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`UNITED STATES DISTRICT COURT
`
`WESTERN DISTRICT OF TENNESSEE
`
`WESTERN DIVISION
`
`B.E. Technology, L.L.C.,
`
`Plaintiff,
`
`Civil Action No. 12-cv-02826-JPM-tmp
`
`v.
`
`Sony Computer Entertainment America,
`LLC,
`
`Defendant.
`
`B.E. Technology, L.L.C.,
`
`Plaintiff,
`
`Civil Action No. 12-cv-02827-JPM-tmp
`
`v.
`
`Sony Mobile Communications (USA) Inc.,
`
`Defendant.
`
`B.E. Technology, L.L.C.,
`
`Plaintiff,
`
`Civil Action No. 12-cv-02828-JPM—tmp
`
`v.
`
`Sony Electronics Inc.
`
`Defendant.
`
`DEFENDANTS SONY COMPUTER ENTERTAINMENT AMERICA LLC, SONY
`MOBILE COMMUNICATIONS {USA} INC., AND SONY ELECTRONICS INC.’S
`RESPONSE IN OPPOSITION TO PLAINTIFF’S MOTION TO STRIKE PURSUANT
`
`TO FED. R. CIV. P. 12§fl
`
`

`
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................................... .. 1
`
`NATURE AND STAGE OF THE PROCEEDINGS ...................................................... .. 2
`
`A.
`
`B.
`
`BET’s Allegations of Infringement ..................................................................... .. 2
`
`Sony’s Affirmative Defenses ............................................................................... .. 2
`
`III.
`
`BET’S MOTION TO STRIKE SHOULD BE DENIED ................................................. .. 3
`
`A.
`
`B.
`
`Motions to Strike Are a Drastic Remedy and Are Rarely Granted...................... .. 3
`
`Defendants Must Only Give Fair Notice of a Defense; Defenses are Not
`Subject to the Iqbal and Twombly Standards. ...................................................... .. 4
`
`1.
`
`2.
`
`The Sixth Circuit has held that affirmative defenses are not subject
`to heightened pleading standards. ............................................................ .. 4
`
`The text of the Federal Rules supports a lower pleading
`requirement for affirmative defenses and the concerns that gave
`rise to heightened standards in Twombly/Iqbal are inapplicable to
`affirmative defenses in an answer ............................................................ .. 7
`
`C.
`
`Sony’s Affirmative Defenses Give Fair and Adequate Notice of the Issues
`to BET. ............................................................................................................... .. 10
`
`l.
`
`2.
`
`3.
`
`4.
`
`Invalidity ................................................................................................ .. 10
`
`Noninfringement .................................................................................... .. ll
`
`Laches .................................................................................................... .. 12
`
`Costs Barred and Time Limit on Recovery ........................................... .. 12
`
`D.
`
`Sony’s Affirmative Defenses are Proper Even if the Court Finds that the
`Twombly/Iqbal Pleading Standard Applies to Affirmative Defenses. ............... .. 13
`CONCLUSION ........................
`.................................................................................... .. 14
`
`IV.
`
`

`
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`I.
`
`INTRODUCTION
`
`On September 21, 2012, Plaintiff B.E. Technology, L.L.C. (“BET”) filed three lawsuits
`
`in this District against Defendants Sony Computer Entertainment America LLC (“SCEA”), Sony
`
`Mobile Communications (USA) Inc. (“SOMC”), and Sony Electronics Inc. (“SEL”) (collectively,
`
`“Sony”) asserting claims for infringement of U.S. Patent No. 6,771,290 (“the ’290 Patent”). See
`
`Case Nos. 12-cv-02826-JPM-tmp (“SCEA Case”), 12—cv-02827-JPM-tmp (“SOMC Case”), and
`
`12-cv-02828-JPM—tmp (“SEL Case”). Sony filed answers on December 31, 2012, denying
`
`BET’s claims of infringement and raising five affirmative defenses. See SCEA Case, Doc. 21;
`
`SoMC Case, Doc. 25; SEL Case, Doc. 20. On January 25, 2013, BET moved to strike Sony’s
`
`affirmative defenses. SCEA Case, Doc. 24; SoMC Case, Doc. 28; SEL Case, Doc. 23. BET has
`
`filed similar motions in all of its other cases pending in this District.‘
`
`BET’s motion to strike Sony’s affirmative defenses should be denied. In its motion, BET
`
`argues for a pleading standard for affirmative defenses that has been addressed and rejected by
`
`the Sixth Circuit. See Montgomery v. Wyeth, 580 F.3d 455, 468 (6th Cir. 2009) (“The Federal
`
`Rules of Civil Procedure do not require a heightened pleading standard for a .
