Case 2:12-cv-02831-JPM-tmp Document 49-1 Filed 07/04/13 Page 1 of 23 PageID 794
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`
`B.E. TECHNOLOGY, L.L.C.,
`
`
`
`
`
`v.
`
`Plaintiff,
`
`Civil Action No. 2:12-cv-02831 – JPM – tmp
`
`
`
`
`
`APPLE INC.,
`
`
`
`
`
`Defendant.
`
`APPLE’S MEMORANDUM IN OPPOSITION TO
`PLAINTIFF’S MOTION TO DISMISS UNDER FED. R. CIV. P. 12(b)(6) AND
`MOTION TO STRIKE UNDER FED. R. CIV. P. 12(f)
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`

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`Case 2:12-cv-02831-JPM-tmp Document 49-1 Filed 07/04/13 Page 2 of 23 PageID 795
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`Page
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`
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`TABLE OF CONTENTS
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`
`B.  
`
`C.  
`
`STATEMENT OF FACTS ................................................................................................ 1  
`APPLE’S COUNTERCLAIMS ARE CONSISTENT WITH THE FEDERAL
`RULES OF CIVIL PROCEDURE AS INTERPRETED BY TWOMBLY/IQBAL
`AND HAVE THE SAME LEVEL OF SPECIFICITY AS PLAINTIFF’S
`COMPLAINT. ................................................................................................................... 2  
`Apple’s counterclaims are adequately stated under the Federal
`A.  
`Rules of Civil Procedure. ........................................................................... 2  
`Apple’s counterclaims are properly pleaded under the
`Twombly/Iqbal standard. ............................................................................ 4  
`Apple’s counterclaims are pleaded with specificity equal to
`plaintiff’s claims. ....................................................................................... 7  
`APPLE’S AFFIRMATIVE DEFENSES GIVE FAIR AND ADEQUATE
`NOTICE OF THE ISSUES TO BE TRIED. ..................................................................... 9  
`The Twombly/Iqbal standard should not apply to affirmative
`A.  
`defenses. ..................................................................................................... 9  
`Apple’s answer and affirmative defenses give B.E. adequate notice
`of the issues to be tried. ............................................................................ 13  
`APPLE’S AFFIRMATIVE DEFENSES SHOW A PLAUSIBLE BASIS TO
`DENY PLAINTIFF’S REQUESTED RELIEF AND MEET THE
`TWOMBLY/IQBAL STANDARD. ................................................................................... 15  
`B.E. WILL NOT BE UNDULY PREJUDICED BY APPLE’S AFFIRMATIVE
`DEFENSES AS PLEADED. ........................................................................................... 16  
`CONCLUSION ................................................................................................................ 16  
`
`B.  
`
`I.  
`II.  
`
`III.  
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`IV.  
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`V.  
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`VI.  
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`- i -
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`Case 2:12-cv-02831-JPM-tmp Document 49-1 Filed 07/04/13 Page 3 of 23 PageID 796
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ......................................................................................................... passim
`
`ASUSTeK Computer Inc. v. AFTG-TG LLC,
`No. 5:CV 11-00192-EJD, 2011 WL 6845791 (N.D. Cal. Dec. 29, 2011) .................................6
`
`Bayer CropScience AG v. Dow AgroSciences LLC,
`Civil No. 10–1045 RMB/JS, 2011 WL 6934557 (D. Del. Dec. 30, 2011) ..............................12
`
`Bell Atlantic Corp. v. Twombly,
`550 U.S. 544 (2007) ......................................................................................................... passim
`
`Chiancone v. City of Akron,
`No. 5:11CV337, 2011 WL 4436587 (N.D. Ohio Sep. 23, 2011) ............................................10
`
`Damron v. ATM Central LLC,
`No. 1:10-cv-01210, 2010 WL 6512345 (W.D. Tenn. Oct. 29, 2010) ..................................9, 10
`
`Driessen v. Sony Music Entm’t,
`904 F. Supp. 2d 1196 (D. Utah 2012) ........................................................................................4
`
`Dysart v. Remington Rand, Inc.,
`31 F. Supp. 296 (D. Conn. 1939) .............................................................................................12
`
`Eastman Kodak Co. v. McAuley,
`2 F.R.D. 21 (S.D.N.Y. 1941) ...................................................................................................12
`
`Elan Microelectronics Corp. v. Apple, Inc.,
