent infringement suits to
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`a higher pleading standard than plaintiffs. Indeed, it would be unfair and impractical to do so
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`because defendants have less time to prepare their responses and plaintiffs have already initiated
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`the costly process of discovery by bringing suit. Neither the Federal Rules, nor the standard of
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`pleading announced by the Supreme Court in Bell Atlantic Corp. v. Twombly, 550 U.S. 544
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`(2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009) support, let alone compel, the incongruous
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`treatment of claims and counterclaims that B.E. Technology invites this Court to apply.
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`A.
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`Barnes and Noble’s counterclaims are adequately stated under the Federal Rules
`of Civil Procedure
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`Barnes & Noble’s counterclaims for declaratory judgment are pleaded in accordance with
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`Forms 18 and 30 of the Federal Rules of Civil Procedure. Federal Rule of Civil Procedure 84
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`states that the forms in the appendix to the Federal Rules “suffice under these rules and illustrate
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`the simplicity and brevity that these rules contemplate.” Fed. R. Civ. P. 84. Form 30 provides
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`that counterclaims should be “[s]et forth. . . in the same way a claim is pleaded in a complaint.”
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`Case 2:12-cv-02823-JPM-tmp Document 50 Filed 07/23/13 Page 3 of 17 PageID 302
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`Fed. R. Civ. P. app. Form 30. Form 18 sets forth an example of a sufficient complaint for patent
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`infringement and includes:
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`(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 injunction and damages.
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`In re Bill of Lading Transmission and Processing Sys. Patent Litig., 681 F.3d 1323, 1334 (Fed.
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`Cir. 2012) (quoting McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1356-57 (Fed. Cir. 2007));
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`see also K-Tech Telecomm, Inc. v. Time Warner Cable, Inc., 714 F.3d 1277 (Fed. Cir. 2013).
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`Barnes & Noble’s counterclaims for declaratory judgment of non-infringement follow
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`this form, adjusted for the pleading requirements of declaratory judgment. Barnes and Noble’s
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`first counterclaim includes: (a) an allegation of jurisdiction, (Dkt. No. 26, Counterclaims ¶¶ 2-4);
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`(b) a statement that an actual controversy exists as to whether the patents are infringed,
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`(Counterclaims ¶¶ 9-10); (c) an allegation that Barnes & Noble has not and does not infringe the
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`patent-in-suit literally or under the doctrine of equivalents (Counterclaims ¶ 12); and (d) a
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`demand for relief in the form of a declaratory judgment of non-infringement, (Counterclaims
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`¶ 13). Barnes & Noble’s second counterclaim, regarding invalidity of the patent-in-suit contains
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`corresponding allegations. (Counterclaims ¶¶ 14-16).
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`The Supreme Court adopted the revised versions of these forms when the Federal Rules
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`of Civil Procedure were amended in 2007, just three weeks before it announced its decision in
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`Twombly. See Fed. R. Civ. P. 84 note. Despite the Twombly decision, the forms remain the
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`standard against which claims for direct infringement are to be measured. In re Bill of Lading,
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`681 F.3d at 1334 (“[T]o the extent that the parties argue that Twombly and its progeny conflict
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`with the Forms and create differing pleading requirements, the Forms control.”) (citing McZeal,
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`501 F.3d at 1360). Rule 84 specifically states that the forms suffice, and “any changes to the
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`Case 2:12-cv-02823-JPM-tmp Document 50 Filed 07/23/13 Page 4 of 17 PageID 303
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`Federal Rules of Civil Procedure must be obtained by the process of amending the Federal Rules,
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`and not by judicial interpretation.” In re Bill of Lading, 681 F.3d at 1323, 1334 (citing
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`Leatherman v. Tarrant Cnty, Narcotics Intel. & Coordination Unit, 507 U.S. 163, 168 (1992));
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`see also Twombly, 550 U.S. at 569 n. 14 (acknowledging that altering the Federal Rules of Civil
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`Procedure cannot be accomplished by judicial interpretation). Several district courts have
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`followed the Federal Circuit’s decision in In re Bill of Lading, holding that claims related to
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`direct infringement are sufficient if they reflect the degree of particularity demonstrated by Form
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`18. See, e.g., Driessen v. Sony Music Entm’t, 904 F. Supp. 2d 1196, 1198-1201 (D. Utah 2012);
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`Joao Control & Monitoring Sys. of Cal., LLC v. Sling Media, Inc., No. C-11-6277 EMC, 2012
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`WL 3249510, at *4-5 (N.D. Cal. Aug. 7, 2012); Lone Star Document Mgmt., LLC v. Atalasoft,
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`Inc., Civil Action No. 2:11-CV-00319-JRG, 2012 WL 4033322, at *2, 3-4 (E.D. Tex. Sep. 12,
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`2012); Select Retrieval, LLC v. L.L. Bean, Inc., Civil No. 2:12-cv-00003-NT, 2012 WL 5381503,
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`at *2-3 (D. Me. Oct. 31, 2012).