`
`.
`
`. defense”); see
`
`also Damron v. ATM Central LLC, No. 110-cv-01210, 2010 WL 6512345 (W.D. Tenn. Oct. 29,
`
`2010) (“as Defendant correctly notes, there is a Sixth Circuit case” that rejects the pleading
`
`standard that Plaintiff proffers (citing Montgomery, 580 F.3d at 468)). Sony has pleaded its
`
`affirrnative defenses in accordance with the well established fair notice standard, and thus,
`
`BET’s motion should be denied.
`
`1 In addition to the lawsuits filed against Sony, BET has filed suit against 16 other defendants,
`asserting infringement of the ’290 Patent and two related patents not asserted against Sony.
`
`

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`II.
`
`NATURE AND STAGE OF THE PROCEEDINGS
`
`A.
`
`BET’s Allegations of Infringement
`
`In its complaints, BET has alleged that Sony “has infringed at least claim 2 of the ’290
`
`patent by using, selling, and offering to sell in the United States [] [] products that directly
`
`infringe at least claim 2 of the ’290 patent either literally or under the doctrine of equivalents.”
`
`See SCEA Case, Doc. 1 1] 11; SoMC Case, Doc. 1 ‘H 11; SEL Case, Doc. 1 1] 11. On January 7,
`
`2013, BET served Initial Infringement Contentions on Sony, accusing additional Sony products
`
`and services of infringement and accusing Sony of willful infringement.
`
`B.
`
`Sony’s Affirmative Defenses
`
`Sony answered BET’s complaints on December 31, 2012, denying BET’s claims of
`
`infringement, and raising five affirmative defenses: invalidity, noninfringement, laches, the
`
`statutory costs bar, and the statutory time limit on recovery. See SCEA Case, Doc. 21; SOMC
`
`Case, Doc. 25; SEL Case, Doc. 20. All of Sony’s affirmative defenses are stated in plain and
`
`unambiguous terms:
`
`[i] The ’290 Patent is wholly or partially invalid for failure to comply with
`one or more of the conditions and requirements of the patent laws, including, but
`not limited to, 35 U.S.C. §§ 101, 102, 103 and 112, and the rules, regulations and
`
`.
`.
`laws pertaining to those provisions[;] .
`[ii] [Sony] has not directly infringed, induced others to infringe, or
`committed acts of contributory infringement of any valid and enforceable claim of
`the ’290 Patent, either literally or by the doctrine of equiva1ents[;] .
`.
`.
`[iii] BET’s claims of infringement are barred in whole or in part by the
`
`.
`.
`equitable doctrine of laches[;] .
`[iv] BET is barred from receiving costs associated with this action under
`35 U.S.C.§ 288[; and] . ..
`[V] BET’s claims for damages for any alleged infringement are time
`limited under 35 U.S.C. § 286.
`See SCEA Case, Doc. 21 {[1] 12-16; SOMC Case, Doc. 25 1]] 12-16; SEL Case, Doc. 20 1]] 12-16.
`
`

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`BET subsequently filed a motion to strike Sony’s affirrnative defenses, stating that the
`
`“Twombly/Iqbal pleading standards should apply to affirmative defenses,” that the pleadings fail
`
`to meet the Twombly/Iqbal standard, and that the pleadings do “not provide ‘fair notice’ of the
`
`defense.” See SCEA Case, Doc. 24 at 5, 8; SoMC Case, Doc. 28 at 5, 8; SEL Case, Doc. 23 at 5,
`
`8.
`
`III. BET’S MOTION TO STRIKE SHOULD BE DENIED
`
`A.
`
`Motions to Strike Are a Drastic Remedy and Are Rarely Granted.
