Case 2:12-cv-02825-JPM-tmp Document 48 Filed 07/15/13 Page 1 of 20 PageID 461
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`
`B.E. TECHNOLOGY, L.L.C.,
`
`
`
`
`
`
`
`
`
`v.
`
`Plaintiff,
`
`Civil Action No. 12-cv-02824-JPM-tmp
`
`JURY TRIAL DEMANDED
`
`SAMSUNG
`
`TELECOMMUNICATIONS
`
`AMERICA, LLC,
`
`
`
`
`
`Defendant.
`
`B.E. TECHNOLOGY, L.L.C.,
`
`
`
`
`
`
`
`
`
`v.
`
`Plaintiff,
`
`Civil Action No. 12-cv-02825-JPM-tmp
`
`JURY TRIAL DEMANDED
`
`SAMSUNG ELECTRONICS AMERICA
`
`INC.,
`
`
`
`
`
`
`
`Defendant.
`
`DEFENDANTS SAMSUNG TELECOMMUNICATIONS AMERICA, LLC AND
`SAMSUNG ELECTRONICS AMERICA INC.’S OPPOSITION TO B.E.
`TECHNOLOGY’S MOTION TO STRIKE AFFIRMATIVE DEFENSES
`
`
`
`
`
`

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`Case 2:12-cv-02825-JPM-tmp Document 48 Filed 07/15/13 Page 2 of 20 PageID 462
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`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`INTRODUCTION ...............................................................................................................1
`
`NATURE AND STAGE OF THE PROCEEDINGS ..........................................................2
`
`PLAINTIFF’S MOTION TO STRIKE SHOULD BE DENIED ........................................3
`A. Motions to Strike Are Heavily Disfavored and Rarely Granted ............................. 3
`The Twombly/Iqbal Standard Does Not Apply to Affirmative Defenses ............... 4
`B.
`C.
`Each of Samsung’s Affirmative Defenses Has Been Adequately Pleaded ............. 8
`1. Failure to State a Claim .................................................................................... 8
`2. Non-infringement ............................................................................................. 9
`3. Invalidity ........................................................................................................ 10
`4. Prosecution History Estoppel ......................................................................... 11
`5. Waiver, Estoppel, Laches and Equitable Estoppel ......................................... 12
`6. Doctrine of Unclean Hands ............................................................................ 12
`7. Adequate Remedy at Law and Additional Affirmative Defenses .................. 13
`
`IV.
`
`CONCLUSION ..................................................................................................................13
`
`
`i
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`
`

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`Case 2:12-cv-02825-JPM-tmp Document 48 Filed 07/15/13 Page 3 of 20 PageID 463
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`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Aptix Corp. v. Quickturn Design Systems, Inc.,
`269 F.3d 1369 (Fed. Cir. 2001) ................................................................................................. 12
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ................................................................................................................ 1, 7
`
`Avocent Redmond Corp. v. United States,
`85 Fed. Cl. 724 (Ct. Fed. Cl. 2009) ............................................................................................. 9
`
`Barry Fiala, Inc. v. Arthur Blank & Co., Inc.,
`No. 2:02-cv-2282, 2003 WL 22309442 (W.D. Tenn., Feb. 19, 2003) ........................................ 3
`
`Bayer Cropscience AG v. Dow Agrosciences LLC,
`No. 10-CV-1045, 2011 WL 6934557 (D. Del. Dec. 30, 2011) ................................................... 6
`
`Bell Atlantic Corp. v. Twombly,
`550 U.S. 544 (2007) ................................................................................................................ 1, 7
`
`Brown & Williamson Tobacco Corp. v. United States,
`201 F.2d 819 (6th Cir. 1953) ....................................................................................................... 4
`
`Damron v. ATM Central LLC,
`No. 1:10-cv-01210-JDB-egb, 2010 WL 6512345 (W.D. Tenn. Oct. 29, 2010) ............... 4, 7, 13
`
`Duramed Pharms., Inc. v. Watson Labs., Inc.,
`308-CV-00116-LRH-RAM, 2008 WL 5232908 (D. Nev. Dec. 12, 2008) ......................... 10, 13
`
`Elan Pharma Int'l Ltd. v. Lupin Ltd.,
`CIV. A. 09-1008 JAG, 2010 WL 1372316 (D.N.J. Mar. 31, 2010) .................................. 5, 7, 10
`
`Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
`493 F.3d 1368 (Fed. Cir. 2007) ................................................................................................. 11
`
`First Nat'l Ins. Co. of Am. v. Camps Servs.,
`No. 08-cv-12805, 2009 WL 22861 (E.D. Mich. Jan. 5, 2009) .................................................... 6
`
