United States District Court, E.D. Michigan, Southern Division
WEBASTO THERMO & COMFORT NORTH AMERICA, INC. and WEBASTO-EDSCHA CABRIO USA, INC. Plaintiffs,
v.
BESTOP, INC., Defendant.
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 ...