throbber
Case 2:12-cv-02830-JPM-tmp Document 62 Filed 12/02/13 Page 1 of 18 PageID 688
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`
`
`)
`)
`)
`)
`)
`) No. 2:12-cv-02830-JPM-tmp
`)
`)
`)
`)
`
`
`
`
`
`
`
`
`B.E. TECHNOLOGY, L.L.C.,
`
`
`
`Plaintiff,
`
`v.
`
`
`GOOGLE INC.,
`
`
`
`Defendant.
`
`
`
`ORDER GRANTING IN PART AND DENYING IN PART
`PLAINTIFF’S MOTION TO STRIKE
`
`
`
`
`Before the Court is Plaintiff B.E. Technology, L.L.C.’s
`
`(“Plaintiff” or “B.E.”) Motion to Strike, filed January 25,
`
`2013. (ECF No. 36.) B.E. seeks to strike Defendant Google
`
`Inc.’s (“Defendant” or “Google”) eight affirmative defenses,
`
`pursuant to Rule 12(f) of the Federal Rules of Civil Procedure.
`
`For the following reasons, B.E.’s Motion is GRANTED IN PART and
`
`DENIED IN PART.
`
`I. BACKGROUND
`
`
`
`This is a case concerning the alleged patent infringement
`
`of U.S. Patent Nos. 6,628,314 (“‘314 patent”) and 6,771,290
`
`(“‘290 patent”). (Compl. at 1, ECF No. 1.) On September 21,
`
`2012, B.E. filed a Complaint alleging patent infringement
`
`stemming from Google’s “method of providing demographically
`
`targeted advertising that directly infringes at least Claim 11
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 62 Filed 12/02/13 Page 2 of 18 PageID 689
`
`
`
`of the ‘314 patent” and alleging infringement of Plaintiff’s
`
`‘290 patent “by using, selling, and offering to sell in the
`
`United States tablet computer products,” including Google Nexus
`
`products, “that directly infringe at least Claim 2 of the ’290
`
`patent.” (Id. at 3.)
`
`
`
`On December 31, 2012, Google filed its Answer to B.E.’s
`
`Complaint. (ECF No. 25.) In its Answer, Google denied
`
`infringement of both the ‘290 and ‘314 patents and set forth
`
`eight affirmative defenses as to why B.E. was not entitled to
`
`any relief. (Id. at 3-5.)
`
`On January 25, 2013, B.E. filed the instant Motion to
`
`Strike, requesting the Court “strik[e] Defendant’s Affirmative
`
`Defenses pursuant to Federal Rule of Civil Procedure 12(f).”
`
`(ECF No. 36 at 1.) After the Court lifted the stay of the
`
`proceedings and denied Google’s Motion to Transfer Venue (see
`
`ECF No. 45), Google filed its Response in Opposition to the
`
`Motion to Strike on June 7, 2013 (ECF No. 46).
`
`II. STANDARD OF REVIEW
`
`
`
`Pursuant to Federal Rule of Civil Procedure 12(f) (“Rule
`
`12(f)”), the “court may strike from a pleading an insufficient
`
`defense or any redundant, immaterial, impertinent, or scandalous
`
`matter.” An affirmative defense “‘will be held to be sufficient
`
`. . . as long as it gives plaintiff fair notice of the nature of
`
`the defense.’” Lawrence v. Chabot, 182 F. App’x 442, 456 (6th
`
`
`
`2
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 62 Filed 12/02/13 Page 3 of 18 PageID 690
`
`
`
`Cir. 2006) (quoting 5 Charles Alan Wright & Arthur R. Miller,
`
`Federal Practice & Procedure § 1274 (3d ed.)) [hereinafter
`
`Federal Practice & Procedure]. Motions to strike are applicable
`
`only to pleadings. Fox v. Michigan State Police Dep’t, 173 F.
`
`App’x 372, 375 (6th Cir. 2006). Affirmative defenses may be
`
`stricken from the pleadings if they are insufficient as a matter
`
`of law. Starnes Family Office, LLC v. McCullar, 765 F. Supp. 2d
`
`1036, 1047 (W.D. Tenn. 2011).
`
`To strike inappropriate or redundant defenses, it must be
`
`shown that “the allegations are clearly immaterial to the
`
`controversy or would prejudice the movant.” Frisby v. Keith D.