`Graphic Packaging Int’l, Inc. v. C.W. Zumbiel Co.,
`No. 1:10-cv-3008, 2011 WL 5829674 (N.D. Ga. Aug. 1, 2011) .............................................. 10
`
`Keene Corp. v. United States,
`508 U.S. 200 (1993) .................................................................................................................... 5
`
`Kilgore-Wilson v. Home Depot USA,
`No. 2:11-cv-02601 JTF-cgc, 2012 WL 4062663 (W.D. Tenn. Sept. 14, 2012).................. 4, 5, 7
`ii
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`
`

`
`Case 2:12-cv-02825-JPM-tmp Document 48 Filed 07/15/13 Page 4 of 20 PageID 464
`
`
`Mark IV Industries Corp. v. Transcore, L.P.,
`C.A. No. 09-418, 2009 WL 4828661 (D. Del. Dec. 2, 2009) ..................................................... 8
`
`McLemore v. Regions Bank,
`Nos. 3:08–cv–0021 & 3:08–cv–1003, 2010 WL 1010092 (M.D. Tenn. Mar. 18, 2010) ........... 5
`
`Microsoft Corp. v. Phoenix Sol’ns, Inc.,
`741 F. Supp. 2d 1156 (C.D. Cal. 2010) ....................................................................................... 7
`
`Montgomery v. Wyeth,
`580 F.3d 455 (6th Cir. 2009) ....................................................................................................... 5
`
`MTA Metro-North R.R. v. Buchanan Marine, L.P.,
`No. 3:05cv881 (PCD), 2006 WL 3544936 (D. Conn. Dec. 8, 2006) .......................................... 8
`
`Paducah River Painting, Inc. v. McNational, Inc.,
`5:11-cv-00135-R, 2011 WL 5525938 (W.D. Ky. Nov. 14, 2011) ............................................ 10
`
`Penn Mut. Life Ins. Co. v. Norma Espinosa 2007-1 Ins. Trust,
`C.A. No. 09–300–LPS, 2011 WL 710970 (D. Del. Feb. 22, 2011) ............................................ 6
`
`Pfizer Inc. v. Apotex Inc.,
`726 F. Supp. 2d 921 (N.D. Ill. 2010) .................................................................................... 7, 10
`
`Rosada v. John Wieland Homes & Neighborhoods, Inc.,
`No. 3:09–cv–653–J–20MCR, 2010 WL 1249841 (M.D. Fla. Mar. 25, 2010) ............................ 8
`
`Senju Pharms. v. Apotex, Inc.,
`--- F. Supp. 2d ----, 2013 WL 444928 (D. Del. Feb. 6, 2013) ..................................................... 6
`
`Symbol Techs., Inc. v. Aruba Networks, Inc.,
`609 F. Supp. 2d 353 (D. Del. 2009) .......................................................................................... 12
`
`Teirstein v. AGA Medical Corp.,
`No. 6:08cv14, 2009 WL 704138 (E.D. Tex. Mar. 16, 2009) .............................................. 10, 11
`
`Wedgetail Ltd. v. Huddleston Deluxe, Inc.,
`576 F.3d 1032 (Fed. Cir. 2012) ................................................................................................... 9
`
`Statutes
`
`35 U.S.C. § 1 ................................................................................................................................. 12
`
`35 U.S.C. § 101 ............................................................................................................................. 12
`
`35 U.S.C. § 102 ............................................................................................................................. 12
`
`35 U.S.C. § 103 ............................................................................................................................. 12
`
`iii
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`

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`35 U.S.C. § 112 ............................................................................................................................. 12
`
`35 U.S.C. § 116 ............................................................................................................................. 12
`
`35 U.S.C. § 119 ............................................................................................................................. 12
`
`35 U.S.C. § 120 ............................................................................................................................. 12
`
`Rules
`
`Fed. R. Civ. P. § 12 ......................................................................................................................... 3
`
`Fed. R. Civ. P. § 15 ......................................................................................................................... 3
`
`Fed. R. Civ. P. § 8 ......................................................................................................................... 12
`
`
`
`iv
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`

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`Case 2:12-cv-02825-JPM-tmp Document 48 Filed 07/15/13 Page 6 of 20 PageID 466
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`Defendants Samsung Electronics America,
`
`Inc.