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`B.
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`Barnes and Noble’s counterclaims are properly pleaded under the Twombly/Iqbal
`standard
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`In Twombly, the Supreme Court interpreted the standard for pleading claims for relief set
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`forth in Rule 8(a)(2) of the Federal Rules of Civil Procedure, which applies to all civil actions in
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`federal court. Iqbal, 556 U.S. at 684. The standard it announced requires “only ‘a short and
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`plain statement of the claim showing that the pleader is entitled to relief,’ in order to ‘give the
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`defendant fair notice of what the. . . claim is and the ground upon which it rests.’” Twombly,
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`550 U.S. 544, 555 (2007). Determining compliance with this standard is not “a ‘fact-based’
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`question of law,” 556 U.S. at 674, and “does not require ‘detailed factual allegations,’” but a
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`claim for relief must be “plausible on its face.” Id. at 678 (quoting 550 U.S. at 570). After the
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`Twombly and Iqbal decisions, “[d]etermining whether a complaint states a plausible claim for
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`Case 2:12-cv-02823-JPM-tmp Document 50 Filed 07/23/13 Page 5 of 17 PageID 304
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`relief will… be a context-specific task that requires the reviewing court to draw on its judicial
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`experience and common sense.” Id. at 679.
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`Even if this Court finds that the standard articulated in Twombly and Iqbal should apply
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`to counterclaims in patent cases, Barnes & Noble’s counterclaims are still properly pleaded
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`because they state the basis for each claim and provide notice to B.E. Technology of what the
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`claims are. The Eastern District of Texas has taken this approach, holding that in a counterclaim
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`for invalidity, just as in a claim for infringement, allegations must be “clear enough as to
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`effectively put Plaintiff on notice of the legal and factual grounds for the asserted invalidity.”
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`Teirstein v. AGA Med. Corp., Civ. Action No. 6:08cv14, 2009 WL 704138, at *4 (E.D. Tex.
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`Mar. 16, 2009). In Teirstein, the court denied a motion to dismiss the defendant’s counterclaim
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`for declaratory judgment of invalidity. Id. at 6. The counterclaim alleged “[t]he claims of the
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`[patent-in-suit] are invalid for failing to satisfy one or more of the statutory requirements for
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`patentability set forth in 35 U.S.C. §§ 101, 102, 103 and/or 112.” Id. at *4. The court
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`determined that the counterclaim was sufficient under the Twombly standard not only because it
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`put the plaintiff on notice by listing the statutory sections under which the patent was allegedly
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`invalid, but also because it was a “short and plain statement of the claim,” that “show[ed] that the
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`pleader is entitled to relief.” Id. (citing Twombly, 550 U.S. at 555). Barnes & Noble’s
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`counterclaim for declaratory judgment of invalidity uses substantially the same language as that
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`of the defendant in Teirstein. (Counterclaims, ¶ 15.)
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`Several district courts that have adopted local patent rules have determined that the goal
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`of Twombly, “namely, mandating early notice of the factual predicate for the suit so that the court
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`may weed out unmeritorious claims and relieve the defendant from the burden of unnecessary
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`discovery,” is met by local patent rules that require detailed information regarding a defendant’s
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`5
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`Case 2:12-cv-02823-JPM-tmp Document 50 Filed 07/23/13 Page 6 of 17 PageID 305
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`non-infringement and invalidity theories to be served early in the case. Palmetto Pharms. LLC v.