`
`Weiner & Assocs. Co., LPA, 669 F. Supp. 2d 863, 865 (N.D. Ohio
`
`2009) (citing Brown & Williamson Tobacco Corp. v. United States,
`
`201 F.2d 819, 822 (6th Cir. 1953)); see also 5C Federal Practice
`
`& Procedure § 1380 (In order to succeed on a Rule 12(f) motion
`
`to strike, “it must be shown that the allegations being
`
`challenged are so unrelated to plaintiff’s 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.”).
`
`It is well-established that “the action of striking a
`
`pleading should be sparingly used by the courts” and “should be
`
`granted only when the pleading to be striken [sic] has no
`
`possible relation to the controversy.” Brown, 201 F.2d at 822
`
`
`
`3
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 62 Filed 12/02/13 Page 4 of 18 PageID 691
`
`
`
`(internal citations omitted). A motion to strike is a “drastic
`
`remedy to be resorted to only when required for the purposes of
`
`justice.” Id. Therefore, while Rule 12(f) motions are
`
`occasionally granted, “the general practice is to grant the
`
`defendant leave to amend.” Damron v. ATM Central LLC, No. 1:10-
`
`CV-01210, 2010 WL 6512345, at *1 (W.D. Tenn. Oct. 29, 2010)
`
`(internal citations omitted). Additionally, when presented with
`
`a Rule 12(f) motion to strike, a court must assess if the moving
`
`party will be prejudiced by the inclusion of the defense. See
`
`id. at *2.
`
`A defense may be insufficient under Rule 12(f) if it fails
`
`to meet the pleading requirements governed by Rule 8 of the
`
`Federal Rules of Civil Procedure (“Rule 8”). McLemore v.
`
`Regions Bank, Nos. 3:08-CV-0021, 3:08-CV-1003, 2010 WL 1010092,
`
`at *12 (M.D. Tenn. Mar. 18, 2010), aff’d, 682 F.3d 414 (6th Cir.
`
`2010). Rule 8(a) provides that “[a] pleading that states a
`
`claim for relief must contain . . . a short and plain statement
`
`of the claim showing that the pleader is entitled to relief.”
`
`Fed. R. Civ. P. 8(a)(2). Rules 8(b) and (c) provide that, “[i]n
`
`responding to a pleading, a party must[] state in short and
`
`plain terms its defenses to each claim asserted against it” and
`
`“a party must affirmatively state any avoidance or affirmative
`
`defense.” Fed. R. Civ. P. 8(b)(1)(A), (c)(1). The purpose of
`
`this rule is to give the opposing party “fair notice of what the
`
`
`
`4
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 62 Filed 12/02/13 Page 5 of 18 PageID 692
`
`
`
`. . . claim is and grounds upon which it rests.” Bell Atl.
`
`Corp. v. Twombly, 550 U.S. 544, 555 (2007) (alteration in
`
`original) (internal quotation marks omitted).
`
`The United States Court of Appeals for the Sixth Circuit
`
`has yet to decide definitively whether the “plausibility
`
`standard” set forth in Bell Atlantic Corp. v. Twombly, 550 U.S.
`
`544 (2007), and Ashcroft v. Iqbal, 556 U.S. 662 (2009), applies
`
`to affirmative defenses. See Ruffin v. Frito-Lay, Inc., No. 09-
`
`CV-14664, 2010 WL 2663185, at *2 (E.D. Mich. June 10, 2010).
`
`This plausibility standard, which is applied in the context of a
`
`Rule 12(b)(6) motion to dismiss, “is not akin to a ‘probability
`
`requirement,’ but it asks for more than a sheer possibility that
`
`a defendant has acted unlawfully” and “allows the court to draw
`
`the reasonable inference that the defendant is liable for the
`
`misconduct alleged.” Iqbal, 556 U.S. at 678 (citations
`
`omitted). District courts within the Sixth Circuit are divided
`
`as to whether to apply the Twombly/Iqbal standard. See, e.g.,
`
`HCRI TRS Acquirer, LLC v. Iwer, 708 F. Supp. 2d 687, 691 (N.D.