`
`The Sixth Circuit characterizes motions to strike affirmative defenses as “a drastic
`
`remedy to be resorted to only when required for the purposes ofjustice.” Brown & Williamson
`
`Tobacco Corp. v. United States, 201 F.2d 819, 822 (6th Cir. 1953) (internal citations omitted);
`
`see also 5C Wright & Miller, FEDERAL PRACTICE & PROCEDURE § 1380, at 647-49 (“motions
`
`under Rule 12(f) are viewed with disfavor and are infrequently granted”); id. § 1381, at 672
`
`(“even when technically appropriate and well—founded, [motions to strike] are often not granted
`
`in the absence of a showing of prejudice to the moving party.”); Kilg0re- Wilson v. Home Depot
`
`U.S.A., 2:11—cv-02601—JTF, 2012 WL 4062663, at *2 (W.D. Tenn. Sept. 14, 2012) (“It is ‘well
`
`established that the action of striking a pleading should be sparingly used by the courts.”’
`
`(quoting Brown & Williamson Tobacco Corp., 201 F.2d at 822)).
`
`Generally, motions to strike affirmative defenses are only granted where the defenses
`
`“are ‘so unrelated to plaintiffs claims as to be unworthy of any consideration as a defense and
`
`that their presence in the pleading throughout the proceeding will be prejudicial to the moving
`
`party.’” Damron, 2010 WL 6512345, at *1 (quoting 5C Wright & Miller, FEDERAL PRACTICE &
`
`PROCEDURE § 1380); Brown & Williamson Tobacco Corp, 201 F.2d at 822 (“The motion to
`
`strike should be granted only when the pleading to be stricken has no possible relation to the
`
`controversy.”).
`
`

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`Motions to strike are “particularly inappropriate at [an] early stage, before any discovery
`
`has occurred.” Damron 12. ATM Central LLC, 2010 WL 6512345, at *2-3.
`
`Even if such a motion were to be granted, “the general practice is to grant the defendant
`
`leave to amend.” Brown & Williamson Tobacco Corp, 201 F.2d at 822 .
`
`B.
`
`Defendants Must Only Give Fair Notice of a Defense; Defenses are Not
`Subject to the Iqbal and Twombly Standards.
`
`1.
`
`The Sixth Circuit has held that affirmative defenses are not subject to
`
`heightened pleading standards.
`
`The gravamen of BET’s motion is that the Supreme Court’s Twombly and Iqbal decisions,
`
`which heightened the pleading standards in a complaint, should also apply to pleading
`
`affirmative defenses in an answer. However, after Twombly and Iqbal were decided, the Sixth
`
`Circuit declined to apply heightened pleading standards to affirmative defenses:
`
`The district court ruled that Defendants sufficiently pleaded the statute of
`
`repose defense because their Answer states that “Plaintiff s causes of action are
`barred in whole or in part by the applicable statutes of limitations and repose” .
`We agree. The Federal Rules ofCivil Procedure do not require a
`heightenedpleading standardfor a statute ofrepose defense. Rule 8(b)(l)
`provides generally that “[i]n responding to a pleading, a party must .
`.
`. state in
`short and plain terms its defenses to each claim.” Rule 8(d)(l) requires that
`averments in pleadings be “simple, concise, and direct,” and that “[n]o technical
`form is required.” Fed.R.Civ.P. 8(b)(1).
`
`.
`
`..
`
`See Montgomery, 580 F.3d at 468 (emphasis added); see also Ashcrofi‘ v. Iqbal, 556 U.S. 662,
`
`677 (2009); Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007).
`
`Since Montgomery, this District has agreed that the pleading standards announced in
`
`Iqbal and Twombly do not apply to affirmative defenses. See, e.g., Kilg0re- Wilson, 2012 WL
`
`4062663, at *3 (holding “[that defendant]’s pleading of its affirmative defenses comports with
`
`[the Federal Rules,] is further supported by the Sixth Circuit’s decision in Montgomery, where,
`
`post— Twombly, the Sixth Circuit held that the defendants sufficiently pleaded the statute of repose
`
`

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`and the other statutory affirmative defenses .
`
`.