`No. C 09-01531 RS, 2009 WL 2972374 (N.D. Cal. Sep. 14, 2009) ..........................................3
`
`Elan Pharma International Ltd. v. Lupin Ltd.,
`Civil Action No. 09-1008 (JAG), 2010 WL 1372316 (D.N.J. Mar. 31, 2010) ..........................6
`
`Ferring B.V. v. Watson Labs., Inc. - (FL),
`No. 3:11-cv-00481-RCJ-VPC, 2012 WL 607539 (D. Nev. Feb. 24, 2012) ......................11, 13
`
`Graphic Packaging Int’l, Inc. v. C.W. Zumbiel Co.,
`Civil Action No. 1:10-cv-3008-AT, 2011 WL 5829674 (N.D. Ga. Aug. 1, 2011) ...............6, 7
`
`HCRI TRS Acquirer, LLC v. Iwer,
`708 F. Supp. 2d 687 (N.D. Ohio 2010) ....................................................................................10
`
`
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`- ii -
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`Case 2:12-cv-02831-JPM-tmp Document 49-1 Filed 07/04/13 Page 4 of 23 PageID 797
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`
`Holley Performance Prods., Inc. v. Quick Fuel Tech., Inc.,
`Civil Action No. 1:07-CV-00185-JHM, 2011 WL 3159177 (W.D. Ky. July 26, 2011) .........10
`
`In re Bill of Lading Transmission and Processing Sys. Patent Litig.,
`681 F.3d 1323 (Fed. Cir. 2012)..............................................................................................3, 4
`
`Indem. Ins. Co. of N. Am. v. Pan Am. Airways, Inc.,
`58 F. Supp. 338 (S.D.N.Y. 1944) ............................................................................................12
`
`Int’l Outdoor, Inc. v. City of Southgate,
`No. 2:11-CV-14719, 2012 WL 2367160 (E.D. Mich. Apr. 26, 2012) ....................................10
`
`Joao Control & Monitoring Sys. of Cal., LLC v. Sling Media, Inc.,
`No. C-11-6277 EMC, 2012 WL 3249510 (N.D. Cal. Aug. 7, 2012) .........................................4
`
`K-Tech Telecomm., Inc. v. Time Warner Cable, Inc.,
`714 F.3d 1277 (Fed. Cir. 2013)..................................................................................................3
`
`Kilgore-Wilson v. Home Depot U.S.A.,
`No. 2:11-cv-02601-JTF-cgc, 2012 WL 4062663 (W.D. Tenn. Sep. 14, 2012) .........................9
`
`Knowles Elec., LLC v. Analog Devices, Inc.,
`No. 11 C 6804, 2012 WL 1405735 (N.D. Ill. Apr. 23, 2012) ....................................................8
`
`Kontrick v. Ryan,
`540 U.S. 443 (2004) .................................................................................................................13
`
`Lone Star Document Mgmt., LLC v. Atalasoft, Inc.,
`Civil Action No. 2:11-CV-00319-JRG, 2012 WL 4033322 (E.D. Tex. Sep. 12, 2012) ............4
`
`Mark IV Indus. Corp. v. TransCore, L.P.,
`C. A. No. 09-418 GMS, 2009 WL 4828661 (D. Del. Dec. 2, 2009) .........................................5
`
`Memory Control Enter. LLC v. Edmunds.com,
`No. CV 11-7658 PA (JCx), 2012 WL 681765 (C.D. Cal. Feb. 8, 2012) ...........................11, 12
`
`Montgomery v. Wyeth,
`580 F.3d 455 (6th Cir. 2009) .........................................................................................9, 10, 13
`
`Nixson v. The Health Alliance,
`No. 1:10–CV–00338, 2010 WL 5230867 (S.D. Ohio Dec. 16, 2010) .......................................................10
`
`Pfizer Inc. v. Apotex Inc.,
`726 F. Supp. 2d 921 (N.D. Ill. 2010) .........................................................................................6
`
`Safeco Ins. Co. of Am. v. O’Hara Corp.,
`No. 08-CV-10545, 2008 WL 2558015 (E.D. Mich. June 25, 2008) .......................................10
`
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`- iii -
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`Case 2:12-cv-02831-JPM-tmp Document 49-1 Filed 07/04/13 Page 5 of 23 PageID 798
`
`
`Select Retrieval, LLC v. L.L. Bean, Inc.,
`Civil no. 2:12-cv-00003-NT, 2012 WL 5381503 (D. Me. Oct. 31, 2012) ................................4
`
`Sewell v. Allied Interstate, Inc.,
`No. 3:10-CV-113, 2011 WL 32209 (E.D. Tenn. Jan. 5, 2011) ................................................10
`
`Shane v. Bunzl Distrib. USA, Inc.,
`200 F. App’x 397 (6th Cir. 2006) ..............................................................................................8
`
`Sony/ATV Music Pub. LLC v. D.J. Miller Music Distrib., Inc., No. 3:09–cv–01098, 2011 WL 4729807
`(M.D. Tenn. Oct. 7, 2011) ..............................................................................................................10
`
`Teirstein v. AGA Med. Corp.,
`Civil Action No. 6:08cv14, 2009 WL 704138 (E.D. Tex. Mar. 16, 2009) ...................... passim
`
`Tyco Fire Prods. LP v. Victaulic Co.,
`777 F. Supp. 2d 893 (E.D. Pa. 2011) .....................................................................11, 12, 13, 16