`
`Ohio Apr. 28, 2010) (applying Twombly/Iqbal standard to
`
`affirmative defenses); McLemore, 2010 WL 1010092, at *13
`
`(refusing to apply Twombly/Iqbal standard to affirmative
`
`defenses); Del-Nat Tire Corp. v. A to Z Tire & Battery, Inc.,
`
`No. 2:09-CV-02457, 2009 WL 4884435, at *2 (W.D. Tenn. Dec. 8,
`
`2009) (choosing “not . . . to weigh in on this issue because
`
`
`
`5
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 62 Filed 12/02/13 Page 6 of 18 PageID 693
`
`
`
`even assuming, arguendo, that Twombly applies . . .
`
`[defendant’s] affirmative defense succinctly meets that
`
`standard”).
`
`B.E. contends that the Twombly/Iqbal plausibility standard
`
`applies to Rule 12(f) motions to strike. (Pl.’s Mem. at 6, ECF
`
`No. 36-1.) Conversely, Google contends that the fair notice
`
`standard applies to Rule 12(f) motions to strike. (Def.’s Mem.
`
`at 3-4, ECF No. 46.)
`
`As an initial matter, in Twombly, the Supreme Court of the
`
`United States interpreted Rule 8(a)(2)’s requirement of “a short
`
`and plain statement of the claim showing that the pleader is
`
`entitled to relief.” Twombly, 550 U.S. at 555 (quoting Fed. R.
`
`Civ. P. 8(a)(2)). Aside from the pleading requirements for
`
`complaints under Rule 8(a), Twombly does not concern defenses
`
`under Rule 8(b) or affirmative defenses under Rule 8(c).
`
`Additionally, Iqbal focuses exclusively on the pleading burden
`
`that applies to plaintiffs’ complaints. See 556 U.S. 662, 677-
`
`86.
`
`Regarding defenses as pled under Rule 8(b), defendants are
`
`required to state defenses in “short and plain terms,” which is
`
`similar to the requirements set forth in Rule 8(a). The Sixth
`
`Circuit, however, has stated that “Rule 8(b) does not apply when
`
`a defendant asserts an affirmative defense.” Pollock v.
`
`Marshall, 845 F.2d 656, 657 n.1 (6th Cir. 1987). But see
`
`
`
`6
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 62 Filed 12/02/13 Page 7 of 18 PageID 694
`
`
`
`Montgomery v. Wyeth, 580 F.3d 455, 4668 (6th Cir. 2009)
`
`(implying that the Rule 8(b)(1) standard applies to a statute-
`
`of-repose defense).
`
`Regarding affirmative defenses, the Sixth Circuit has
`
`stated that “a defendant asserting an affirmative defense is not
`
`required to plead specific supporting facts.” McLemore, 2010 WL
`
`1010092, at *13. Instead, “[a]n 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
`
`defense.” Lawrence, 182 F. App’x at 456 (quoting Federal
`
`Practice & Procedure § 1274) (internal quotation marks omitted).
`
`For example, in Lawrence, defendants’ qualified-immunity defense
`
`simply stated, “For the federal claims, defendants are entitled
`
`to qualified immunity for all activities complained of in this
`
`complaint.” Id. The court held that this defense, though
`
`short, “gave [Plaintiff] notice of the defense,” which met the
`
`pleading requirements. Id. at 457.
`
`More recently, in Montgomery v. Wyeth, 580 F.3d 455 (6th
`
`Cir. 2009), a decision post-dating Twombly and Iqbal, the Sixth
`
`Circuit held that the defendant properly pleaded a statute-of-
`
`repose defense where the defendant’s answer stated that
`
`“Plaintiff’s causes of action are barred in whole or in part by
`
`the applicable statutes of limitations and repose,” and where
`
`the defendant’s affirmative defenses included “defenses of the
`
`
`
`7
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 62 Filed 12/02/13 Page 8 of 18 PageID 695
`
`
`
`Tennessee Products Liability Act of 1978, as codified in Tenn.
`
`Code. Ann. §§ 29-28-101 through 108.” Montgomery, 580 F.3d at
`
`467-68. The Sixth Circuit held that these statements met Rule
`
`8’s requirements. Id. at 468.