`
`. with a simple and concise statement raising the
`
`affirmative defenses”); Damron, 2010 WL 6512345, at *2 (“there is a Sixth Circuit case post-
`
`Twombly and Iqbal that, while not discussing [Iqbal and Twombly] directly, does state that ‘the
`
`Federal Rules of Civil Procedure do not require a heightened pleading standard for .
`
`.
`
`.
`
`defenses.” (quoting Montgomery, 580 F.3d at 468)).
`
`Other Tennessee district courts and courts in the Sixth Circuit have held similarly. See,
`
`e.g., Ailey v. Midland Funding, LLC, No. 3:11-cv-77, 2011 WL 3049283, at * 3 (E.D. Tenn. July
`
`25, 2011) (“the Court follows the current Sixth Circuit Law, which holds that ‘an affirmative
`
`defense may be pleaded in general terms and will be held to be sufficient .
`
`.
`
`. as long as it gives
`
`plaintiff fair notice of the nature of the offense.” (quoting Lawrence v. Chabot, 182 Fed. Appx.
`
`442, 456 (6th Cir. 2006))); Sony/A TVMusic Publishing LLC v. D.J. Miller Music Distributors,
`
`Inc., No. 3:09-cv-01098, 2011 WL 4729807, at *4 (M.D. Tenn. Oct. 7, 2011) (“the
`
`Twombly/Iqbal standard is inapplicable to affirmative defenses”); McLem0re v. Regions Bank,
`
`No. 3:08-cv—0021, 2010 WL 1010092, at *14 (M.D. Tenn. March 18, 2010) (“the Sixth Circuit
`
`has consistently used ‘fair notice’ as the standard for whether a defendant has sufficiently
`
`pleaded an affirmative defense. Twombly and Iqbal did not change this.” Accordingly, “[u]nder
`
`Sixth Circuit case law, a defendant asserting an affirmative defense is not required to plead
`
`specific supporting facts”); First Nat ’l Ins. Co. ofAm. 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].”); Holley Performance Pr0ds., Inc. v. Quick Fuel Tech, Inc., 2011 WL 3159177
`
`(W.D. Ky. July 26, 2011) (“Given the Sixth Circuit’s ‘fair notice’ standard for pleading
`
`affirmative defenses, its ruling in Montgomery, and the total absence of appellate precedent on
`
`

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`this issue the Court declines to adopt the heightened pleading standard of Twombly and Iqbal for
`
`the pleading of defenses.”).
`
`In its brief, BET cites a number of cases to suggest that the Sixth Circuit is undecided on
`
`whether the Twombly/Iqbal pleading standards apply to affirmative defenses, but BET’s citations
`
`are all deficient. First, BET misquotes Damron. Its quotation of Damron was itself a quotation
`
`of an earlier case that the Damron Court panned because the earlier case failed to review the
`
`Sixth Circuit’s Montgomery decision:
`
`As recently noted in Rufin v. Frito~Lay, Inc.:
`The Sixth Circuit has yet to decide whether the new pleading standards
`announced in Twombly and Iqbal apply to affirmative defenses. .
`.
`.
`Rufin v. Frito—Lay, Inc., 2010 U.S. Dist. LEXIS 66268, 5-6 (E.D. Mich. June 10, 2010).
`2010). However, as Defendant correctly notes, there is a Sixth Circuit case post-
`Twombly and Iqbal while not discussing [Iqbal and Twombly] directly, does state that
`' “[t]he Federal Rules of Civil Procedure do not require a heightened pleading standard for
`.
`.
`. defenses.”
`
`See Damron, 2010 WL 6512345, at * 1-2 (emphasis added) (quoting Montgomery, 580 F.3d at
`
`468). Contrary to BET’s contention, Damron supports the conclusion that Iqbal and Twombly
`
`did not change the affirmative defense pleading standards in the Sixth Circuit. BET cites another
`
`case in this District that refused to “weigh in on this issue,” but was decided before Damron and
`
`did not consider Montgomery. See Del-Nat Tire Corp. v. A To Z Tire & Battery, Inc. , 2009 WL
`
`4884435, at *2 (W.D. Tenn. Dec. 8, 2009) (denying a motion to strike where the pleadings
`
`would have met either standard). The two other decisions were either issued prior to
`
`Montgomery, which issued August 28, 2009, or were issued just after the decision and failed to
`consider it. See United States v. Quadrinui, 2007 WL 4303213 (E.D. Mich. Dec. 6, 2007);
`
`Zampieri v. Zampieri, 2009 WL 3241741 (E.D. Tenn. Sep. 30, 2009).
