United States District Court, E.D. Michigan, Southern Division
OPINION AND ORDER GRANTING IN PART AND DENYING IN
PART PLAINTIFF'S MOTION TO DISMISS DEFENDANTS'
BERNARD A. FRIEDMAN, SENIOR UNITED STATES DISTRICT JUDGE.
matter is presently before the Court on plaintiff's
motion to dismiss defendants' counterclaims [docket entry
21]. Defendants have responded and plaintiff has replied.
Pursuant to E.D. Mich. 7.1(f)(2), the Court shall decide this
motion without a hearing.
a patent case. Plaintiff alleges that defendants have
infringed five of its patents. In their counterclaims,
defendants claim that these patents are invalid for various
reasons, that plaintiff has falsely marked its Sunrider for
Hardtop product, and that the inventor of plaintiff's
inventions engaged in inequitable conduct. In the instant
motion, plaintiff seeks dismissal of certain of
defendants' counterclaims and affirmative defenses on the
grounds that they are not supported by sufficient factual
seek dismissal pursuant to Fed.R.Civ.P. 12(b)(6). To survive
such a motion, “a complaint must contain sufficient
factual matter . . . to ‘state a claim to relief that
is plausible on its face.'” Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl.
Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “A
claim has facial plausibility when the plaintiff pleads
factual content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct
alleged.” Iqbal, 556 U.S. at 678.
“Threadbare recitals of all the elements of a cause of
action, supported by mere conclusory statements, do not
first challenges Counts I through V of the counterclaims
which allege that the claims of plaintiff's patents
(respectively, the ‘888 patent, the ‘356 patent,
the ‘921 patent, the ‘684 patent, and the
‘630 patent) “are invalid for failing to comply
with the provisions of the Patent Laws, Title 35 of the U.S.
Code, including, without limitation[, ] one or more of 35
U.S.C. §§ 101, 102, 103, and 112 et
seq.” Countercls. ¶¶ 59, 89, 109, 131,
148. Plaintiff argues that Counts I, II, and III fail to
allege facts that support invalidity under §§ 101
and 112 and that Counts IV and V fail to allege facts that
support invalidity under §§ 101-103.
response, defendants argue that the counterclaims are
adequately pled for a number of reasons. First, defendants
cite Summers Mfg. Co., Inc. v. Tri-Cty. AG, LLC, 300
F.Supp.3d 1025, 1039 (S.D. Iowa 2017), for its statement that
a defendant “is not required to separately allege its
invalidity counterclaims based on the individual sections of
Title 35.” Defs.' Mem. at 8. True enough. But that
court also stated that counterclaims must be dismissed if
they fail to meet the pleading standards of Twombly
and Iqbal. Id. at 1031-32. The court dismissed the
invalidity counterclaims in that case not because they listed
§§ 101, 102, 103, and 112 in the same count,
see id. at 1037, 1039, but because defendant listed
these sections without alleging any supporting facts. See
id. at 1040-42.
next argue that the counterclaims give plaintiff sufficient
notice and that plaintiff seeks, improperly, to impose
“hypertechnical code-pleading, ” as opposed to
notice pleading, standards. Defs.' Mem. at 8-9. Here
defendants cite 27-year old, unpublished,
pre-Twombly authority for the proposition that in
deciding a motion to dismiss “a court should ask
whether relief is possible under any set of facts that could
be established consistent with the allegations.”
Id. at 8 (quoting Yakubek v. Rex , 963 F.2d
374 (6th Cir. 1992) (Table)). This, however, is the 12(b)(6)
standard from Conley v. Gibson, 355 U.S. 41, 45-46
(1957), that Twombly specifically abrogated. See
Bailey v. City of Ann Arbor, 860 F.3d 382, 388-89 (6th
Cir. 2017) (“The Supreme Court overruled the
Conley standard in Bell Atlantic Corp. v.
next paragraph defendants at first get back on track by
acknowledging that they must “plead a claim for
relief that is plausible on its face, ” but they then
go off the rails again by asserting that they should not be
required to “fil[e] repetitive, comprehensive claims
for relief setting forth each and every legal theory on which
[they] may rely.” Defs.' Mem. at 9. Defendants cite
Johnson v. City of Shelby, Miss., 135 S.Ct. 346
(2014), in which the district court dismissed plaintiffs'
civil rights complaint because it failed to cite 42 U.S.C.