`
`Consequently, the Sixth Circuit has used “fair notice” as
`
`the standard for whether a defendant has sufficiently pleaded an
`
`affirmative defense. Id.; Lawrence, 182 F. App’x at 456. As
`
`such, this Court declines to adopt the heightened pleading
`
`standard of Twombly and Iqbal for the pleading of defenses.
`
`Instead, this Court will continue to use the “fair notice”
`
`standard as set forth in Lawrence. See Lawrence, 182 F. App’x
`
`at 456.
`
`III. ANALYSIS
`
`
`
`Google’s Answer raises the following affirmative defenses:
`
`(1) noninfringement; (2) no injunctive relief; (3) no
`
`contributory infringement; (4) waiver, acquiescence, equitable
`
`estoppel, implied license, and unclean hands; (5) laches; (6)
`
`invalidity; (7) limitation on patent damages; and (8) failure to
`
`state a claim under Rule 12(b)(6). (Answer at 4-5, ECF No. 25;
`
`Def.’s Mem. at 9-15, ECF No. 46.)
`
`
`
`B.E. contends that all eight of Google’s affirmative
`
`defenses must be stricken. (Pl.’s Mot. at 1, ECF No. 36.) The
`
`Court will address the sufficiency of each defense in turn.
`
`
`
`
`
`8
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 62 Filed 12/02/13 Page 9 of 18 PageID 696
`
`
`
`A.
`
`Noninfringement
`
`
`
`As to Google’s first affirmative defense, the United States
`
`Patent Act (“the Act”), codified at 35 U.S.C. §§ 1-390, requires
`
`a defendant to plead noninfringement as a defense. 35 U.S.C.
`
`§ 282(b)(1). In pertinent part, § 282 states, “The following
`
`shall be defenses in any action involving the validity or
`
`infringement of a patent and shall be pleaded: (1)
`
`Noninfringement, absence of liability for infringement or
`
`unenforceability.” Id. Because the Act requires
`
`noninfringement to be pleaded as an affirmative defense, the
`
`defense is not “insufficient” nor a “redundant, immaterial,
`
`impertinent, or scandalous matter” under Rule 12(f), is not
`
`prejudicial, and provides Plaintiff fair notice of the asserted
`
`defense. Accordingly, B.E.’s Motion to Strike the defense of
`
`noninfringement is DENIED.
`
`B.
`
`No Injunctive Relief
`
`
`
`As to Google’s second affirmative defense, this Court has
`
`the authority to grant injunctive relief “in accordance with the
`
`principles of equity to prevent the violation of any right
`
`secured by patent, on such terms as the court deems reasonable.”
`
`35 U.S.C. § 283. In its Complaint, B.E. requested “[a]
`
`preliminary and permanent injunction forbidding Google . . .
`
`from further infringing the ‘314 patent and the ‘290 patent.”
`
`(ECF No. 1 at 4 ¶ 5.) In both its Answer and its Response in
`
`
`
`9
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 62 Filed 12/02/13 Page 10 of 18 PageID 697
`
`
`
`Opposition to the instant Motion, Google argues that “B.E. is
`
`not entitled to injunctive relief because Google has not and is
`
`not infringing any valid claim of the asserted patents.” (ECF
`
`No. 25 at 4 ¶ 3; ECF No. 46 at 10.) Because this Court has the
`
`power to grant injunctive relief and because B.E. has requested
`
`the same, Google has the right to defend against such potential
`
`action. As a result, Google’s assertion that it has not
`
`infringed either of B.E.’s patents and that B.E. is not entitled
`
`to injunctive relief meets the “fair notice” standard set forth
`
`in Lawrence because B.E. has been apprised that Google intends
`
`to defend against any injunctive relief that B.E. requests.
`
`Moreover, because Google has the right to defend against the
`
`relief that B.E. has requested, B.E. will not be prejudiced if
`
`this defense is not stricken. Accordingly, B.E.’s Motion to
`
`Strike the defense of no injunctive relief is DENIED.
`
`C.
`
`No Contributory Infringement
`
`
`
`As to Google’s third affirmative defense, in both its
`
`Answer and Response in Opposition to the instant Motion, Google
`
`argues that “B.E.’s claims for contributory infringement are
`
`barred in whole or in part under 35 U.S.C. § 271(c) in view of
`
`the substantial non-infringing uses of such allegedly infringing
`
`product.” (ECF No. 25 at 4 ¶ 4; ECF No. 46 at 11.)
