Case 2:12-cv-02834-JPM-tmp Document 53 Filed 08/15/13 Page 1 of 8 PageID 515
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`B.E. TECHNOLOGY, L.L.C.,
`
`Plaintiff/Counter-Defendant,
`
`v.
`
`MATCH.COM L.L.C.,
`
`Defendant/Counterclaimant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`
`Case No. 2:12-CV-02834 JPM tmp
`
`JURY DEMAND
`
`PLAINTIFF B.E. TECHNOLOGY, L.L.C.’S REPLY IN SUPPORT OF ITS
`MOTION TO DISMISS UNDER FED. R. CIV. P. 12(b)(6)
`
`
`
`Richard M. Carter (TN B.P.R. #7285)
`Adam C. Simpson (TN B.P.R. #24705)
`MARTIN, TATE, MORROW & MARSTON, P.C.
`6410 Poplar Avenue, Suite 1000
`Memphis, TN 38119-4839
`Telephone: (901) 522-9000
`
`Robert E. Freitas (CA Bar No. 80948)
`Craig R. Kaufman (CA Bar No. 159458)
`Daniel J. Weinberg (CA Bar No. 227159)
`Qudus B. Olaniran (CA Bar No. 267838)
`FREITAS TSENG & KAUFMAN LLP
`100 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`Telephone: (650) 593-6300
`
`Attorneys for Plaintiff
`B.E. Technology, L.L.C.
`
`
`Dated: August 15, 2013
`
`
`
`
`
`
`

`
`Case 2:12-cv-02834-JPM-tmp Document 53 Filed 08/15/13 Page 2 of 8 PageID 516
`
`Defendant Match.com L.L.C. (“Match”) presents no legally sufficient response to the
`
`points and authorities presented in plaintiff B.E. Technology, L.L.C.’s (“B.E.”) motion to
`
`dismiss Match’s counterclaims.1 The sufficiency of Match’s pleading is not measured against
`
`Official Form 18 of the Appendix to the Federal Rules of Civil Procedure. The standard against
`
`which Match’s counterclaims must be measured is the Supreme Court’s Twombly and Iqbal
`
`standard and Match’s declaratory judgment counterclaims do not measure up. For that reason,
`
`the Court should grant B.E.’s motion to dismiss.
`
`I.
`
`MATCH’S CLAIMS FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT, INVALIDITY, AND UNENFORCEABILITY SHOULD
`BE DISMISSED.
`
`A.
`
`The Twombly/Iqbal Standard Governs Match’s Counterclaims.
`
`As discussed in B.E.’s opening brief, declaratory judgment counterclaims must satisfy the
`
`standard set forth by the Supreme Court in Ashcroft v. Iqbal, 556 U.S. 662 (2009) and Bell Atl.
`
`Corp. v. Twombly, 550 U.S. 544 (2007). Match does not approach the requirements of that
`
`standard and its counterclaims are devoid of factual allegations sufficient to permit an inference
`
`that B.E.’s patents are not infringed, invalid or unenforceable. Compare D.E. 19 at 8-10 with
`
`Groupon, Inc. v. MobGob LLC, 2011 WL 2111986, at *5 (N.D. Ill. May 25, 2011) (the
`
`counterclaim “provides the Court with no basis for making a reasonable inference in
`
`[defendant’s] favor”).
`
`Match wrongly argues that its counterclaims are adequate because they meet the
`
`requirements of Official Forms 18 and 30 of the Federal Rules of Civil Procedure. D.E. 47 at 5
`
`
`1 B.E. simultaneously moved to dismiss Match’s counterclaims and strike certain affirmative
`defenses. See D.E. 30. A party moving for relief under Fed. R. Civ. P. 12(b) has a right to file a
`reply memorandum without leave of court, Civil L.R. 12.1(c), while no such right exists for a
`party seeking relief under Fed. R. Civ. P. 12(f). Civil L.R. 7.2(c). To avoid further burdening
`the Court’s already heavy docket, B.E. files only a reply in support of its Rule 12(b) motion and
`rests on its moving papers to support its Rule 12(f) motion.
`
`- 2 -
`
`