`
`This Court should reject BET’s proffered ambiguity in Sixth Circuit law and instead
`
`apply the settled defensive pleading standard in this District, which requires only “a simple and
`
`6
`
`

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`concise statement raising the affirmative defenses.” See Kilgore-Wilson v. Home Depot U.S.A. ,
`
`2012 WL 4062663, at *3 (citing Montgomery v. Wyeth, 580 F.3d at 467-68).
`
`2.
`
`The text of the Federal Rules supports a lower pleading requirement
`for affirmative defenses and the concerns that gave rise to heightened
`standards in Twombly/Iqbal are inapplicable to affirmative defenses in
`an answer.
`
`The lower pleading requirement for defenses is evident from the language of the Rules
`
`themselves. See FED. R. CIV. P. 8. Federal Rule 8(a), which provides for claims for relief in a
`
`complaint, requires “a short and plain statement of the claim showing that the pleader is entitled
`
`to relief.” See FED. R. CIV. P. 8(a)(2) (emphasis added). In contrast, the rules for defenses and
`
`affirmative defenses, respectively Rule 8(b) and 8(c), require that the party “state in short and
`
`plain terms its defenses” and “affirmatively state any avoidance or affirmative defense.” FED. R.
`
`CIV. P. 8(b)(1)(A),(c)(1) (emphasis added). The word “show” does not appear in Rule 8(b) or
`
`Rule 8(c). In Iqbal and Twombly, the Supreme Court focused on the language of the Rules,
`
`finding that the word “show” in Rule 8(a) was relevant in requiring a heightened pleading
`
`standard. Ashcrofi‘ v. Iqbal, 556 U.S. 662, 679 (2009) (“the complaint has alleged—but it has not
`
`‘show[n]’—-that the pleader is entitled to relief.” (quoting Fed. R. Civ. P. 8(a)(2))); Bell Atlantic
`
`Corp. v. Twombly, 550 U.S. 544, 557 (2007). These textual differences strongly militate against
`
`extending the Iqbal/Twombly standard to affirmative defenses. See Tyco Fire Products LP v.
`
`Victaulic Co., 777 F. Supp. 2d 893, 899 (D. Del. 2011) (relying on the language differences to
`
`support a holding that the Iqbal/Twombly standard does not apply to affirmative defenses);
`
`Malibu Media, LLC v. Doe, NO. 12-2078, 2013 U.S. Dist. LEXIS 55985, 7-8 (E.D. Pa. Mar. 6,
`
`2013) (“The reason courts have drawn the distinction between the pleading of claims and
`
`counterclaims and the pleading of affirmative defenses is that the Federal Rules themselves draw
`
`a distinction .
`
`.
`
`. .”).
`
`

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`BET fails to cite any authority that the textual differences in the rules should be ignored.
`
`Beyond the language of the Rules, courts have noted other reasons why the pleading
`
`standards for affirmative defenses differ from the standards for pleading claims for relief:
`
`. and Rule 8(c) [(discussed aboVe)];
`.
`(1) textual differences between Rule 8(a) .
`(2) the absence of a concern that the defense is “unlocking the doors of
`
`discovery”;
`(3) 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;
`(4) 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 .
`. .;
`. would expedite the litigation
`.
`(5) the low likelihood that motions to strike .
`given that leave to amend is routinely granted;
`(6) the risk that a defendant will waive a defense at trial by failing to plead it at
`the early stage of the litigation;
`(7) the lack of detail in Form 30, which demonstrates the appropriate pleading
`of an affirmative defense; and
`
`(8) the fact that a heightened pleading requirement would produce more
`motions to strike, which are disfavored.
`Bayer Cr0pScience AG v. Dow Agr0Scz'ences LLC, CIV. 10-1045 RMB-JS, 2011 WL 6934557,
`
`at *1-2 (D. Del. Dec. 30, 2011).