`
`STATUTES
`
`35 U.S.C. § 282(b) (2012) .............................................................................................................15
`
`OTHER AUTHORITIES
`
`Advisory Comm. on Rules for Civil Procedure, Report of Proposed Amendments to Rules
`of Civil Procedure for the District Courts of the United States (1946) ...............................4, 12
`
`Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure (3d ed. 2004) ............9
`
`Fed. R. Civ. P. 8(a)(2) ....................................................................................................................10
`
`Fed. R. Civ. P. 8(b)(1)(A) ..............................................................................................................10
`
`Fed. R. Civ. P. 8(c)(1) ....................................................................................................................10
`
`Fed. R. Civ. P. 84 .........................................................................................................................2, 3
`
`Fed. R. Civ. P. 84 note .....................................................................................................................3
`
`Fed. R. Civ. P. app. Form 30. ....................................................................................................2, 13
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`- iv -
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`Case 2:12-cv-02831-JPM-tmp Document 49-1 Filed 07/04/13 Page 6 of 23 PageID 799
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`Defendant Apple Inc. (“Apple”), by and through its undersigned counsel, hereby submits
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`this memorandum in opposition to B.E. Technology, L.L.C.’s (“B.E.”) Motion to Dismiss Under
`
`Fed. R. Civ. P. 12(b)(6) And Motion to Strike Under Fed. R. Civ. P. 12(f). (Pl. B.E.’s Mot. to
`
`Dismiss under Fed. R. Civ. P. 12(b)(6) and Mot. to Strike under Fed. R. Civ. P. 12(f), ECF No.
`
`38 [hereinafter Motion].)
`
`I.
`
`STATEMENT OF FACTS
`
`B.E.’s complaint alleges infringement of two patents, U.S. Patent No. 6,628,314 (the
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`“’314 patent”) and U.S. Patent No. 6,771,290 (the “’290 patent”) (together, the “patents-in-
`
`suit”), both of which “generally relate[] to user interfaces for accessing computer applications
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`and information resources.” (Compl. ¶¶ 7, 10, ECF No. 1.) B.E. alleges that “Apple has
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`infringed the ’314 patent by using a method of providing demographically targeted advertising
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`that directly infringes at least Claim 11 of the ’314 patent either literally or under the doctrine of
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`equivalents,” (Compl. ¶ 14), and that “Apple has infringed at least Claim 2 of the ’290 patent by
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`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,” (
`
`Compl. ¶ 17). Although B.E.’s complaint lists several Apple products that allegedly infringe
`
`(but does not include several others that B.E. included in its Infringement Contentions), it is
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`devoid of factual allegations showing how any such infringement supposedly is accomplished.
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`On December 31, 2012, Apple answered B.E.’s Complaint denying that it infringes or
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`has infringed the asserted patents, bringing counterclaims seeking declaratory judgments of
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`invalidity and non-infringement of the patents-in-suit, and asserting several affirmative defenses.
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`(Answer, ECF No. 26.) A month after Apple’s Answer was filed and without any attempt to
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`confer with Apple’s counsel, B.E. filed motions to dismiss under Fed. R. Civ. P. 12(b)(6) and to
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`strike under Fed. R. Civ. P. 12(f) against Apple, (see Motion, supra), as well as against most of
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`

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`Case 2:12-cv-02831-JPM-tmp Document 49-1 Filed 07/04/13 Page 7 of 23 PageID 800
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`the defendants in the eighteen related cases.