`
`B.E. argues that it “did not raise a claim for indirect
`
`infringement in its complaint,” and, as such, “Google’s Third
`
`
`
`10
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 62 Filed 12/02/13 Page 11 of 18 PageID 698
`
`
`
`Affirmative Defense of no contributory infringement should be
`
`stricken as irrelevant to this matter.” (ECF No. 36 at 10.)
`
`Having reviewed B.E.’s Complaint and the parties’
`
`arguments, the Court agrees with B.E. Because B.E. has
`
`expressly denied that it is raising any claims for contributory
`
`infringement (see id. at 10), and because Google has admitted
`
`that its “defense of ‘no contributory infringement’ is only
`
`necessary to the extent that B.E. intends to pursue such claims”
`
`(ECF No. 46 at 11), the Court finds that, pursuant to Rule
`
`12(f), Google’s third affirmative defense is “immaterial,” and
`
`shall be STRICKEN. B.E.’s Motion to Strike Google’s third
`
`affirmative defense is, therefore, GRANTED.
`
`D.
`
`Waiver, Acquiescence, Equitable Estoppel, Implied
`License, Unclean Hands, and Laches
`
`As to Google’s fourth affirmative defense, Google asserts
`
`
`
`in both its Answer and its Response in Opposition to the instant
`
`Motion that “B.E.’s Complaint is barred, in whole or in part, by
`
`waiver, acquiescence, equitable estoppel, implied license,
`
`and/or the doctrine of unclean hands.” (ECF No. 25 at 4 ¶ 5;
`
`ECF No. 46 at 11.) As to Google’s fifth affirmative defense,
`
`Google asserts in both its Answer and its Response in Opposition
`
`to the instant Motion that “B.E.’s Complaint is barred by
`
`laches.” (ECF No. 25 at 4 ¶ 6; ECF No. 46 at 12.) B.E.
`
`contends that “Google pleads no facts in support of its
`
`
`
`11
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 62 Filed 12/02/13 Page 12 of 18 PageID 699
`
`
`
`equitable defenses” and, as a result, “Google’s pleading of its
`
`equitable defenses fails to provide fair notice, much less facts
`
`sufficient to show relief plausible on its face.” (ECF No. 36-1
`
`at 10.)
`
`
`
`While Google’s statement of these affirmative defenses is
`
`sparse, particularly in terms of providing factual notice of the
`
`bases of its equitable defenses, the Court cannot say that these
`
`defenses are redundant, immaterial, impertinent, or scandalous,
`
`or that they have no possible relationship to the present
`
`controversy. See Zampieri v. Zampieri, No. 3:08-CV-290, 2009 WL
`
`3241741, at *4 (E.D. Tenn. Sept. 30, 2009). Moreover, although
`
`lacking specific factual details, Google’s assertion of these
`
`equitable defenses provides B.E. with “fair notice of the
`
`defense[s] . . . being advanced” and “the grounds for
`
`entitlement to relief.” Del-Nat Tire Corp., 2009 WL 4884435, at
`
`*2 (internal citation omitted). Because B.E. has fair notice of
`
`these defenses and now knows that Google might pursue them, B.E.
`
`will not be prejudiced if Google does, in fact, pursue them.
`
`Therefore, B.E.’s Motion to Strike Google’s fourth affirmative
`
`defense is DENIED.
`
`E.
`
`Invalidity
`
`
`
`As to Google’s sixth affirmative defense, Google asserts in
`
`both its Answer and its Response in Opposition to the instant
`
`Motion that the claims of the ‘314 and ‘290 patents are
`
`
`
`12
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 62 Filed 12/02/13 Page 13 of 18 PageID 700
`
`
`
`invalid for failure to satisfy one or more of the
`conditions of patentability, including without
`limitation those set forth in 35 U.S.C. §§ 101, 102,
`103, and/or 112 because the alleged invention thereof
`lacks utility; is taught by, suggested by, and/or,
`obvious in view of, the prior art; and/or is not
`adequately supported by the written description of the
`patented invention.
`
`(ECF No. 25 at 5 ¶¶ 7, 8; ECF No. 46 at 12.)