`
`(“SEA”)
`
`and
`
`Samsung
`
`Telecommunications America, LLC
`
`(“STA”, collectively with SEA, “Samsung” or
`
`“Defendants”), by and through their undersigned counsel, hereby submit this Response in
`
`Opposition to Plaintiff B.E. Technology LLC’s Motion to Strike Affirmative Defenses.
`
`I.
`
`INTRODUCTION
`
`By its motion, which seeks to strike all of Samsung’s affirmative defenses, Plaintiff asks
`
`the Court to hold Samsung to a higher pleading standard for its affirmative defenses than
`
`Plaintiff for its infringement claims. This premise is nonsensical and plainly fails under
`
`established law, including Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007), and Ashcroft v.
`
`Iqbal, 556 U.S. 662 (2009). In fact, Plaintiff admits in its brief that there is no case law from this
`
`Circuit supporting its position that a heightened standard applies to Samsung’s affirmative
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`defenses.
`
`As discussed more fully below, Plaintiff’s motion is especially misplaced in light of the
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`lack of specificity in its own Complaint and initial infringement contentions. Indeed, the
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`Complaint fails to explain why Samsung allegedly infringes the patent-in-suit even though there
`
`was no time limit on Plaintiff’s pre-suit investigation. Exacerbating the problem, Plaintiff’s
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`January 7, 2013 infringement contentions are similarly wanting in specificity and accuse
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`products not even sold in the United States. While Samsung promptly notified Plaintiff of these
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`deficiencies, Plaintiff has thus far declined to supplement its contentions. Yet, Plaintiff still
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`contends that Samsung is required to plead non-infringement and other affirmative defenses
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`without adequate notice of the allegations lodged against it.
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`

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`Case 2:12-cv-02825-JPM-tmp Document 48 Filed 07/15/13 Page 7 of 20 PageID 467
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`For these reasons, it is respectfully submitted that Plaintiff’s motion should be denied in
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`its entirety. In the alternative, Samsung respectfully requests leave to amend its affirmative
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`defenses.
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`II.
`
`NATURE AND STAGE OF THE PROCEEDINGS
`
`B.E. Technology LLC (“Plaintiff” or “B.E.”) initiated this suit in which it alleges that
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`Samsung has infringed certain claims of U.S. Patent No. 6,771,290 (the “’290 patent” or the
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`“patent-in-suit”). (See D.E. 1.)1 However, Plaintiff’s Complaint does not explain why
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`Samsung’s products (of which 23 were identified) allegedly infringe the asserted claims. (See
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`id.) Rather, Plaintiff states only that Samsung “has infringed at least Claim 2 of the ’290 patent
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`by using, selling, and offering to sell in the United States tablet computer products that directly
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`infringe at least Claim 2 of the ’290 patent either literally or under the doctrine of equivalents.”
`
`(Id. at 3.)
`
`On December 31, 2012, SEA and STA filed separate Answers, asserting several
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`affirmative defenses. (Case Nos. 12-cv-02824-JPM-tmp, D.E. 22 (STA); 12-cv-02825-JPM-
`
`tmp, D.E. 26 (SEA).)
`
`On January 7, 2013, Plaintiff served its preliminary infringement contentions pursuant to
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`Local Patent Rules 3.1 and 3.2 (“PICs”). Plaintiff’s PICs comprise over 10,000 pages of claim
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`charts, and expanded the list of accused products from 23 in the Complaint to 177. However,
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`despite their length, Plaintiff’s PICs fail to specifically describe the bases for Plaintiff’s
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`infringement claims. Instead they include a series of “screen shots” without any further
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`explanation as to where each limitation of the asserted claims is found in the accused products.