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`II.
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`APPLE’S COUNTERCLAIMS ARE CONSISTENT WITH THE FEDERAL
`RULES OF CIVIL PROCEDURE AS INTERPRETED BY TWOMBLY/IQBAL
`AND HAVE THE SAME LEVEL OF SPECIFICITY AS PLAINTIFF’S
`COMPLAINT.
`
`B.E. has moved to dismiss Apple’s counterclaims, even though they are stated with
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`substantially the same level of specificity and factual support as B.E.’s own claims, consistent
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`with the form of complaint for patent infringement set forth in the Federal Rules of Civil
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`Procedure and the level of detail required by Form 30 appended to those Rules. B.E. argues
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`incongruously that defendants in patent infringement suits should be held to a higher pleading
`
`standard than plaintiffs, despite the fact that defendants have less time to prepare their responses
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`and that plaintiffs initiate the costly process of discovery by bringing suit. Neither the Federal
`
`Rules, nor the standard of pleading announced by the Supreme Court in Bell Atlantic Corp. v.
`
`Twombly, 550 U.S. 544 (2007), and Ashcroft v. Iqbal, 556 U.S. 662 (2009), support, let alone
`
`compel, such divergent treatment of claims and counterclaims.
`
`A.
`
`Apple’s counterclaims are adequately stated under the Federal Rules of Civil
`Procedure.
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`Apple’s counterclaims for declaratory judgment are pleaded in accordance with Forms 18
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`and 30 of the Federal Rules of Civil Procedure. Pleadings that are consistent with the forms are
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`sufficient under the Rules. Fed. R. Civ. P. 84. Form 30 provides that counterclaims should be
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`“[s]et forth . . . in the same way a claim is pleaded in a complaint.” Fed. R. Civ. P. app. Form
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`30. Form 18 sets forth an example of a sufficient complaint for patent infringement and
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`includes:
`
`(1) an allegation of jurisdiction; (2) a statement that the plaintiff owns the patent;
`(3) a statement that the defendant has been infringing the patent “by making,
`selling, and using [the device] embodying the patent”; (4) a statement that the
`plaintiff has given the defendant notice of its infringement; and (5) a demand for
`an injunction and damages.
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`Case 2:12-cv-02831-JPM-tmp Document 49-1 Filed 07/04/13 Page 8 of 23 PageID 801
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`In re Bill of Lading Transmission and Processing Sys. Patent Litig., 681 F.3d 1323, 1334 (Fed.
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`Cir. 2012) (quoting McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1356-57 (Fed. Cir. 2007));
`
`see also K-Tech Telecomm., Inc. v. Time Warner Cable, Inc., 714 F.3d 1277 (Fed. Cir. 2013).1
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`Apple’s counterclaims for declaratory judgment of non-infringement follow this form,
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`adjusted for the pleading requirements of declaratory judgment. Counterclaims one and three
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`include: (a) an allegation of jurisdiction, (Answer 5); (b) a statement that an actual controversy
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`exists as to whether the patents are infringed, (Answer 6, 7); (c) an allegation that Apple has not
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`and does not infringe the patents-in-suit literally or under the doctrine of equivalents, (Answer 6-
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`7); and (d) a demand for relief in the form of a declaratory judgment of non-infringement,
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`(Answer 8). Apple’s counterclaims two and four, regarding invalidity of the patents-in-suit,
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`contain corresponding allegations. (Answer 6, 7, 8.)
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`The forms in the Appendix of the Federal Rules “illustrate the simplicity and brevity that
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`[the] rules contemplate.” Fed. R. Civ. P. 84. The Supreme Court adopted the revised versions of
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`these forms as part of the amendments of 2007, three weeks before the Court announced its
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`decision in Twombly. See Fed. R. Civ. P. 84 note. Though some courts have observed that the
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`forms have not been revised in light of Twombly, see, e.g., Elan Microelectronics Corp. v. Apple,
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`Inc., No. C 09-01531 RS, 2009 WL 2972374, at *2 (N.D. Cal. Sep. 14, 2009) (stating that “[i]t is
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`not easy to reconcile Form 18 with the guidance of the Supreme Court in Twombly and Iqbal . . .