`
`B.E. argues Google’s invalidity defense is insufficient
`
`because it uses “boilerplate” language and does not provide fair
`
`notice of the defense. (ECF No. 36-1 at 11.) B.E. cites
`
`numerous courts that have granted similar motions to strike
`
`invalidity defenses for using the same “boilerplate” language
`
`B.E. contends Google uses in its invalidity defense. (Id. at
`
`11-13.); see, e.g., Duramed Pharm., Inc. v. Watson Labs., Inc.,
`
`No. 3:08-CV-00116, 2008 WL 5232908 (D. Nev. Dec. 12, 2008)
`
`(granting plaintiff’s motion to strike defendant’s invalidity
`
`claim because, “by failing to specify which of the many possible
`
`grounds of patent invalidity it is relying upon, [defendant]
`
`does not put [plaintiff] on fair notice as to the basis of its
`
`counterclaim”); Qarbon.com v. eHelp Corp., 315 F. Supp. 2d 1046,
`
`1050 (N.D. Cal. 2004) (finding defendant’s pleading of
`
`invalidity “radically insufficient” because it failed to give
`
`fair notice to defendant of its basis for “assessing the initial
`
`strength of the plaintiff’s claim, for preserving relevant
`
`
`
`13
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 62 Filed 12/02/13 Page 14 of 18 PageID 701
`
`
`
`evidence, for identifying any related counter- or cross-claims,
`
`and for preparing an appropriate answer”).
`
`Google argues its invalidity defense satisfies the fair-
`
`notice standard. (ECF No. 46.) Google cites cases upholding
`
`the use of such “boilerplate” language. See, e.g., Paducah
`
`River Painting, Inc. v. McNational Inc., No. 5:11-CV-00135-R,
`
`2011 WL 5525938, at *1, *3 (W.D. Ky. Nov. 14, 2011) (finding
`
`defendant’s assertion of patent invalidity “under one or more of
`
`the provisions of 35 U.S.C. §§ 102, 103, and/or 112” sufficient
`
`because “[t]he rule’s goals are to reveal the defense exists
`
`rather than explore the facts under which it is implicated”).
`
`As stated, supra Pt. II, the Court will apply the “fair
`
`notice” standard to defenses. Therefore, B.E.’s reliance on
`
`Duramed and Qarbon.com is misplaced.
`
`In the instant case, although Google’s invalidity defense
`
`lacks specific factual details, it does provide B.E. with “fair
`
`notice of the defense . . . being advanced” and “the grounds for
`
`entitlement to relief.” Del-Nat Tire Corp., 2009 WL 4884435, at
`
`*2 (internal citation omitted). Google’s invalidity defense
`
`apprises B.E. that Google intends to pursue such a defense.
`
`Moreover, the Court finds that this defense is not redundant,
`
`immaterial, impertinent, or scandalous, or that it has no
`
`possible relationship to the present controversy. See Zampieri,
`
`2009 WL 3241741, at *4. B.E. will also not be prejudiced by
`
`
`
`14
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 62 Filed 12/02/13 Page 15 of 18 PageID 702
`
`
`
`this defense because B.E. is now on notice of the specific
`
`statutes in the Patent Act on which Google will base this
`
`particular defense. Therefore, B.E.’s Motion to Strike Google’s
`
`sixth affirmative defense is DENIED.
`
`F.
`
`Limitation on Patent Damages
`
`As to Google’s seventh affirmative defense, Google asserts
`
`in its Answer and paraphrases in its Response in Opposition to
`
`the instant Motion that “Plaintiff’s claim for damages, if any,
`
`against Google for alleged infringement of the Patents-in-Suit
`
`are limited by 35 U.S.C. §§ 286, 287, and/or 288.” (ECF No. 25
`
`at 5 ¶ 9; ECF No. 46 at 14.)
`
`B.E. contends that this defense is “improper” because
`
`“Google denies that B.E. is entitled to relief in its answer
`
`. . . and there is no reason for a redundant affirmative
`
`defense.” (ECF No. 36-1 at 14.)