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`AstraZeneca Pharms. LP, No. 2:11-cv-00807, 2012 WL 6025756, *6 (D.S.C. Nov. 6, 2012)
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`(quoting Graphic Packaging Int’l, Inc. v. C.W. Zumbiel Co., No. 1:10-cv-3008-AT, 2011 WL
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`5829674, at *2 (N.D. Ga. Aug 1, 2011); see also Adair v. Boat Dock Innovations, LLC, 2013 WL
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`1859200, *2-*3 (N.D. Ga. 2013); Wistron Corp. v. Phillip M. Adams & Assocs., LLC, No. C-10-
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`4458, 2011 WL 1654466 (N.D. Cal. Apr. 28, 2011); Microsoft Corp. v. Phoenix Solutions, Inc.,
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`741 F.Supp.2d 1156 (C.D. Cal. 2010); Pfizer Inc. v. Apotex Inc., 726 F. Supp. 2d 921 (N.D. Ill.
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`2010); Teirstein v. AGA Medical Corp., No. 6:08cv14, 2009 WL 704138 (E.D. Tex. Mar. 16,
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`2009). For example, in Teirstein, the court noted with regard to the defendant’s invalidity
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`counterclaim that “[t]he factual allegations which Plaintiff suggests are missing from
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`Defendant’s counterclaim include the same information that the Patent Rules require parties to
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`disclose in the Invalidity Contentions” and, therefore, “[r]equiring such allegations to be
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`included in the pleadings would turn the Invalidity Contentions required by the Local Patent
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`Rules into an exercise in futility.” 2009 WL 704138 at *5.
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`This District has Local Patent Rules that require defendants to serve detailed non-
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`infringement contentions within twenty-eight days of a plaintiff’s service of infringement
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`contentions. LPR 3.3 & 3.4. The Local Patent Rules also require invalidity and unenforceability
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`contentions to be served within ninety days after a responsive pleading is filed. LPR 3.5. Thus,
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`it is not necessary to subject Barnes & Noble’s counterclaims to a heightened standard at the
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`pleading stage. Barnes & Noble’s counterclaims are sufficiently pleaded. In its counterclaim for
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`declaratory judgment of non-infringement, Barnes & Noble provides a short and plain statement
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`that is facially plausible and should be considered in the context of the Local Patent Rules’
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`requirement for the early detailed disclosure of a defendant’s non-infringement theory. In its
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`counterclaim for declaratory judgment of invalidity, Barnes & Noble names the statutory bases
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`for invalidity and further narrows the allegations by pointing to specific sections. This level of
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`specificity matches Forms 18 and 30, as well as the allegations accepted by the courts in the
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`cases cited above. These counterclaims are sufficient because they notify B.E. Technology of
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`the statutory arguments Barnes & Noble anticipates advancing at trial.
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`C.
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`Barnes and Noble’s counterclaims are pleaded with specificity equal to plaintiff’s
`claims
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`B.E. Technology’s Complaint does little more than generally describe the patent it
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`asserts, (Compl. ¶¶ 6-7) and then allege, only in the most broad and conclusory terms, that
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`Barnes & Noble infringes at least claim 2 of that patent (Compl. ¶ 11). Barnes & Noble’s
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`counterclaims are supported by at least the same level of detail. Barnes & Noble pleads that its
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`accused products, the NOOK Simple Touch, NOOK Simple Touch with GlowLight, NOOK
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`Color, and NOOK Tablet do not infringe the ‘290 patent and cites specific statutory sections
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`under which the ‘290 might be invalid; nothing more is required at the pleading stage. B.E.
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`Technology’s motion improperly demands more detail from Barnes & Noble than B.E.
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`Technology itself has provided.
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`There is simply no basis for applying a heightened standard to a patent defendant’s
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`counterclaims as compared to the standard applied to the claims in a patent plaintiff’s complaint.
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`Microsoft Corp. v. Phoenix Solutions, Inc., 741 F.Supp.2d 1156, 1159 (C.D. Cal. 2010) (“[I]t
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`would be incongruous to require heightened pleading when the pleading standard for
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`infringement does not require facts such as ‘why the accused products allegedly infringe’ or ‘to
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`specifically list the accused products.’”) (citing Teirstein v. AGA Medical Corp., No. 6:08-cv-14,
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`2009 WL 704138, *5 (E.D. Tex. Mar. 16, 2009). However, that would be the effect of granting
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`B.E. Technology’s motion.
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`Case 2:12-cv-02823-JPM-tmp Document 50 Filed 07/23/13 Page 8 of 17 PageID 307
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`Though B.E. Technology contends that Barnes & Noble should identify which products
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`do not infringe the patent-in-suit and state why not, such a requirement is far beyond the
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`specificity that plaintiff includes in its own complaint. B.E. Technology insists in its motion that
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`Barnes & Noble must explain why its products do not infringe the patent-in-suit; however, B.E.