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`.”), the Federal Circuit has held that the forms remain the standard against which claims for
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`direct infringement are to be measured. In re Bill of Lading, 681 F.3d at 1334 (“[T]o the extent
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`that parties argue that Twombly and its progeny conflict with the Forms and create differing
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`pleading requirements, the Forms control.” (citing McZeal, 501 F.3d at 1360)). The Federal
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`1 Prior to 2007, the model complaint for patent infringement appeared as Form 16. Form 16 was renumbered Form
`18 in the style amendments effective December 1, 2007. In re Bill of Lading, 681 F.3d at 1334 n.5.
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`Case 2:12-cv-02831-JPM-tmp Document 49-1 Filed 07/04/13 Page 9 of 23 PageID 802
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`Circuit noted that practitioners were specifically invited to rely on the forms, id. (“The
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`amendment serves to emphasize that the forms contained in the Appendix of Forms are sufficient
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`to withstand attack under the rules under which they were drawn, and that the practitioner using
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`them may rely on them to that extent.” (quoting Advisory Comm. on Rules for Civil Procedure,
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`Report of Proposed Amendments to Rules of Civil Procedure for the District Courts of the
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`United States 118-19 (1946) [hereinafter Advisory Comm. Report])), and that “any changes to the
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`Federal Rules of Civil Procedure ‘must be obtained by the process of amending the Federal
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`Rules, and not by judicial interpretation,’ ” id. (quoting Leatherman v. Tarrant Cnty. Narcotics
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`Intelligence & Coordination Unit, 507 U.S. 163, 168 (1993)). Since In re Bill of Lading, district
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`courts have followed the Federal Circuit and held that claims related to direct infringement are
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`sufficient if they reflect the degree of particularity in Form 18. See, e.g., Driessen v. Sony Music
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`Entm’t, 904 F. Supp. 2d 1196, 1198-1201 (D. Utah 2012); Joao Control & Monitoring Sys. of
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`Cal., LLC v. Sling Media, Inc., No. C-11-6277 EMC, 2012 WL 3249510, at *4-5 (N.D. Cal.
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`Aug. 7, 2012); Lone Star Document Mgmt., LLC v. Atalasoft, Inc., Civil Action No. 2:11-CV-
`
`00319-JRG, 2012 WL 4033322, at *2, 3-4 (E.D. Tex. Sep. 12, 2012); Select Retrieval, LLC v.
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`L.L. Bean, Inc., Civil no. 2:12-cv-00003-NT, 2012 WL 5381503, at *2-3 (D. Me. Oct. 31, 2012).
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`B.
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`Apple’s counterclaims are properly pleaded under the Twombly/Iqbal
`standard.
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`In Twombly, the Supreme Court interpreted the standard for pleading claims for relief set
`
`forth in Rule 8(a)(2) of the Federal Rules of Civil Procedure, which applies to all civil actions in
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`federal court. Iqbal, 556 U.S. at 684. “Federal Rule of Civil Procedure 8(a)(2) requires only ‘a
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`short and plain statement of the claim showing that the pleader is entitled to relief,’ in order to
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`‘give the defendant fair notice of what the . . . claim is and the grounds upon which it rests.’ ”
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`Twombly, 550 U.S. at 555 (quoting Conley v. Gibson, 355 U.S. 41, 47 (1957)). This inquiry is
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`Case 2:12-cv-02831-JPM-tmp Document 49-1 Filed 07/04/13 Page 10 of 23 PageID 803
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`not “a ‘fact-based’ question of law,” 556 U.S. at 674, and “does not require ‘detailed factual
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`allegations,’ ” but a claim for relief must be “plausible on its face,” id. at 678 (quoting 550 U.S.
`
`at 570). “[D]etermining whether a complaint states a plausible claim is context-specific,
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`requiring the reviewing court to draw on its experience and common sense.” Id. at 663-64
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`(citing 550 U.S. at 556).
`
`In the patent context, courts have noted that there are “practical difficulties of pleading
`
`patent infringement with more specificity than that required by Form 18.” Mark IV Indus. Corp.
`
`v. TransCore, L.P., C. A. No. 09-418 GMS, 2009 WL 4828661, at *4 (D. Del. Dec. 2, 2009).
