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

United States District Court, E.D. Michigan, Southern Division

July 3, 2018

WEBASTO THERMO & COMFORT NORTH AMERICA, INC. and WEBASTO-EDSCHA CABRIO USA, INC., Plaintiffs,
v.
BESTOP, INC., Defendant.

          OPINION AND ORDER GRANTING PLAINTIFFS' PARTIAL MOTION TO DISMISS BESTOP'S FIRST AMENDED COUNTERCLAIM AND TO STRIKE BESTOP'S SEVENTH AFFIRMATIVE DEFENSE (ECF NO. 46)

          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 asserts that the claims of the ‘342 Patent were disclosed in prior art and are therefore unpatentable. BesTop has filed its First Amended Counterclaim, adding a claim of inequitable conduct and an affirmative defense of unclean hands based on that same alleged inequitable conduct. Webasto now moves to dismiss the inequitable conduct claim under Fed.R.Civ.P. 12(b)(6) and Fed.R.Civ.P. 9(b), and to strike the unclean hands affirmative defense pursuant to Fed.R.Civ.P. 12(f). The Court concludes that a hearing is not necessary to resolve the issues raised in Webasto's motion and will determine the matter on the parties' written submissions. E.D. Mich. L.R. 7.1(f)(2).

         I. BACKGROUND

         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 alleges that each of the limitations of claim 1 of the ‘342 Patent are found in BesTop's Sunrider mechanism. (Compl. ¶ 35.)

         Webasto alleges that BesTop adopted the Webasto patented design after having seen Webasto's design in at least March 2015 and was or should have been aware that Webasto's design incorporated patentable subject matter. Webasto alleges that BesTop's infringement has caused and continues to cause damage to Webasto and that Webasto is entitled to recover damages at trial, including treble damages, pursuant to 35 U.S.C. § 284 and attorneys' fees pursuant to 35 U.S.C. § 285. (Compl. ¶¶ 42-43.)

         This Court previously granted Webasto's motion to dismiss BesTop's original counterclaim in its entirety for failure to meet the pleading requirements of Fed.R.Civ.P. 12(b)(6). Webasto Thermo & Comfort North America, Inc., No. 16-13456, 2017 WL 4535290 (E.D. Mich. Oct. 11, 2017). The Court also granted BesTop leave to file an amended counterclaim, which BesTop did on October 25, 2017. (ECF No. 42, Amended Answer and First Amended Counterclaim.) Webasto now moves for partial dismissal of BesTop's First Amended Counterclaim, specifically for dismissal of BesTop's Inequitable Conduct Counterclaim (Count III), and moves to strike BesTop's Seventh Affirmative Defense. For the reasons that follow the Court GRANTS the motion, DISMISSES Count III of BesTop's First Amended Counterclaim, and STRIKES BesTop's Seventh Affirmative Defense (Unclean Hands), which expressly incorporates Count III of its Counterclaim.

         II. ...


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