`
`Section 286 of the Patent Act sets forth a time limitation
`
`on damages “for any infringement committed more than six years
`
`prior to the filing of the complaint or counterclaim for
`
`infringement in the action.” 35 U.S.C. § 286. Section 287 sets
`
`forth additional limitations on damages, including marking
`
`requirements and notice requirements. 35 U.S.C. § 287. Section
`
`288 prohibits recovery of costs for the infringement of a patent
`
`which may be valid, “unless a disclaimer of the invalid claim
`
`
`
`15
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 62 Filed 12/02/13 Page 16 of 18 PageID 703
`
`
`
`has been entered at the Patent and Trademark Office before the
`
`commencement of the suit.” 35 U.S.C. § 288.
`
`Section 286 relates to the statute of limitations present
`
`in patent claims, which is a proper affirmative defense because
`
`statutes of limitations are explicitly referenced as an
`
`affirmative defense in Federal Rule of Civil Procedure 8(c).
`
`Section 287 relates to the limitation on damages a patentee may
`
`receive for infringement of a patent due to failure to mark or
`
`provide notice. Finally, Section 288 relates to the limitation
`
`on damages a patentee may receive for infringement of a patent
`
`when disclaimer of an invalid claim has not been entered at the
`
`Patent and Trademark Office.
`
`B.E. will not be prejudiced by the inclusion of this
`
`defense because B.E. is now on notice of the specific statutes
`
`in the Patent Act on which Google will base this particular
`
`defense. Accordingly, B.E.’s Motion to Strike Google’s seventh
`
`affirmative defense is DENIED.
`
`G.
`
`Failure to State a Claim under Rule 12(b)(6)
`
`As to Google’s eighth affirmative defense, Google asserts
`
`in both its Answer and Response in Opposition to the instant
`
`Motion that “B.E.’s Complaint fails to state a claim upon which
`
`relief can be granted against Google.” (ECF No. 25 at 5 ¶ 10;
`
`ECF No. 46 at 15.)
`
`
`
`16
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 62 Filed 12/02/13 Page 17 of 18 PageID 704
`
`
`
`In response, B.E. argues that “[t]his affirmative defense,
`
`like all the others that Google asserts, is not supported by any
`
`facts or other supporting argument.” (ECF No. 36-1 at 15.)
`
`Although lacking specific factual details, Google’s
`
`assertion of failure to state a claim under Rule 12(b)(6)
`
`provides B.E. with “fair notice of the defense . . . being
`
`advanced” and “the grounds for entitlement to relief.” Del-Nat
`
`Tire Corp., 2009 WL 4884435, at *2 (internal citation omitted).
`
`Pleading this affirmative defense also comports with Rules 8 and
`
`12 of the Federal Rules of Civil Procedure. See Kilgore-Wilson
`
`v. Home Depot U.S.A., No. 2:11-CV-02601, 2012 WL 4062663, at *3
`
`(W.D. Tenn. Sept. 14, 2012) (finding that defendant’s
`
`affirmative defense of failure to state a claim comports with
`
`Rules 8 and 12 of Federal Rules of Civil Procedure and provides
`
`fair notice to plaintiff of affirmative defense being advanced).
`
`Moreover, as Google argues, “[t]his is exactly what Form 30 of
`
`the Federal Rules of Civil Procedure requires for such a defense
`
`. . . . [a]nd, . . . Form 30 satisfies the pleading requirements
`
`of Rule 8.” (ECF No. 46 at 15); Kilgore-Wilson, 2012 WL
`
`4062663, *1-3. B.E. will also not be prejudiced by this defense
`
`because B.E. is now on notice that Google intends to pursue a
`
`Rule 12(b)(6) Motion to Dismiss in the future. Therefore,
`
`B.E.’s Motion to Strike Google’s eighth affirmative defense is
`
`DENIED.
`
`
`
`17
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 62 Filed 12/02/13 Page 18 of 18 PageID 705
`
`
`
`IV. CONCLUSION
`
`
`
`For the foregoing reasons, the Court GRANTS B.E.’s Motion
`
`to Strike Google’s third affirmative defense, and DENIES B.E.’s
`
`Motion to Strike Google’s first, second, fourth, fifth, sixth,
`
`seventh, and eighth affirmative defenses.
`
`
`
`IT IS SO ORDERED, this 2nd day of December, 2013.
`
`
`
`
`
`/s/ Jon P. McCalla
`JON P. McCALLA
`U.S. DISTRICT COURT JUDGE
`
`
`
`
`
`18

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket