25 F. Supp. 3d 170
D. Mass.2014Background
- Bern Unlimited, Inc. sues six helmet-makers for trade-dress infringement and unfair competition.
- Defendants answer third-amended complaint with counterclaims asserting patent-inequitable-conduct defenses and false-advertising/unfair-competition/Chapter 93A claims.
- Bern patented Baker helmet line and asserts trade dress consisting of rounded helmet profile and distinctive visor; defendants allegedly sell confusingly similar helmets.
- Bern obtained the '865 design patent for Baker; assignment and disclaimer events occurred after suit was filed, affecting the patent’s status.
- Defendants moved to strike the counterclaims or sever; court considers procedural- and substantive-issues governing leave to amend and the merits of the counterclaims.
- Court decides to grant strike as to certain declaratory-judgment claims and certain deferral-relevant counterclaims; severance denied without prejudice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether counterclaims were permissible without court leave | Bern argues leave required for new counterclaims. | Counterclaims timely under Rule 15(a)(2) as amendments. | Counterclaims treated as Rule 15(a)(2) amendments; leave granted/denied as appropriate. |
| Whether declaratory-judgment claims about the '865 patent are moot | Disclaimed patent moots JD claims. | Disclaimers do not revive or moot any accompanying issues. | Declaratory-judgment claims moot; dismissed. |
| Whether false advertising counterclaims survive futility challenges | Claims are futile and lack plausibility. | Claims are pled with plausible facts; not facially deficient. | Futility rejected for Lanham Act, common-law, and Chapter 93A claims as to some aspects; allowed to proceed with discovery. |
| Whether Lexmark injury requirements foreclose claims | Lexmark requires proximate injury; claims fail. | Counterclaims allege direct injury from deceptive advertising. | Lexmark injury requirement satisfied; claims survive for purposes of motion to dismiss. |
| Whether the case should be severed to separate counterclaims | Severance unnecessary and would delay resolution. | Severance could simplify proceedings given different issues. | Severance denied without prejudice. |
Key Cases Cited
- Lexmark Int'l, Inc. v. Static Control Components, Inc., 134 S. Ct. 1377 (U.S. 2014) (zone-of-interest and injury requirements for Lanham Act false-advertising claims)
- Cashmere & Camel Hair Mfrs. Inst. v. Saks Fifth Ave., 284 F.3d 302 (1st Cir. 2002) (false advertising elements; materiality; declaratory-use of presumption)
- Jacobsen v. Katzer, 535 F.3d 1373 (Fed. Cir. 2008) (declaratory-judgment patent issues; controlling for patent validity/enforceability)
- Virginia Innovation Sciences, Inc. v. Samsung Electronics Co., Ltd., 11 F. Supp. 3d 622 (E.D. Va. 2014) (approaches to counterclaim amendments after amended complaints)
- Refuse Fuels, Inc. v. National Union Fire Ins. Co. of Pittsburgh, Pa., 139 F.R.D. 576 (D. Mass. 1991) (timing and policy of seeking amendments under Rule 11/Rule 13)
- Hatch v. Dep’t for Children, 274 F.3d 12, (1st Cir. 2001) (First Circuit) (standards for 12(b)(6) pleading sufficiency)