`
`Case 2:12-cv-02834-JPM-tmp Document 53 Filed 08/15/13 Page 3 of 8 PageID 517
`
`(“Match’s counterclaims for declaratory judgment are consistent with Forms 18 and 30 of the
`
`Federal Rules of Civil Procedure.”). A complaint for direct patent infringement is measured
`
`against Official Form 18. In re Bill of Lading Transmission and Processing Sys. Patent Litig.,
`
`681 F.3d 1323, 1334 (Fed. Cir. 2012). There is no Official Form for pleading declaratory
`
`judgment claims or counterclaims. See Memory Control Enter., LLC v. Edmunds.com, Inc.,
`
`2012 WL 681765, at *3 (C.D. Cal. Feb. 8, 2012) (“[W]hile the Appendix of the Federal Rules of
`
`Civil Procedure includes a form for patent infringement, it includes no such form for patent
`
`invalidity. Until such a form is included, defendants must meet the pleading standard the
`
`Supreme Court announced in Twombly and Iqbal.”).
`
`Match cites no authority establishing that Official Form 18 governs the pleading of
`
`declaratory judgment claims. Instead, Match acknowledges that the form governs the pleading
`
`of a claim of direct patent infringement. D.E. 47 at 5 (“Form 18 states that a complaint for patent
`
`infringement should include. . . .”). The Twombly/Iqbal standard, a standard based on Federal
`
`Rule of Civil Procedure 8 that is generally applicable to cases filed in federal court, therefore
`
`governs the pleading of a declaratory judgment claim. See Iqbal, 556 U.S. at 684 (“Our decision
`
`in Twombly expounded the pleading standard for ‘all civil actions,’ and it applies to antitrust and
`
`discrimination suits alike.”).
`
`B.
`
`Under the Governing Rules, Match’s Burden to Allege
`Non-Infringement and Invalidity Is Different from B.E.’s Burden to Allege
`Direct Infringement.
`
`Match argues there is no basis for different pleading standards for plaintiffs and
`
`counterclaimants2 and such differences would be “nonsensical.” D.E. 47 at 3 (“[I]t would be
`
`
`2 The actual distinction in the law is between infringement claimants and counterclaimants on the
`one hand, and declaratory judgment claimants and counterclaimants, on the other. A
`counterclaimant alleging direct patent infringement may rely on Official Form 18. A plaintiff
`
`- 3 -
`
`

`
`Case 2:12-cv-02834-JPM-tmp Document 53 Filed 08/15/13 Page 4 of 8 PageID 518
`
`nonsensical to suggest that Plaintiff’s Complaint, which contains fewer allegations than
`
`Defendant’s non-infringement counterclaim, is somehow satisfactory while a mirror allegation of
`
`non-infringement is not.”). If it is nonsensical, it is the direct result of Rule 8, Twombly and
`
`Iqbal, and the decisions that were made in the adoption of the Official Forms. B.E. submits that
`
`it would be equally, if not more, nonsensical for the Court to recognize an exception, benefiting
`
`patent infringement defendants, but not other defendants, to the Twombly/Iqbal standard
`
`governing “all civil actions.”
`
`Match also argues that pleading standards for patent declaratory judgment counterclaims
`
`can be lowered because of the existence of unique local rules governing patent cases. D.E. 47 at
`
`4 (“[D]ismissal of Match’s counterclaims would undermine the Local Patent Rules, which
`
`require more detailed disclosures at a later stage.”); id. (“Under the Local Patent Rules these
`
`filings will contain any additional basis for Match’s counterclaims.”). The adoption of local
`
`rules does not “alter a defendant’s pleading obligations” and does not create an exception to a
`
`defendant’s pleading obligations under Twombly and Iqbal. See Tyco Fire Prods. LP v. Victaulic
`
`Co., 777 F. Supp. 2d 893, 904 (E.D. Pa. 2011); see also GE Lighting Solutions, LLC v. Lights of
`
`Am., Inc., 2013 WL 1874855, at *2 (N.D. Ohio May 3, 2013) (“[I]t would undermine Rule 8 to
`
`permit a threadbare assertion of a claim on the promise that discovery will unveil the claim’s
`
`factual basis.”). Moreover, under Federal Rule of Civil Procedure 83(a)(1), a local rule cannot
`
`modify the pleading requirements of Rule 8, as they have been determined by the Supreme
`
`Court. See Fed. R. Civ. P. 83(a)(1) (“A local rule must be consistent with—but not duplicate—
`
`federal statutes and rules adopted under 28 U.S.C. §§ 2072 and 2075, . . . .”).
`
`
`asserting a declaratory judgment claim must satisfy the Twombly/Iqbal standard because there is
`no official form for declaratory judgment claims and counterclaims.
`
`- 4 -
`
`

`
`Case 2:12-cv-02834-JPM-tmp Document 53 Filed 08/15/13 Page 5 of 8 PageID 519
`
`In Tyco Fire, the district court explained that the difference in pleading standards cannot
`
`be remedied by allowing a counterclaimant to evade the Supreme Court’s rulings. 777 F. Supp.
`
`2d at 904 (“Two wrongs do not make a right.”). If there is a problem requiring a solution, the
`
`appropriate remedy is to modify or eliminate the Rule 84 forms or to update the official forms to
`
`comply with the otherwise existing requirements of current law. Id. at 905. Until then,
`
`defendants asserting counterclaims must do so in the manner required by Twombly and Iqbal,
`
`which requires more than what Match has done here.
`
`Match contends its counterclaims are supported by sufficient factual allegations. But
`
`Microsoft’s so-called factual allegations merely render its claims possible, not plausible. For
`
`example, Match contends that it “points to specific prior art as a basis for invalidity,” but it
`
`makes no allegations supporting how or why “[t]he ’418 Patent anticipates and/or renders
`
`obvious at least claim 11 of the ’314 Patent,” or how or why “[t]he ’392 Patent (in view of the
`
`’061 Patent) renders obvious at least claim 11 of the ’314 Patent.” D.E. 47 at 3; see also D.E. 19
`
`at 9. These are legal conclusions couched as factual allegations. See Iqbal, 556 U.S. at 678
`
`(“[W]e are not bound to accept as true a legal conclusion couched as a factual allegations.”)
`
`(internal quotation marks omitted).
`
`Match’s citation to “Title 35, United States Code, including §§ 101, 102, 103 and/or 112,
`
`and the rules, regulations, and laws pertaining thereto,” offers no additional support. D.E. 19 at
`
`9. “A fleeting reference to all (or most) of these [invalidity] defenses does not rise to the level of
`
`‘a short and plain statement of the claim showing that the pleader is entitled to relief.’” PPS
`
`Data, LLC v. Allscripts Healthcare Solutions, Inc., 2012 WL 243346, at *4 (M.D. Fla. Jan. 25,
`
`2012) (quoting Fed. R. Civ. P. 8(a)(2)). See also Duramed Pharms, Inc. v. Watson Labs, Inc.,
`
`2008 WL 5232908, at *4 (D. Nev. Dec. 12, 2008) (granting motion to dismiss counterclaims);
`
`- 5 -
`
`