`
`Courts that have adopted rules specific to patent cases have also judged the level of specificity
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`required at the pleading stage in light of those rules’ requirements for early disclosure of
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`infringement and invalidity theories. For example, the Eastern District of Texas has held that in
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`a counterclaim for invalidity, just as in a claim for infringement, allegations must be “clear
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`enough as to effectively put Plaintiff on notice of the legal and factual grounds for the asserted
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`invalidity.” Teirstein v. AGA Med. Corp., Civil Action No. 6:08cv14, 2009 WL 704138, at *4
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`(E.D. Tex. Mar. 16, 2009). In Teirstein, the court denied a motion to dismiss the defendant’s
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`counterclaim for declaratory judgment of invalidity. Id. at *6. The counterclaim alleged “[t]he
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`claims of the [patent-in-suit] are invalid for failing to satisfy one or more of the statutory
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`requirements for patentability set forth in 35 U.S.C. §§ 101, 102, 103 and/or 112.” Id. at *4.
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`This was sufficient under the Twombly standard not only because it put the plaintiff on notice by
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`listing the statutory sections under which the patent was allegedly invalid, but also because it was
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`a “short and plain statement of the claim,” that “show[ed] that the pleader is entitled to relief.”
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`Id. (citing Twombly, 550 U.S. at 555). It also is almost exactly the same language used by Apple
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`in its Third Affirmative Defense and Counterclaim Two. (Answer 4, 6.)
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`Case 2:12-cv-02831-JPM-tmp Document 49-1 Filed 07/04/13 Page 11 of 23 PageID 804
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`The Teirstein court noted that its approach made sense in the context of that district’s
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`Local Patent Rules, because those rules require early disclosure of the technical details
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`underlying the infringement and invalidity theories. Teirstein, 2009 WL 704138, at *5. The
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`District of New Jersey reached the same conclusion in Elan Pharma International Ltd. v. Lupin
`
`Ltd., Civil Action No. 09-1008 (JAG), 2010 WL 1372316, at *4-5 (D.N.J. Mar. 31, 2010), when
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`faced with a motion to dismiss similar to B.E.’s motion in this case. The court noted that the
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`motion to dismiss “suggests a factual disclosure that the Federal Circuit does not require, and a
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`disclosure that, if required here, would make [the Local Patent Rules] superfluous.” Id. at *5;
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`see also ASUSTeK Computer Inc. v. AFTG-TG LLC, No. 5:CV 11-00192-EJD, 2011 WL
`
`6845791, at *13 (N.D. Cal. Dec. 29, 2011) (reasoning that “requiring a heightened pleading of
`
`invalidity would circumvent this Court’s Patent Local Rules which require detailed disclosures
`
`as to invalidity contentions soon after the suit is filed”); Graphic Packaging Int’l, Inc. v. C.W.
`
`Zumbiel Co., Civil Action No. 1:10-cv-3008-AT, 2011 WL 5829674, at *4 (N.D. Ga. Aug. 1,
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`2011) (stating that “the Patent Local Rules operate to make further factual pleading
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`unnecessary”); Pfizer Inc. v. Apotex Inc., 726 F. Supp. 2d 921, 938 (N.D. Ill. 2010) (reasoning
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`that “dismissal of [defendant’s] counterclaims for failure to satisfy Rule 8(a) would undermine
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`the Local Patent Rules”).
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`Apple’s counterclaims meet both the letter of the Federal Rules’ requirements and the
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`spirit of the overall set of rules governing this case, which includes this District’s Local Patent
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`Rules requiring early and detailed disclosures. In Counterclaims Two and Four, Apple points out
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`the statutory basis for invalidity and further narrows the allegation by pointing to specific
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`sections. (Answer 6-7.) This level of specificity matches Forms 18 and 30 and the allegations
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`accepted by the courts cited above. It is sufficient because it notifies B.E. of the statutory
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`Case 2:12-cv-02831-JPM-tmp Document 49-1 Filed 07/04/13 Page 12 of 23 PageID 805
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`arguments Apple will consider advancing at trial. Likewise, Apple’s Counterclaims One and
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`Three, for declaration of non-infringement, are short and plain statements that are facially
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`plausible (see Answer 6) and they should be read in the context of the Local Patent Rules’
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`requirement for early detailed disclosure of the defendants’ non-infringement theories. LPR 3.3,
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`3.4. Read in the context of the answer, Apple’s counterclaims provide sufficient notice that it
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`does not “provid[e] advertising and access to information over a network” in a way that infringes
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`the ’314 patent or the ’290 patent. (Answer 2, 6-7.)
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`C.