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`In addition, the PICs allege infringement under the Doctrine of Equivalents but provide no
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`
`
`1 Unless otherwise noted, all references to the docket are to Case No. 12-cv-02824-JPM-tmp.
`-2-
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`

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`explanation as to the bases for those allegations. Similarly problematic, the PICs allege that
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`certain foreign products infringe the asserted claims despite no evidence to suggest that they are
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`sold within the United States.
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`On January 18, 2013, Samsung sent a letter to Plaintiff (Ex. 12) pointing out exemplary
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`deficiencies in Plaintiff’s PICs and requesting that Plaintiff supplement the same so that
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`Samsung could meet its obligations to provide responsive non-infringement contentions under
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`Local Patent Rules 3.3 and 3.4. However, on January 30, 2013, Plaintiff declined to supplement
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`its PICs, taking a position that its contentions are “sufficiently detailed.” (Ex. 2.)3
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`On January 25, 2013, Plaintiff filed the instant motion (“Motion to Strike”). (Case Nos.
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`12-cv-02824-JPM-tmp, D.E. 29; 12-cv-02825-JPM-tmp, D.E. 33.) Notably, Plaintiff filed the
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`motion without contacting Samsung in an attempt to reach an amicable resolution and avoid
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`burdening the Court, and on the last day Samsung was entitled to amend its answer under
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`Federal Rule of Civil Procedure 15 as a matter of right.
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`III.
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`PLAINTIFF’S MOTION TO STRIKE SHOULD BE DENIED
`
`A. Motions to Strike Are Heavily Disfavored and Rarely Granted
`
`Motions to strike pursuant to Federal Rule of Civil Procedure 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 WL 22309442 (W.D. Tenn., Feb. 19, 2003) (citing
`
`5A Charles Alan Wright & Arthur R. Miller, Federal Practice & Procedure § 1380 (2d ed.1990)).
`
`
`
`2 All exhibits refer to Exhibits to the concurrently filed Declaration of Richard C. Pettus.
`3 Plaintiff’s woefully insufficient contentions (in terms of both detail and analysis), coupled with their
`unjustified refusal to revisit and supplement them, raise serious Rule 11 questions as to whether it has ever had a
`good faith basis for its infringement allegations against any of Samsung’s products, and is particularly troubling in
`view of the recent expansion of those allegations from 23 to 177 products without provision of the requisite
`threshold proofs.
`
`-3-
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`
`

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`Case 2:12-cv-02825-JPM-tmp Document 48 Filed 07/15/13 Page 9 of 20 PageID 469
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`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
`
`party.” Wright & Miller, § 1380, at 650 (emphasis added); see also Kilgore-Wilson v. Home
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`Depot U.S.A., 2:11-cv-02601-JTF, 2012 WL 4062663, at *2 (W.D. Tenn. Sept. 14, 2012) (“It is
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`‘well established that the action of striking a pleading should be sparingly used by the courts.’”)
`
`(citing Brown & Williamson Tobacco Corp. v. United States, 201 F.2d 819, 822 (6th Cir. 1953))
`
`(internal citations omitted).
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`Accordingly, the Sixth Circuit expressly discourages motions to strike, characterizing
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`them as “a drastic remedy to be resorted to only when required for the purposes of justice.”
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`Brown v. Williamson Tobacco Corp. v. United States, 201 F.2d 819, 822 (6th Cir. 1953)
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`(citations omitted); see also Wright & Miller, § 1380, at 647-49 (“motions under Rule 12(f) are
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`viewed with disfavor and are infrequently granted”); id., § 1381, at 672 (“even when technically
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`appropriate and well-founded, they often are not granted in the absence of a showing of prejudice
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`to the moving party.”). Additionally, this Court has specifically admonished plaintiffs for
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`moving to strike affirmative defenses before any discovery has occurred. See Damron v. ATM
`
`Central LLC, No. 1:10-cv-01210-JDB-egb, 2010 WL 6512345, *2-3 (W.D. Tenn. Oct. 29, 2010)
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`(denying motion to strike and noting it is “particularly inappropriate at this early stage, before
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`any discovery has occurred”). Therefore, even if a court grants a motion to strike, “the general
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`practice is to grant the defendant leave to amend.” Id. (citing Wright & Miller § 1381).