`
`Case 2:12-cv-02834-JPM-tmp Document 53 Filed 08/15/13 Page 6 of 8 PageID 520
`
`Sprint Commc’ns. Co. v. Theglobe.com, Inc., 233 F.R.D. 615, 619 (D. Kansas 2006) (striking
`
`counterclaim); PB Farradyne, Inc. v. Peterson, 2006 WL 132182, at *3 (N.D. Cal. Jan 17, 2006)
`
`(dismissing counterclaim).
`
`Match’s allegations of laches are equally deficient. See D.E. 19 at 9-10. Rather than cite
`
`the substance of its third counterclaim, Match relies on allegations asserted in its response brief.
`
`See D.E. 47 at 3 (“Match’s products and services . . . have been on the market for many years. . .
`
`. [I]t can be reasonably inferred that B.E. knew of its rights against Match and intended to
`
`relinquish those rights.”). This Court is “not required to ‘accept as true legal conclusions or
`
`unwarranted factual inferences.’” In re Bill of Lading, 681 F.3d at 1331 (quoting Jones v. City of
`
`Cincinnati, 521 F.3d 555, 559 (6th Cir. 2008)). Moreover, a counterclaimant may not satisfy its
`
`obligation to plead sufficient facts through arguments in a response brief. See Jocham v. Tuscola
`
`Cnty., 239 F. Supp. 2d 714, 732 (E.D. Mich. 2003) (“The pleading contains no such allegation,
`
`and the plaintiffs may not amend their complaint through a response brief.”) (citing Shanahan v.
`
`City of Chicago, 82 F.3d 776, 781 (7th Cir. 1996).
`
`Finally, Match argues that its allegations are at least as detailed as the allegations in
`
`B.E.’s complaint. D.E. 47 at 1 (“Match’s counterclaims contain the same, if not more, detail
`
`than B.E.’s allegations of infringement in its Complaint.”). Regardless of whether that is true,
`
`B.E.’s complaint is sufficient under Official Form 18, whereas Match cannot point to a similar
`
`safe harbor applicable to its declaratory judgment counterclaims.
`
`- 6 -
`
`
`
`

`
`Case 2:12-cv-02834-JPM-tmp Document 53 Filed 08/15/13 Page 7 of 8 PageID 521
`
`II.
`
`CONCLUSION
`
`For the foregoing reasons, B.E. respectfully requests that the Court grant its motion to
`
`dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6).
`
`Dated: August 15, 2013
`
`
`Respectfully submitted,
`
`
`
`
`
`
`s/Daniel J. Weinberg
`Robert E. Freitas (CA Bar No. 80948)
`Craig R. Kaufman (CA Bar No. 159458)
`Daniel J. Weinberg (CA Bar No. 227159)
`Qudus B. Olaniran (CA Bar No. 267838)
`FREITAS TSENG & KAUFMAN LLP
`100 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`Telephone: (650) 593-6300
`Facsimile: (650) 593-6301
`rfreitas@ftklaw.com
`ckaufman@ftklaw.com
`dweinberg@ftklaw.com
`qolaniran@ftklaw.com
`
`
`Richard M. Carter (TN B.P.R. #7285)
`Adam C. Simpson (TN B.P.R. #24705)
`MARTIN, TATE, MORROW & MARSTON, P.C.
`6410 Poplar Avenue, Suite 1000
`Memphis, TN 38119-4839
`Telephone: (901) 522-9000
`Facsimile: (901) 527-3746
`rcarter@martintate.com
`asimpson@martintate.com
`
`Attorneys for Plaintiff B.E. Technology, L.L.C.
`
`
`- 7 -
`
`
`
`
`
`

`
`Case 2:12-cv-02834-JPM-tmp Document 53 Filed 08/15/13 Page 8 of 8 PageID 522
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on August 15, 2013 a true and correct copy of the
`foregoing was electronically filed with the United States District Court for the Western District
`of Tennessee and was served on counsel by the Court’s electronic filing notification.
`
`s/Daniel J. Weinberg
` Daniel J. Weinberg
`
`
`
`
`
`
`
`
`
`
`
`
`
`- 8 -