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

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

June 25, 2019

BESTOP INC., Plaintiff,



         This 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.

         This is 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 allegations.

         Defendants 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 suffice.” Id.

         Plaintiff 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.[1] 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.

         In 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.[2]

         Defendants 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. Twombly”).

         In the 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.

         Defendants 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 below.

         Next 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.

         Finally, 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.

         Defendants 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.

         Countercls. ¶¶ 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.

         Finally, plaintiff challenges defendants' claims in Counts I-III that, respectively, the ‘888 patent, the ‘356 patent, and the ‘921 patent are invalid under ...

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