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`B.
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`The Twombly/Iqbal Standard Does Not Apply to Affirmative Defenses
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`Samsung’s Affirmative Defenses are adequately stated under Rules 8(b) & (c) and
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`governing precedent. Thus, Plaintiff’s Motion to Strike those defenses pursuant to Rule 12(f)
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`should be denied. As discussed above, the crux of Plaintiff’s Motion is that Samsung should be
`-4-
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`

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`Case 2:12-cv-02825-JPM-tmp Document 48 Filed 07/15/13 Page 10 of 20 PageID 470
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`subject to a higher pleading standard when asserting affirmative defenses than Plaintiff when
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`purporting to state a claim for infringement. (D.E. 29-1 at 2-5.)4 This argument is illogical when
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`applied to Samsung’s affirmative defenses since, unlike a claim, an affirmative defense does not
`
`entitle Samsung to any form of relief. This difference is expressly reflected in the language of
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`Rule 8. Specifically, while Rule 8(a) provides that “a claim for relief” must contain “a short and
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`plain statement of the claim showing that the pleader is entitled to relief,” Rule 8(b), by contrast,
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`requires only that a party “state in short and plain terms its defenses.”5 Consequently, district
`
`courts in the Sixth Circuit have found the Twombly/Iqbal pleading standards inapplicable to the
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`affirmative defenses.6 See, e.g., McLemore v. Regions Bank, Nos. 3:08–cv–0021 & 3:08–cv–
`
`1003, 2010 WL 1010092, at *14 (M.D. Tenn. Mar. 18, 2010) (“The Sixth Circuit has
`
`consistently used ‘fair notice’ as the standard for whether a defendant has sufficiently pleaded an
`
`
`4 Courts have recognized the implausibility of this argument. For example, in Elan Pharma Int'l Ltd. v.
`Lupin Ltd., the court stated:
`
`Elan’s motion to dismiss Lupin’s counterclaims and motion to strike certain affirmative defenses
`for lack of factual information is without a sound foundation. Lupin’s language in its
`counterclaims and affirmative defenses mirrors the language Elan employed in its own Complaint.
`There is no basis for this Court to, on the one hand, allow Elan to plead as it has while, on the
`other hand, require Lupin, inexplicably, to provide more detailed factual support for its
`counterclaims and defenses. The notion that Lupin must identify what theories of invalidity it
`intends to pursue, and the facts supporting such theories at this stage is not plausible.
`
`Elan Pharma Int'l Ltd. v. Lupin Ltd., CIV. A. 09-1008 JAG, 2010 WL 1372316, at *5 (D.N.J. Mar. 31, 2010).
`5 Plaintiff claims that “[n]othing would be added if Rule 8(b)(1)(a) said that [a defendant] must ‘state in
`short and plain terms its defenses to each claim asserted against it showing that the opposing party is not entitled to
`relief.’” (D.E. 29-1 at 7.) However, Plaintiff does not explain why the rule does not state that a defendant must
`“show in short and plain terms its defenses” or why this court should ignore the well-established canon of statutory
`interpretation that different phrasings within a statute should be given different meanings. See Keene Corp. v.
`United States, 508 U.S. 200, 208 (1993) (“where Congress includes particular language in one section of a statute
`but omits it in another…it is generally presumed that Congress acts intentionally and purposely in the disparate
`inclusion or exclusion.”) (internal quotation omitted).
`6 The Sixth Circuit, in a post- Twombly/Iqbal decision, has stated that “[t]he Federal Rules of Civil
`Procedure do not require a heightened pleading standard for a statute of repose defense.” Montgomery v. Wyeth, 580
`F.3d 455, 468 (6th Cir. 2009). Courts in the Sixth Circuit have consistently applied this holding to affirmative
`defenses similar to those raised by Samsung. See, e.g., Kilgore-Wilson v. Home Depot USA, No. 2:11-cv-02601
`JTF-cgc, 2012 WL 4062663, at *3 (W.D. Tenn. Sept. 14, 2012) (“Montgomery strongly bolsters a finding that
`Defendant’s statutory defenses… are sufficiently plead to provide fair notice….As to [] other affirmative defenses…
`the Court finds no reason under Sixth Circuit precedent that these should be subjected to any different level of
`scrutiny than utilized in Montgomery.”)