`
`Further, imposing a heightened pleading requirement for defenses “would undermine the
`
`purpose of the Court’s Local Patent Rules.” See Teirstein, 2009 WL 704138, at *5; LPR 3.5.
`
`During the early stages of litigation, the Local Patent Rules require parties to serve Non-
`
`Infringement Contentions as well as Invalidity and Unenforceability Contentions, which detail
`
`non-infringement theories; anticipating and obviating prior art; and grounds for indefiniteness.
`
`Id; LPR 3.3. The Local Patent Rules require the disclosure of information, “in addition to what
`
`is expected to be disclosed in the pleadings,” to compel the parties to articulate their theories of
`
`the case early in litigation. Teirstein, 2009 WL 704138, at *5. Requiring additional factual
`
`

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`information at the pleading stage would frustrate the procedure prescribed by the Local Patent
`
`Rules and the disclosure schedule set by the Court.
`
`BET’s other arguments are also flawed. For example, BET argues that the history of
`
`Rule 12(f), which governs motions to strike, supports a heightened pleading standard for
`
`affirmative defenses, but a quick look shows there is no such support. The 1946 amendment
`
`adding Rule 12(f) permitted a plaintiff to challenge the sufficiency of a defendant’s defenses.
`
`See Advisory Committee on Rules for Civil Procedure, Report ofProposed Amendments to Rules
`
`of Civil Procedure for the District Courts ofthe United States (1946), at 17. The notes cite
`
`several cases detailing the kind of attack the rule would encompass, and each involves challenges
`
`to the legal, rather than factual, sufficiency of defenses. See id.; see, e. g., Indem. Ins. Co. ofN.
`
`Am. v. Pan Am. Airways, Inc., 58 F. Supp. 228, 229 (S.D.N.Y. 1944) (“the object of the motion
`
`is to challenge three affirmative defenses on the ground that they fail to state legal defenses to
`
`the claims asserted in the complaint”). BET also improperly relies on Rule l2(h)(2), which
`
`addresses the timing of when a party may raise a defense rather than the factual sufficiency of a
`
`defense. Kontrick v. Ryan, 540 U.S. 443, 459 (2004) (“Rules l2(h)(2) and (3) prolong the life of
`
`certain defenses .
`
`.
`
`. .”).
`
`This Court should decline BET’s invitation to make new law in this District by holding
`
`that the pleading requirements of Twombly and Iqbal also apply to affirmative defenses. The
`
`correct standard for pleading affirmative defenses is the fair notice standard. Lawrence v.
`
`Chabot, 182 Fed. Appx. 442, 456 (6th Cir. 2006) (“An affirmative defense .
`
`.
`
`. will be held to be
`
`sufficient .
`
`.
`
`. as long as it gives plaintiff fair notice of the nature of the offense.” (quoting 5
`
`Wright & Miller, FEDERAL PRACTICE & PROCEDURE § 1274); McLem0re, 2010 WL 1010092, at
`
`* 14 (“the Sixth Circuit has consistently used ‘fair notice’ as the standard for whether a defendant
`
`has sufficiently pleaded an affirmative defense”); Ailey, 20ll WL 3049283, at * 3 (post
`
`9
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`Twombly/Iqbal case denying motion to strike affirmative defenses and quoting Lawrence,
`
`182 Fed. Appx. at 456).
`
`C.
`
`Sony’s Affirmative Defenses Give Fair and Adequate Notice of the Issues to
`BET.
`
`BET does not dispute that Sony’s affirinative defenses provide fair and adequate notice
`
`of the legal theories at issue, or that any of Sony’s affirmative defenses are sufficient to avoid
`
`liability as a matter of law if requisite facts are established. The proper forum for exploring the
`
`underlying facts of Sony’s affirmative defenses is during discovery. See Tyco Fire. Prods. LP v.
`
`Victaulic Co., 777 F. Supp. 2d at 901. BET claims that it will be prejudiced if Sony’s affirmative
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`defenses are not stricken. However, BET is not prohibited from propounding discovery requests
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`seeking the factual bases for Sony’s affirmative defenses, and BET’s claim of prejudice is
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`therefore unfounded. For these reasons, and for the reasons set forth below, each of Sony’s
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`affirmative defenses is adequately stated under Rule 8(b) and 8(0).