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`Apple’s counterclaims are pleaded with specificity equal to plaintiff’s claims.
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`Dismissal of Apple’s counterclaims would unfairly hold defendants to a higher standard
`
`of pleading than plaintiff itself has met. See Graphic Packaging Int’l, Inc., 2011 WL 5829674,
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`at *4 (agreeing “with other district courts that have found that it would be ‘incongruous to
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`require heightened pleading’ for invalidity counterclaims when the pleading standard for
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`infringement does not require factual allegations to support the infringement claims” (quoting
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`Microsoft Corp. v. Phoenix Solutions, Inc., 741 F. Supp. 2d 1156, 1159 (C.D. Cal. 2010)));
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`Teirstein, 2009 WL 704138, at *5 (noting that “[t]o require anything more of Defendant at the
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`pleading stage would be to impose a higher burden on Defendant’s claim for invalidity than
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`Plaintiff’s claim for infringement”). Though B.E. argues that Apple should identify which
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`products do not infringe and explain why they do not, this is far beyond the specificity that
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`plaintiff includes in its own complaint, and it would render superfluous this District’s
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`requirements for early disclosure of non-infringement contentions under LPR 3.3. B.E.’s
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`Complaint does little more than generally describe the patents it asserts, (Compl. ¶¶ 6-7, 9-10),
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`and then alleges, only in the most general and conclusory terms, that Apple infringes those
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`patents, (Compl. ¶ 14, 17). B.E.’s allegations of infringement are little more than a description
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`of the patents themselves and add little or no factual support to its claims. (Compl. ¶¶ 7, 10, 14,
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`Case 2:12-cv-02831-JPM-tmp Document 49-1 Filed 07/04/13 Page 13 of 23 PageID 806
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`17.) Further, when B.E. served its Infringement Contentions under LPR 3.1 several months after
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`filing its Complaint, it accused multiple Apple products and third-party products that were never
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`mentioned anywhere in its Complaint, which belies any argument that B.E.’s complaint provided
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`greater notice to Apple than Apple’s Answer provides to B.E.2
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`Apple’s counterclaims are supported by at least the same level of detail as B.E.’s
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`allegations. Apple alleges that it infringes neither the ’314 patent nor the ’290 patent, which
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`when read with the rest of the answer means that Apple does not “provid[e] advertising and
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`access to information over a network” in a way that infringes the ’314 patent or the ’290 patent.
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`(Answer 2, 6-7); see Knowles Elec., LLC v. Analog Devices, Inc., No. 11 C 6804, 2012 WL
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`1405735, at *4 (N.D. Ill. Apr. 23, 2012) (examining the context of the complaint to conclude that
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`defendant’s counterclaim for non-infringement was adequately stated). In its counterclaims for
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`declaratory judgment of invalidity, Apple points to specific statutory sections under which the
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`patents-in-suit may be invalid. (Answer 6-7.) At the pleading stage, that is all that is required.
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`B.E.’s motion to dismiss Apple’s counterclaims pursuant to Rule 12(b)(6) should be
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`denied for the reasons stated above. Alternatively, to the extent that the Court grants plaintiff’s
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`motion, Apple respectfully requests leave to amend. See Shane v. Bunzl Distrib. USA, Inc., 200
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`F. App’x 397, 405-06 (6th Cir. 2006) (citing Foman v. Davis, 371 U.S. 178, 182 (1962))
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`(allowing party to amend dismissed claims when amendment addressed reasons for dismissal).
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`2 B.E. now purports to accuse iAd Network, MacBook, iMac, App Store, iTunes, YouTube, Netflix and Hulu Plus,
`but those products are not referenced in its Complaint. Further, while LPR 3.1(c) required B.E. to produce charts
`identifying, for each accused product, the aspects of those products that meet each claim element, B.E.’s contentions
`consist largely of screenshots from Apple’s website. In fact, B.E. provided no infringement chart at all for multiple
`accused Apple products.
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`Case 2:12-cv-02831-JPM-tmp Document 49-1 Filed 07/04/13 Page 14 of 23 PageID 807
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`III.
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`APPLE’S AFFIRMATIVE DEFENSES GIVE FAIR AND ADEQUATE NOTICE
`OF THE ISSUES TO BE TRIED.