`
`-5-
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`

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`Case 2:12-cv-02825-JPM-tmp Document 48 Filed 07/15/13 Page 11 of 20 PageID 471
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`affirmative defense. Twombly and Iqbal did not change this.”) (citations omitted); First Nat'l
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`Ins. Co. of Am. v. Camps Servs., No. 08-cv-12805, 2009 WL 22861, at *2 (E.D. Mich. Jan. 5,
`
`2009) (“Twombly’s analysis of the ‘short and plain statement’ requirement of Rule 8(a) is
`
`inapplicable to [a motion to strike affirmative defenses].”); see also Senju Pharms. v. Apotex,
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`Inc., --- F. Supp. 2d ----, 2013 WL 444928, at *4 (D. Del. Feb. 6, 2013) (same).
`
`Further, courts have noted a number of other reasons why the pleading standards for
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`affirmative defenses of the type at issue in this case differ from the standards for pleading claims
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`for relief:
`
`(1)
`
`(2)
`
`(3)
`
`(4)
`
`(5)
`
`(6)
`
`(7)
`
`(8)
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`a diminished concern that plaintiffs receive notice in light of their ability to obtain
`more information during discovery;
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`the absence of a concern that the defense is “unlocking the doors of discovery”;
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`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;
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`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;
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`the lack of detail in Form 30, which demonstrates the appropriate pleading of an
`affirmative defense; and
`
`the fact that a heightened pleading requirement would produce more motions to
`strike, which are disfavored.
`
`See Bayer Cropscience AG v. Dow Agrosciences LLC, No. 10-CV-1045, 2011 WL 6934557, at
`
`*1-2 (D. Del. Dec. 30, 2011). Therefore, motions to strike affirmative defenses are appropriately
`
`viewed as “a drastic remedy,” Penn Mut. Life Ins. Co. v. Norma Espinosa 2007-1 Ins. Trust,
`
`C.A. No. 09–300–LPS, 2011 WL 710970, at *4 (D. Del. Feb. 22, 2011), that should only be
`-6-
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`
`

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`Case 2:12-cv-02825-JPM-tmp Document 48 Filed 07/15/13 Page 12 of 20 PageID 472
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`granted if “they are so unrelated to the plaintiff’s claims as to be unworthy of any consideration
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`as a defense and that their presence in the pleading throughout the proceeding will be prejudicial
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`to the moving party.” Kilgore-Wilson, 2012 WL 4062663, at *3 (internal citations and
`
`quotations omitted); cf. Damron v. ATM Central LLC, No. 1:10-cv-01210-JDB-egb, 2010 WL
`
`6512345, at *2 (W.D. Tenn. Oct. 29, 2010) (affirmative defenses sufficient under the Federal
`
`Rules where they give fair notice and no prejudice is demonstrated); see also Section III.A,
`
`supra.
`
`In the specific context of patent infringement suits, several district courts have concluded
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`that the heightened pleading standard of Iqbal/Twombly does not apply to counterclaims of
`
`patent invalidity when the Court requires invalidity contentions shortly thereafter. See, e.g.,
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`Microsoft Corp. v. Phoenix Sol’ns, Inc., 741 F. Supp. 2d 1156, 1159 (C.D. Cal. 2010)
`
`(“[B]ecause the Court requires that invalidity contentions be served promptly after a
`
`counterclaim of invalidity is advanced, invalidity claims are not subject to the heightened
`
`pleading standards of Twombly and Iqbal.”); Pfizer Inc. v. Apotex Inc., 726 F. Supp. 2d 921, 938
`
`(N.D. Ill. 2010) (“In analogous cases, other district courts have concluded that local patent rules
`
`requiring similar disclosures militate against dismissal of counterclaims for failure to meet the
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`pleading requirements of Rule 8(a).”). The same consideration applies to Samsung’s affirmative
`
`defenses. See, e.g., Elan Pharma, 2010 WL 1372316, at *5 (“This motion suggests a factual
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`disclosure that the Federal Circuit does not require, and a disclosure that, if required here, would
`
`make [the Local Patent Rules] superfluous. This Court cannot rule in a manner that undermines
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`logic, the Federal Rules, and the District of New Jersey Local Patent Rules.”).