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`Technology’s Complaint does not inform Barnes & Noble of the basis of its infringement claims.
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`Nor had B.E. Technology served contentions informing Barnes & Noble of the basis of its
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`infringement claims when Barnes & Noble answered. In fact, it filed its motion to dismiss
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`Barnes & Noble’s counterclaims before serving its contentions. As a result, granting B.E.
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`Technology’s motion would improperly shift the burden on infringement issues from plaintiff to
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`defendant because it would require Barnes & Noble to articulate non-infringement theories
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`before the plaintiff has articulated the basis of its infringement claims. Requiring Barnes &
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`Noble to disclose such a detailed non-infringement position so early would also set this Court’s
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`Local Patent Rules on their head. Local Patent Rule 3.3 requires specific disclosure of non-
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`infringement contentions -- after the disclosure of infringement contentions, not before.
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`B.E. Technology’s motion to dismiss Barnes & Noble’s counterclaims should be denied
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`for the reasons stated above. Alternatively, to the extent that the Court grants B.E. Technology’s
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`motion, Barnes & Noble respectfully requests leave to amend its counterclaims, by a date
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`following completion of the non-infringement and invalidity contentions required by the Local
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`Patent Rules. See Shane v. Bunzl Distrib. USA, Inc., 200 F. App’x 397, 405-06 (6th Cir. 2006)
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`(allowing a party to amend dismissed claims when amendment addressed reasons for dismissal)
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`(citing Forman v. Davis, 371 U.S. 178, 182 (1962).
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`III. Barnes & Noble’s Affirmative Defenses Should Not Be Stricken
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`The purpose of a motion to strike pursuant to Federal Rule of Civil Procedure 12(f) is to
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`eliminate “redundant, immaterial, impertinent or scandalous matter in any pleading, and [it] is
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`Case 2:12-cv-02823-JPM-tmp Document 50 Filed 07/23/13 Page 9 of 17 PageID 308
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`the primary procedure for objecting to an insufficient defense.” Barry Fiala, Inc. v. Arthur
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`Blank & Co., Inc., No. 2:02-cv-2282, 2003 WL 22309442 (W.D. Tenn., Feb. 19, 2003) (citing
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`5A Charles Alan Wright & Arthur R. Miller, Federal Practice & Procedure § 1380 (2d ed.
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`1990)). A motion to strike must be denied unless Plaintiff has “shown that the allegations being
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`challenged are so unrelated to plaintiff’s claims as to be unworthy of any consideration as a
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`defense and that their pleading throughout the proceeding will be prejudicial to the moving
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`party.” Kilgore-Wilson v. Home Depot U.S.A., 2:11-cv-02601-JTF, 2012 WL 4062663, at *2
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`(W.D. Tenn. Sept. 14, 2012) (“It is ‘well established that the action of striking a pleading should
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`be sparingly used by the courts.’”) (citing Brown v. Williamson Tobacco Corp. v. United States,
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`201 F.2d 819, 822 (6th Cir. 1953) (internal citations omitted)).
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`The Sixth Circuit generally disfavors motions to strike, recognizing that they serve as “a
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`drastic remedy to be resorted to only when required for the purposes of justice.” Brown v.
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`Williamson Tobacco Corp. v. United States, 201 F.2d 819, 822 (6th Cir. 1953) (citations
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`omitted); see also Wright & Miller, § 1380, at 647-49 (“motions under Rule 12(f) are viewed
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`with disfavor and are infrequently granted”). This Court has specifically admonished plaintiffs
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`for moving to strike affirmative defenses before any discovery has occurred. See Damron v.
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`ATM Central LLC, No. 1:10-cv-01210-JDB-egb, 2010 WL 6512345, *2-3 (W.D. Tenn. Oct. 29,
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`2010) (denying motion to strike and noting that the motion was “particularly inappropriate at this
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`early stage, before any discovery has occurred”). This is particularly true in patent cases, where,
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`as B.E. Technology acknowledges in its Motion, this District’s Local Patent Rules provide a
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`deadline, early in the discovery period, for Barnes & Noble to detail its contentions, such as non-
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`infringement and invalidity.
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`A.
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`The pleading standard of Twombly and Iqbal does not apply to affirmative
`defenses
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`B.E. Technology argues that the heightened pleading standard set forth in Twombly and
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`Iqbal apply to affirmative defenses. However, the Supreme Court did not purport to apply the
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`Rule 8(a) standard, as interpreted in those cases, to affirmative defenses. Iqbal, 556 U.S. at 677
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`(interpreting Fed. R. Civ. P. 8(a)(2), which applies to claims for relief); Twombly, 550 U.S. at
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`555 (same). Furthermore, the Sixth Circuit has declined to impose a heightened pleading
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`standard in a post-Iqbal/Twombly decision, stating that “[t]he Federal Rules of Civil Procedure
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`do not require a heightened pleading standard for… defense[s].” Montgomery v. Wyeth, 580
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`F.3d 455, 468 (6th Cir. 2009). In Montgomery, the Sixth Circuit affirmed the district court’s
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`finding that defendants had satisfied the requirements of Rule 8(b)(1) and had successfully
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`preserved their statute of repose defense by stating in their Answer that “Plaintiff’s causes of
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`action are barred in whole or in part by the applicable statutes of limitations and repose,” and
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`noting the statutory basis for their affirmative defense. Id. at 467-68. This District has followed
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`suit. In Damron, the Court upheld the fair notice standard for affirmative defenses and denied a
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`plaintiff’s motion to strike. Damron, 2010 WL 6512345, at *2-3. Likewise, in Kilgore-Wilson,
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`the Court refused to apply a heightened pleading standard and further found that “even assuming,
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`arguendo, the Twombly applies to affirmative defenses, the… [defendant’s] affirmative defenses
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`sufficiently meet that standard… [because] [w]hile [they] may lack specific factual details, they
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`provide Plaintiff with ‘fair notice of the defense that is being advanced’ and ‘the grounds for
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`entitlement to relief.” Kilgore-Wilson, 2012 WL 4062663, at *3. The law in this Circuit is clear:
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`to comply with Rules 8 and 12, a defendant need only submit “a simple and concise statement
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`raising the affirmative defenses.” Id. at *3 (citing Montgomery, 580 F.3d at 467-68).
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`Case 2:12-cv-02823-JPM-tmp Document 50 Filed 07/23/13 Page 11 of 17 PageID 310
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`The textual differences between the rules governing claims for relief and those governing
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`defenses support the Sixth Circuit’s decision to decline to apply a heightened pleading standard
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`to affirmative defenses. Rule 8(c) of the Federal Rules of Civil Procedure establishes the level of
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`pleading required for affirmative defenses. It states that “[i]n responding to a pleading, a party
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`must affirmatively state any avoidance or affirmative defense,” then goes on to list several of the
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`defenses a defendant might state. Fed. R. Civ. P. 8(c). B.E. Technology argues that this Court
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`should look to Rule 8(b) instead, which requires a party to “state in short and plain terms its
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`defenses to each claim asserted against it.” Whether subsection (b) or (c) is the appropriate
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`section to apply, however, does not matter; under either subsection the pleading standard is less
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`stringent than under subsection (a), which calls for “a short and plain statement of the claim
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`showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a) (emphasis added). The
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`“showing” requirement of Rule 8(a) is notably absent from Rule 8(b) and (c), which require only
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`that the defendant “state” its defenses. See, e.g., Damron, 2010 WL 6512345, at *2; McLemore
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`v. Regions Bank, Nos. 3:08-cv-0021; 3:08-cv-1003, 2010 WL 1010092, at *13 (M.D. Tenn. Mar.
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`18, 2010), aff’d, 682 F.3d 414 (6th Cir. 2012); see also Falley v. Friends Univ., 787 F. Supp. 2d
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`1255, 1258 (D. Kan. 2011) (“Whether both Rule 8(b) and (c) apply to affirmative defenses or not
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`is immaterial here. Either way, the requirement is markedly less demanding than that of Rule
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`8(a), where a pleading must show an entitlement to relief.”) (emphasis in original).
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`The rationale supporting the application of the Twombly and Iqbal standard to claims for
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`relief simply does not apply to affirmative defenses. The heightened standard seeks to avoid the
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`situation where “allowing threadbare complaints to survive a Rule 12(b)(6) motion to dismiss
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`would unjustifiably subject more defendants to the burdens of discovery.” Tyco Fire Prods. LP
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`v. Victaulic Co., 777 F. Supp. 2d 893, 899 (E.D. Pa. 2011) (quoting Fed. Trade Comm’n v. Hope
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`Case 2:12-cv-02823-JPM-tmp Document 50 Filed 07/23/13 Page 12 of 17 PageID 311
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`Now Modifications, LLC, Civil No. 09-1204 (JBS/JS), 2011 WL 883202, at *3 (D.N.J. Mar. 10,
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`2011)); see also Ferring B.V. v. Watson Labs., Inc., No. 3:11-cv-00481-RCJ-VPC, 2012 WL
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`607539, at *2-3 (D. Nev. Feb. 24, 2012) (noting purpose of Rule 8(a) is to prevent the threat of
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`burdensome discovery based on meritless claims). But “[t]his purpose would not be served by
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`imposing a more detailed pleading standard for affirmative defenses, because a plaintiff against
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`whom an affirmative defense is pled already desires to invoke the discovery process and does not
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`aim to avoid it.” Ferring, 2012 WL 607539, at *3.
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`Other practical considerations also demonstrate the necessity of applying different
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`pleading standards for affirmative defenses and claims for relief. A plaintiff may take as much
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`time as is required, limited only by the relevant statute of limitations, to investigate and frame its
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`complaint; defendants, on the other hand, have a relatively short amount of time (typically
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`twenty-one days) to prepare a response. Memory Control Enter. LLC v. Edmunds.com, No. CV
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`11-7658 PA (JCx), 2012 WL 681765, at *5 (C.D. Cal. Feb. 8, 2012); Bayer CropScience AG v.
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`Dow AgroSciences LLC, Civil No. 10-1045 RMB/JS, 2011 WL 6934557, at *1 (D. Del. Dec. 30,
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`2011). Even where, as here, a defendant had an extension of time to Answer, applying a
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`heightened pleading standard to affirmative defenses is impractical, especially in patent cases,
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`which often require extensive investigation to gather prior art and a detailed review of the patent-
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`in-suit’s prosecution history, as well as a thorough understanding of the accused products and --
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`critically -- of how the plaintiff is attempting to apply its patent claims to those products.
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`Moreover in contrast to claims for relief, to which the opposing party must formulate a response,
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`affirmative defenses require no response at the pleading stage. See Memory Control Enter., 2012
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`WL 681765, at *5; Tyco Fire Prods. LP, 777 F. Supp. 2d at 901 (reasoning that the “need for
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`Case 2:12-cv-02823-JPM-tmp Document 50 Filed 07/23/13 Page 13 of 17 PageID 312
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`notice of an affirmative defense is. . . diminished considerably” because no responsive pleading
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`is required).
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`The history and role of Rule 12(f) supports the practice of simply identifying affirmative
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`defenses as sufficient to put the plaintiff on notice of issues for trial. Although it is true that
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`Rule 12(f) was modified specifically to address insufficient defenses, it is clear from the notes of
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`the Advisory Committee that the amended Rule 12(f) was intended to address defenses that were
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`insufficient as a matter of law. The notes cite cases that illustrate the kind of attack the new rule
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`would encompass, and those cases involve challenges to legal, rather than factual sufficiency.
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`Advisory Comm. Report, supra, at 17 (citing Dysart v. Remington Rand, Inc., 31 F. Supp. 296,
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`297 (D. Conn. 1939) (“[P]laintiff seeks. . . a ruling on the legal sufficiency of defenses two to
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`thirteen.”); Eastman Kodak Co. v. McAuley, 2 F.R.D. 21, 24 (S.D.N.Y. 1941) (“This question of
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`sufficiency in law should be attacked by a motion to dismiss for insufficiency. . . .”); Indem. Ins.
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`Co. of N. Am. v. Pan Am. Airways, Inc., 58 F. Supp. 338, 339 (S.D.N.Y. 1944) (“[I]n substance
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`the object of the motion is to challenge three affirmative defenses on the ground that they fail to
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`state legal defenses to the claims asserted in the complaint.”)).
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`B.
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`Barnes & Noble’s Affirmative Defenses are Adequately Stated and Provide
`Adequate Notice of the Issues to be Tried
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`B.E. Technology does not dispute that the legal basis for each of Barnes & Noble’s
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`affirmative defenses is sufficiently stated. Barnes & Noble’s first and second affirmative
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`defenses state that Barnes & Noble has not infringed the patent-in-suit and that the claims of the
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`patent-in-suit are invalid. (Dkt. No. 26, Defenses, ¶¶ 1-2). As explained in section III.C above,
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`Barnes & Noble’s first and second affirmative defenses contain the same amount of detail as
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`plaintiff’s claims for infringement and give plaintiff fair notice of the arguments Barnes & Noble
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`intends to advance at trial.
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`Case 2:12-cv-02823-JPM-tmp Document 50 Filed 07/23/13 Page 14 of 17 PageID 313
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`Barnes & Noble’s assertion of its third affirmative defense, prosecution history estoppel,
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`also provides sufficient notice to B.E. Technology of the argument being advanced. Prosecution
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`history estoppel is a narrow legal doctrine with “limited application.” Teirstein, 2009 WL
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`704138, at *7. Barnes & Noble’s identification of the doctrine in its third affirmative defense
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`should be “all that is necessary to put Plaintiff on fair notice of the defense being alleged.” Id.
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`(declining to strike an affirmative defense stating that plaintiff’s claims “are barred, in whole or
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`in part, by the doctrine of prosecution history estoppel”). Similarly, identification of the
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`equitable doctrines in Barnes & Noble’s sixth affirmative defense notifies B.E. Technology of its
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`defenses of laches, waiver, and estoppel, each of which are relatively circumspect in their
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`potential application to this particular case. In particular, B.E. Technology alleges that the ‘290
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`patent was issued in 2004. (Compl. ¶¶ 8.) Barnes & Noble’s NOOK products have been on the
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`market for several years, yet B.E. Technology waited until September 2012 to bring suit. (See
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`Compl.) The intervening time gives rise to a number of inferences that support the application of
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`these equitable defenses to B.E. Technology’s requested relief. See Teirstein, 2009 WL 704138,
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`at *7-8.
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`B.E. Technology argues that Barnes & Noble’s first, fourth, fifth, and seventh affirmative
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`defenses should be stricken because they are redundant to the denials in Barnes & Noble’s
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`answer. (Motion Supra, at 17, 18.) Even if this were true -- which it is not -- redundancy,
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`standing alone, would be no basis for striking them.
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`But it is not true that these defenses are redundant, and there are other reasons they
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`should not be stricken. Striking the first affirmative defense would contradict the Patent Act,
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`which specifically requires that the defense of non-infringement be pleaded. 35 U.S.C. § 282(b)
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`(2012). The fourth affirmative defense should not be stricken because it is not redundant to any
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`Case 2:12-cv-02823-JPM-tmp Document 50 Filed 07/23/13 Page 15 of 17 PageID 314
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`other part of the answer. The inclusion of the fourth defense makes clear that Barnes & Noble
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`affirmatively challenges B.E. Technology’s right to injunctive relief, particular in light of the
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`Supreme Court’s decision in eBay Inc. v. MercExchange, L.L.C., which rejected the “general rule
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`that courts will issue permanent injunctions against patent infringement absent exceptional
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`circumstances” and clearly stated that, even in patent cases, a party must establish a right to
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`injunctive relief by demonstrating that each element of the traditional four part test for injunctive
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`relief described in eBay has been satisfied. 547 U.S. 388 (2006). The fifth affirmative defense is
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`also not redundant to any other part of the answer. Rather than simply denying that B.E.
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`Technology is entitled to relief, as mentioned earlier in the answer, the fifth affirmative defense
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`refers to specific statutory sections that may limit B.E.’s recovery. The seventh defense, like the
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`others, is not redundant of material elsewhere in Barnes & Noble’s Answer. The defense
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`affirmatively states Barnes & Noble’s belief that B.E. Technology’s case is without merit; the
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`defense is not in any way prejudicial to B.E. Technology and should not be stricken.
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`Barnes & Noble has stated its affirmative defenses with sufficient specificity to provide
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`B.E. Technology with notice of the issues it plans to pursue in this case. B.E. Technology’s
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`motion, therefore, should be denied. Alternatively, to the extent that the Court grants B.E.
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`Technology’s motion, Barnes & Noble respectfully requests leave to amend its affirmative
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`defenses.
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`C.
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`Barnes & Noble’s Affirmative Defenses Meet the Heightened Standard of
`Twombly and Iqbal
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`Even if this Court determines that the pleading standard developed in Twombly and Iqbal
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`applies to Barnes & Noble’s affirmative defenses, they satisfy that standard because, when
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`view