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`1.
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`Invalidity
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`Sony’s first affirmative defense recites that “[t]he ’290 Patent is wholly or partially
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`invalid for failure to comply with one or more of the conditions and requirements of the patent
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`laws, including, but not limited to, 35 U.S.C. §§ 101, 102, 103 and 112, and the rules, regulations
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`and laws pertaining to those provisions.” SCEA Case, Doc. 21 at 3; SoMC Case, Doc. 25 at 3;
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`SEL Case, Doc. 20 at 3. Courts have found that the “fair notice” requirement is satisfied where
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`the pleading notifies the plaintiff of the defendant’s intent to defend the suit on the grounds of
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`invalidity of the asserted patent, “the details of which [the plaintiff] can flesh out through
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`discovery.” See Tyco Fire. Prods. LP, 777 F. Supp. 2d at 896 (holding that an affirmative
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`defense provided fair notice where the defense recited that “Plaintiffs patents are ‘invalid and/or
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`unenforceable for failure to comply with the conditions of patentability specified in Title 35 of
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`the United States Code, including, without limitation, at least §§ 101, 102, 103 and 112”’ (citing
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`NH Ins. Co. v. Marinemax of Ohio, Inc, 408 F. Supp. 2d 526, 530 (N .D. Ohio 2006)));
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`Teirstein v. AGA Medical Corp, No. 6:08cV14, 2009 WL 704138, at *4-6 (E.D. Tex. Mar. 16,
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`2009) (finding that an affirmative defense of invalidity reciting a list of statutory provisions is
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`sufficiently pleaded); Elan Pharma Int ’l Ltd v. Lupin Ltd. , Civ. A. 09-1008 JAG, 2010 WL
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`1372316, at *5 (D.N.J. Mar. 31, 2010) (same); Graphic Packaging Int ’l, Inc. v. C. W. Zumbiel
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`Co., No. l:lO-cv—3008, 2011 WL 5829674, at *3 (N.D. Ga. Aug 1, 2011) (same).
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`Accordingly, Sony’s first affirmative defense is properly pleaded. BET’s Motion to
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`Strike this defense should therefore be denied.
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`2.
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`Noninfringement
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`Sony’s second affirmative defense recites that Sony “has not directly infringed, induced
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`others to infringe, or committed acts of contributory infringement of any valid and enforceable
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`claim of the ’290 Patent, either literally or by the doctrine of equivalents.” SCEA Case, Doc. 21
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`at 3; SoMC Case, Doc. 25 at 3; SEL Case, Doc. 20 at 3. This statement by itself is sufficient to
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`survive BET’s motion to strike. See Avocent Redmond v. U.S., 85 Fed. Cl. 724, 725 (Ct. Fed. C1.
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`2009) (denying a motion strike an affirmative defense of noninfringement where the defense
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`stated that “[n] either the accused products nor Rose have infringed or infringe any of the asserted
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`claims of the patents-in-suit, either directly, indirectly, literally, or under the doctrine of
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`equivalents”).
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`Furthermore, BET’s argument that noninfringement does not constitute an affirmative
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`defense fails to consider that the Patent Act itself requires that noninfringement be pleaded as a
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`defense. See 35 U.S.C. § 282(b) (“The following shall be defenses in any action involving the
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`validity or infringement of a patent and shall be pleaded: (1) Noninfringement, absence of
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`liability for infringement or unenforceability. .
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`. .” (emphasis added)); Trading Tech. Int ’l, Inc. v.
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`BCG Partners, Inc., No. 10-cv-715, 2011 WL 3946581, at *5 (N .D. 111. Sept. 2, 2011) (“the
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`Patent Act requires that defendants plead non-infringement and invalidity as defenses”).
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`Accordingly, Sony’s second affirmative defense is properly pleaded. BET’s Motion to
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`Strike this defense should therefore be denied.
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`3.