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`In light of the Rules, case law, and policy considerations, Plaintiff’s Motion to Strike
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`should be denied. Additional detail is provided below on a defense-by-defense basis.
`
`-7-
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`

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`Case 2:12-cv-02825-JPM-tmp Document 48 Filed 07/15/13 Page 13 of 20 PageID 473
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`C.
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`Each of Samsung’s Affirmative Defenses Has Been Adequately Pleaded
`
`1.
`
`Failure to State a Claim
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`Samsung’s First Affirmative Defense states that “[t]he complaint fails to state a claim
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`upon which relief can be granted.” (See D.E. 22 at 5.) Citing no authority, Plaintiff states that
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`failure to state a claim is not a defense and should thus be stricken. (D.E. 29-1 at 8.) However,
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`at least one court has expressly concluded that failure to state a claim is an appropriate
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`affirmative defense. See, e.g., MTA Metro-North R.R. v. Buchanan Marine, L.P., 2006 WL
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`3544936, at *4 (D. Conn. Dec. 8, 2006) (“It appears to be well settled within the Second Circuit
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`that a party may include a failure to-state-a-claim affirmative defense in its answer.”). In
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`addition, as to the form for pleading, Form 30 of the Federal Rules of Civil Procedure requires
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`just what Samsung included in its answer, and Samsung should be permitted to rely on that form
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`as being sufficient under Rules 8 (b) & (c). See Mark IV Industries Corp. v. Transcore, L.P.,
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`C.A. No. 09-418, 2009 WL 4828661, at *4 (D. Del. Dec. 2, 2009) (“[a]bsent an express
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`abrogation of the[] forms by the Supreme Court, this court presumes that they are ‘sufficient to
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`withstand attack under the rules under which they are drawn’ and may be relied upon”).
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`Moreover, even if failure to state a claim were not a defense, “when a party incorrectly labels a
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`negative averment as an affirmative defense rather than as a specific denial[,] . . . the proper
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`remedy is not [to] strike the claim, but rather to treat [it] as a specific denial.” Rosada v. John
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`Wieland Homes & Neighborhoods, Inc., No. 3:09–cv–653–J–20MCR, 2010 WL 1249841, at *2
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`(M.D. Fla. Mar. 25, 2010) (internal quotation omitted). Therefore, Samsung has sufficiently
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`stated its First Affirmative Defense and Plaintiff’s Motion should be denied as to this defense.
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`-8-
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`

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`Case 2:12-cv-02825-JPM-tmp Document 48 Filed 07/15/13 Page 14 of 20 PageID 474
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`2.
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`Non-infringement
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`Samsung’s Second Affirmative Defense states that Defendants have not directly or
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`indirectly infringed any of the patents-in-suit, either literally or under the doctrine of equivalents.
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`(See, e.g., D.E. 22 at 5.) This defense is preceded by the admissions, allegations, and denials
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`contained in Samsung’s Answers. As a result, by incorporation, Samsung has also stated that
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`none of the products identified in Plaintiff’s Complaint infringes any of the asserted claims of the
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`patents-in-suit. (See, e.g., D.E. 22 at 2-5) Samsung’s Answers thus provide sufficient specificity
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`to state a non-infringement defense under Rules 8 (b) & (c), particularly since they contain the
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`same level as detail as Plaintiff’s infringement claim to which they are responding. See, e.g.,
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`Avocent Redmond Corp. v. United States, 85 Fed. Cl. 724, 725 (Ct. Fed. Cl. 2009) (finding
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`affirmative defense of non-infringement sufficient where it stated “[n]either the accused products
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`nor Rose have infringed or infringe any of the asserted claims of the patents-in-suit, either
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`directly, indirectly, literally, or under the doctrine of equivalents”). Therefore, Samsung’s
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`Second Affirmative Defense is properly stated under Rules 8 (b) & (c) and Plaintiff’s Motion as
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`to this defense should be denied.