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`Motions to strike are disfavored and should be granted only when “the challenged
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`allegations are ‘so unrelated to the plaintiff's claims as to be unworthy of any consideration as a
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`defense and that their presence in the pleading throughout the proceeding will be prejudicial to
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`the moving party.’ ” Damron v. ATM Cent. LLC, No. 1:10-cv-01210-JDB-egb, 2010 WL
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`6512345, at *1 (W.D. Tenn. Oct. 29, 2010) (quoting 5C Charles Alan Wright & Arthur R.
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`Miller, Federal Practice and Procedure § 1380 (3d ed. 2004)). Though the Sixth Circuit has not
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`explicitly decided whether the heightened pleading requirement of Twombly/Iqbal applies to
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`affirmative defenses, Kilgore-Wilson v. Home Depot U.S.A., No. 2:11-cv-02601-JTF-cgc, 2012
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`WL 4062663, at *2 (W.D. Tenn. Sep. 14, 2012), this Court has noted that what guidance the
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`Sixth Circuit has given since those decisions suggests that it does not, id. at *2 n.2 (citing
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`Montgomery v. Wyeth, 580 F.3d 455, 468 (6th Cir. 2009)).
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`A.
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`The Twombly/Iqbal standard should not apply to affirmative defenses.
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`The Supreme Court did not purport to apply the Rule 8(a) standard, as interpreted in
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`Twombly and Iqbal, to affirmative defenses. Iqbal, 556 U.S. at 677 (interpreting Fed. R. Civ. P.
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`8(a)(2), which applies to claims for relief); Twombly, 550 U.S. at 555 (same). Although district
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`courts considering whether to apply the Twombly/Iqbal standard to affirmative defenses have
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`reached differing conclusions, see 5C Wright & Miller, supra, § 1274 (summarizing
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`disagreement in the district courts), the Sixth Circuit, in a post-Twombly/Iqbal decision, declined
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`to impose a heightened pleading standard to an affirmative defense in light of the text of Rule
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`8(b)(1), Montgomery, 580 F.3d at 468. In Montgomery, the Sixth Circuit held that the
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`defendant’s answer sufficiently pleaded a statute of repose defense where the answer asserted it
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`simply by name and generally asserted “defenses of the Tennessee Products Liability Act of
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`Case 2:12-cv-02831-JPM-tmp Document 49-1 Filed 07/04/13 Page 15 of 23 PageID 808
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`1978 . . . .” Id. at 467-68. In Damron v. ATM Central LLC, this Court denied a motion to strike
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`affirmative defenses similar to B.E.’s motion in this case based on Montgomery. 2010 WL
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`6512345, at *2 (noting that “there is a Sixth Circuit case post-Twombly and Iqbal that, while not
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`discussing these cases directly, does state that ‘[t]he Federal Rules of Civil Procedure do not
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`require a heightened pleading standard for . . . defense[s].’ ” (quoting 580 F.3d at 468)).
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`Moreover, among district courts, the trend within this Circuit holds that the Twombly/Iqbal
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`pleading requirement does not apply to affirmative defenses, in agreement with this Court’s
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`conclusion in Damron.3
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`It is not surprising that courts decline to extend Twombly and Iqbal to affirmative
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`defenses, given the textual differences between the rules that govern claims for relief, on the one
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`hand, and defenses, on the other. Whereas Rule 8(a) requires “a short and plain statement of the
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`claim showing that the pleader is entitled to relief,” Fed. R. Civ. P. 8(a)(2) (emphasis added),
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`Rule 8(b) and (c) require something less. Rule 8(b) requires that a party “state in short and plain
`
`terms its defenses to each claim asserted against it,” Fed. R. Civ. P. 8(b)(1)(A), and Rule 8(c)
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`requires that “a party must state any avoidance or affirmative defense . . . .” Fed. R. Civ. P.
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`8(c)(1). Indeed, the Supreme Court couched its interpretation of Rule 8(a) in the text of the rule.
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`See Iqbal, 556 U.S. at 679 (“But where the well-pleaded facts do not permit the court to infer
`
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`3 See, e.g., Int’l Outdoor, Inc. v. City of Southgate, No. 2:11-CV-14719, 2012 WL 2367160, at *8-9 (E.D. Mich.
`Apr. 26, 2012) (declining to apply Twombly/Iqbal to affirmative defenses absent clear direction from Sixth Circuit);
`Sony/ATV Music Pub. LLC v. D.J. Miller Music Distrib., Inc., No. 3:09-cv-01098, 2011 WL 4729807, at