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`Laches
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`Sony’s third affirmative defense recites that “BET’s claims of infringement are barred in
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`whole or in part by the equitable doctrine of laches.” SCEA Case, Doc. 21 at 3; SoMC Case,
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`Doc. 25 at 3; SEL Case, Doc. 20 at 3. While BET argues that Sony failed to provide facts
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`relating to this defense, Sony admitted in its Answers that the ’290 Patent appears to have issued
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`on August 3, 2004, and that Sony is being sued for infringement including alleged infringement
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`by products (including the PS3 and certain Xperia Smartphones) that have been on the market
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`for several years prior to the filing of the complaints in these actions. SCEA Case, Doc. 21 at 2-
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`3; SoMC Case, Doc. 25 at 2-3; SEL Case, Doc. 20 at 2-3. From BET’s allegations in its
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`complaints, it can be reasonably inferred that BET knew of its alleged rights against Sony, and
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`failed to act on them. See Teirstein, 2009 WL 704138, at *7-8 (dates in pleadings showed delay
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`on the part of the plaintiff and supported a defense of laches).
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`Accordingly, Sony’s third affirmative defense is properly pleaded. BET’s Motion to
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`Strike this defense should therefore be denied.
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`4.
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`Costs Barred and Time Limit on Recovery
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`Sony’s fourth and fifth affirmative defenses recite that “BET is barred from receiving
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`costs associated with this action under 35 U.S.C.§ 288” and “BET’s claims for damages for any
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`alleged infringement are time limited under 35 U.S.C. § 286.” SCEA Case, Doc. 21 at 3; SOMC
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`Case, Doc. 25 at 3; SEL Case, Doc. 20 at 3. Sony’s pleadings give BET adequate notice. See
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`Sun Microsystems, Inc. v. Versata Enters, Inc., 630 F. Supp. 2d 395, 407 (D. Del. 2009)
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`(denying motion to strike defenses set forth in §§ 286-288 except to the extent they relied on the
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`doctrine of laches). Moreover, while BET argues that Sony’s inclusion of the defense relating to
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`§ 286 was improper, this defense is required to be pleaded. Id. at 412 (pleading of a defense
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`based on 35 U.S.C. § 286 was proper because “Rule 8(c) specifically requires pleading
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`affirmative defenses based on statutes of limitations”).
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`Accordingly, Sony’s fourth and fifth affirmative defenses are properly pleaded. BET’s
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`Motion to Strike these defenses should therefore be denied.
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`D.
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`Sony’s Affirmative Defenses are Proper Even if the Court Finds That the
`Twombly/Iqbal Pleading Standard Applies to Affirmative Defenses.
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`Even if, arguendo, this Court determines that the Twombly/Iqbal pleading standard
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`applies to affirmative defenses, Sony’s defenses are plausible and rise “above the speculative
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`level.” Twombly, 550 U.S. at 555. As other courts have held with similar affirmative defenses,
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`Sony’s allegations are “clear enough as to effectively put Plaintiff on notice of the legal and
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`factual grounds for” their stated defenses. See, e. g., Teirstein, 2009 WL 704138, at *3 (denying
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`a motion to strike an affirmative defense of invalidity, noting it would even survive under
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`Iqbal/Twombly); Zampieri v. Zampieri, No. 3:08—cv-290, 2009 WL 3241741, at *3-7 (E.D. Tenn.
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`Sept. 30, 2009) (denying motion to strike affirmative defenses which were “sparse, particularly
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`in terms of providing factual notice,” where “the Court cannot say that [the defenses] will not
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`succeed under any circumstances, or that [the defenses] [have] no possible relationship to the
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`present controversy”). All of Sony’s defenses are plausible and, as pleaded, give BET notice of
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`the issues Sony plans to pursue in this case.
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`Accordingly, Sony’s affirmative defenses are properly pleaded. BET’s Motion to Strike
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`the defenses should therefore be denied.
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`IV. CONCLUSION
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`For the foregoing reasons, BET’s Motion to Strike should be denied in its entirety.
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`Alternately, Sony requests leave to amend its answers to supplement any affirmative defenses
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`found to be insufficiently pleaded.
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`OF COUNSEL
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`Respectfully submitted,
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`/5'/
`John Flock
`John Flock W0 hac vice)
`jflock@kenyon.com
`Michael E