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`Moreover, even if Plaintiff were correct that non-infringement is not a defense,
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`Samsung’s non-infringement affirmative defense should not be stricken but, instead, should be
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`treated as a counterclaim. Cf. Wedgetail Ltd. v. Huddleston Deluxe, Inc., 576 F.3d 1032, 1303-
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`04 (Fed. Cir. 2012) (noting without comment that the accused infringer counterclaimed for non-
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`infringement). “If a party mistakenly designates a defense as a counterclaim, or a counterclaim
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`as a defense, the court must, if justice requires, treat the pleading as though it were correctly
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`designated” under such terms the court thinks appropriate. Fed. R. Civ. P. 8 (c)(2).
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`-9-
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`

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`Case 2:12-cv-02825-JPM-tmp Document 48 Filed 07/15/13 Page 15 of 20 PageID 475
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`3.
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`Invalidity
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`Samsung’s Third Affirmative Defense states that “[t]he ‘290 patent, and each claim
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`thereof, is invalid for failing to satisfy one or more requirements of the Patent Act, 35 U.S.C. §§
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`1, et seq., including, but not limited to, the conditions of patentability set forth in 35 U.S.C. §§
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`101, 102, 103, 112, 116, 119, and/or 120.” (See, e.g., D.E. 22 at 6.) This short and plain
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`statement of Samsung’s invalidity defense provides Plaintiff with adequate notice of the grounds
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`on which the defense is based, such that Plaintiff will not suffer any prejudice. See, e.g., Elan
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`Pharma, 2010 WL 1372316, at *5 (affirmative defenses suffice where they stated “the claims of
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`the [patent-in-suit] are invalid under one or more provisions of 35 U.S.C. §§ 101-105”); Teirstein
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`v. AGA Medical Corp., No. 6:08cv14, 2009 WL 704138, at *4, 6 (E.D. Tex. Mar. 16, 2009)
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`(finding a mere listing of statutory provisions sufficient to state the affirmative defense of
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`invalidity); Graphic Packaging Int’l, Inc. v. C.W. Zumbiel Co., No. 1:10-cv-3008, 2011 WL
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`5829674, at *3 (N.D. Ga. Aug. 1, 2011) (“invalidity counterclaims and affirmative defenses that
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`allege only their statutory bases are adequate to survive a Rule 12 motion”); Pfizer Inc. v. Apotex
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`Inc., 726 F. Supp. 2d 921, 927, 937-38 (N.D. Ill. 2010) (finding invalidity counterclaim
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`sufficient where it alleged that the “Unasserted Patents are invalid for failure to comply with one
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`or more of the conditions of patentability set forth in Title 35 of the United States Code”).7
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`Indeed, Samsung’s invalidity affirmative defense provides Plaintiff with fair notice of the
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`defenses and includes at least the same level of detail as Plaintiff’s complaint with respect to its
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`infringement claim. See Paducah River Painting, Inc. v. McNational, Inc., 5:11-cv-00135-R,
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`2011 WL 5525938, at *3-4 (W.D. Ky. Nov. 14, 2011) (rejecting Plaintiff’s argument that a
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`
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`7 Plaintiff’s reliance on Duramed Pharms., Inc. v. Watson Labs., Inc., 308-CV-00116-LRH-RAM, 2008
`WL 5232908 (D. Nev. Dec. 12, 2008), is misplaced. There, the Defendant had not even listed any provisions of
`Title 35 which could implicate invalidity. Id. at *4. Unlike defendant Watson, Samsung has provided ample notice
`as to the particular bases of its invalidity affirmative defense under Title 35.
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`Case 2:12-cv-02825-JPM-tmp Document 48 Filed 07/15/13 Page 16 of 20 PageID 476
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`listing of the defenses absent any other facts did not provide “fair notice” of the defenses as “the
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`rule’s goals are to reveal the defense exists rather than explore the facts under which it is
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`implicated.”). Thus, Plaintiff’s Motion to Strike this defense should be denied.
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`4.
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`Prosecution History Estoppel
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`Samsung’s Fourth A