Webasto Thermo & Comfort North America, Inc. v. Bestop, Inc.

          OPINION AND ORDER GRANTING PLAINTIFF'S MOTION TO DISMISS DEFENDANT'S COUNTERCLAIM (ECF NO. 27) AND GRANTING DEFENDANT LEAVE TO FILE AN AMENDED COUNTERCLAIM.

          Paul D. Borman United States District Judge.

         This action involves Plaintiffs Webasto Thermo & Comfort North America, Inc. and Webasto-Edscha Cabrio USA, Inc.'s (collectively “Webasto”) claim that Defendant Bestop, Inc. (“BesTop”) infringes Webasto's U.S. Patent No. 9, 346, 342 (“the ‘342 Patent”), entitled “Vehicle Roof and Roof Opening Mechanism.” BesTop has filed an Answer to the Complaint and a Four-Count Counterclaim. (ECF No. 23.)

         Webasto now moves to dismiss the Counterclaim for failure to satisfy Fed.R.Civ.P. 12(b)(6) pleading standards. (ECF No. 27.) BesTop filed a Response (ECF No. 31), and Webasto filed a Reply (ECF No. 33). The Court has determined that oral argument will not assist in resolving this motion and the Court will therefore decide the matter on the briefs. See E.D. Mich. L. R. 7.1(f)(2). For the reasons that follow, the Court GRANTS the motion to dismiss and GRANTS BesTop's request for leave to file an amended counterclaim.

         I. BACKGROUND

         The Court has summarized these background facts in a previous Opinion and Order denying BesTop's motion to dismiss. Webasto Thermo & Comfort North America, Inc. v. Bestop, Inc., No. 16-cv-13456, 2017 WL 2276988 (E.D. Mich. May 25, 2017). Webasto alleges that on May 24, 2016, the United States Patent and Trademark Office (“USPTO”) issued the ‘342 Patent and that Webasto holds all right, title and interest in the ‘342 Patent with rights to enforce the ‘342 Patent and to sue for infringement. (ECF No. 1, Complaint ¶ 8; Ex. A, U.S. Patent No. 9, 346, 342.) The ‘342 Patent claims technology related to a vehicle roof and roof opening mechanism that Webasto claims to have introduced to the public on March 27, 2015, at the Easter Jeep Safari event in Moab, Utah. (Compl. ¶ 10-11.) Webasto alleges that the Webasto roof opening mechanism provides an innovative and effective way to cover and selectively uncover a roof opening. (Compl. ¶ 12.)

         Webasto alleges that BesTop manufactures a roof opening mechanism under the name “Sunrider For Hardtop” (“Sunrider”) that incorporates Webasto's patented roof opening mechanism and infringes one or more claims of the ‘342 Patent, either literally or under the doctrine of equivalents. Webasto alleges that representatives of BesTop were present at the 2015 Moab, Utah Jeep event and that, at that time, BesTop did not offer a roof opening mechanism similar to or in-line with its current Sunrider. (Compl. ¶¶ 13-18.)

         Webasto alleges that BesTop's Sunrider infringes at least claims 1 and 6 of the ‘342 Patent. (Compl. ¶ 25.) Claim 6 of the ‘342 Patent recites:

A roof opening mechanism, being designed as an interchangeable insert, for unlockable fixation at a roof structure of a vehicle roof, and comprising:

a base frame, which can be placed upon an edge region of the roof structure, said edge region for limiting a roof opening, further comprising a fabric covering element, which, by at least one tensioning bow fixedly pivotable with respect to the base frame, is displaceable between a closed position for covering the roof opening and an uncovering position for uncovering the roof opening,

wherein the tensioning bow is coupled to an auxiliary tensioning bow fixedly pivotal to the base frame, and

wherein the tensioning bow, in relation to a vertical longitudinal center plane of the roof, is on each of its two sides connected to the auxiliary tensioning bow via a coupling rod,

the coupling rod being articulated to the auxiliary tensioning bow and to the main tensioning bow via intermediately positioned hinge points.

(Compl. ¶ 26, Ex. A, United States Patent No. 9, 346, 342, claim 6, PgID 38.) Webasto alleges that BesTop's Sunrider mechanism satisfies all of the limitations of claim 6 of the ‘342 Patent. (Compl. ¶¶ 27-33.)

         Claim 1 of the ‘342 Patent recites “A vehicle roof having a roof structure with a roof opening, which, by a roof opening mechanism, can be closed or at least partially uncovered as desired, said roof opening mechanism being designed as an interchangeable insert. . . .” (Compl. ¶ 34. Ex. A, ‘342 Patent, claim 1, PgID 37.) Claim 1 then recites the structural elements of the interchangeable insert which are similar to those set forth connection with claim 6. (Id.) Webasto ...