§ 1983. The Supreme Court reversed because
“[f]ederal pleading rules . . . do not countenance
dismissal of a complaint for imperfect statement of the legal
theory supporting the claim asserted.” Id. at
346. The Court reiterated that under Twombly and
Iqbal a pleading must allege “facts sufficient
to show that [the] claim has substantive plausibility,
” and noted that “[p]etitioners' complaint
was not deficient in that regard.” Id. In the
present case, plaintiff is not requesting that
defendants' counterclaims be measured against a standard
requiring the filing of “repetitive, comprehensive
claims for relief setting forth each and every legal theory
on which [it] may rely, ” but only that defendants
comply with Twombly and Iqbal.
next argue that “a patentee need only plead an
allegation that the defendant has plausibly infringed
‘at least one claim' of the patent in order to
survive a motion to dismiss.” Defs.' Mem. at 9-10
(citing Disc Disease Sols., Inc. v. VGH Sols., Inc.,
888 F.3d 1256 (Fed. Cir. 2018)). Disc Disease
discussed the pleading requirements for a complaint that
asserts an infringement claim. The Federal Circuit found that
such a claim was adequately pled in that case because the
complaint “specifically identified [defendant's]
products and alleged that the products meet ‘each and
every element of at least one claim of [plaintiff's
patents] either literally or equivalently.'”
Id. at 1258. In addition, plaintiff “attached
to the complaint the asserted patents and photographs of the
accused products.” Id. Disc Disease sheds no
light on the issue in the present case, i.e., the facts that
must be alleged to support a claim of patent invalidity.
Unlike the complaint in Disc Disease, which provided
“disclosures and allegations [sufficient] to provide
[defendant] fair notice of infringement of the asserted
patents, ” id. at 1260, the allegations in the
present case do not give fair notice to plaintiff of the
basis for all of defendants' invalidity claims, as noted
defendants argue that since plaintiff alleges that
“[d]efendants directly and indirectly infringe at least
certain claims of the ‘356 Patent, the ‘888
Patent, the ‘630 Patent, the ‘921 Patent, and the
‘684 Patent, ” Compl. ¶ 26, “the Court
should not demand that [defendants] plead each and every
legal theory of invalidity, for each of five patents.”
Defs.' Mem. at 10. It is no defense to the instant motion
for defendants to point to possible insufficiencies in
another party's pleading. Nor is “straw man”
argumentation persuasive. No. one is asking defendants to
“plead each and every legal theory of invalidity for
each of five patents, ” but to plead sufficient facts
in support of their claims, as the law requires.
on the merits, defendants assert that the counterclaims are
sufficiently pled, but an examination of the counterclaims
themselves does not bear this out. Defendants claim that all
of plaintiff's patents are invalid under § 101
(patentability), but no facts are alleged in support of this
claim. Nor does defendants' response brief offer any
argument to support such a claim. The Court shall therefore
grant plaintiff's motion and dismiss Counterclaim Counts
I-V to the extent they are based on § 101.
also claim that all of plaintiff's patents are invalid
under § 102 (novelty) and § 103 (non-obviousness).
Plaintiff challenges these claims only as to Counts IV and V,
which claim invalidity, respectively, of the ‘684 and
‘630 patents. Defendants argue that these claims are
sufficiently supported by the following allegations:
134. At least Claim 20 of the ‘684 Patent claims new
matter not previously claimed or disclosed in the ‘073
Patent or ‘506 Provisional.
151. At least Claim 1 of the ‘630 Patent claims new
matter not previously claimed or disclosed in the ‘073
Patent, ‘684 Patent, or ‘506 Provisional.
¶¶ 134, 151. Defendants do not explain how these
allegations lend plausibility to their claim that the
‘684 and ‘630 patents are invalid because the
inventions claimed therein are obvious or not novel. Rather,
defendants argue that “[b]ecause the ‘684 and
‘630 Patents have the same specification as the
‘073 Patent, this means [plaintiff's] patents fail
to satisfy the written description or enablement requirements
of Section 112.” Defs.' Mem. at 10. But as noted,
plaintiff does not challenge defendants' § 112 claim
as to Counts IV and V. As defendants have failed to show that
their § 102 or § 103 claims as to these counts are
sufficiently alleged, those claims are dismissed.
plaintiff challenges defendants' claims in Counts I-III
that, respectively, the ‘888 patent, the ‘356
patent, and the ‘921 patent are invalid under ...