Gradient Enterprises, Inc. v. Skype Technologies S.A.
2013 U.S. Dist. LEXIS 41746
W.D.N.Y.2013Background
- Gradient Enterprises sues Skype S.A. and Skype, Inc. for patent infringement of U.S. Patent No. 7,669,207.
- The '207 patent concerns detecting and responding to network node-level events in computer networks.
- The Court previously dismissed Gradient's original complaint for insufficient factual pleading, with leave to amend.
- Gradient amended the complaint to add five claims including direct, induced, and contributory infringement, plus injunctive and declaratory relief, all seeking damages.
- Skype counterclaims for noninfringement and invalidity were challenged; they later amended to withdraw the third counterclaim and seek only two counterclaims.
- The core issue is whether Form 18, Twombly, and Iqbal apply to counterclaims, and whether those counterclaims are sufficiently pled.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does Form 18 govern counterclaims for noninfringement and invalidity? | Gradient contends Form 18 governs direct infringement only. | Skype argues Form 18 applies to counterclaims as the controlling pleading standard. | Form 18 governs direct noninfringement counterclaims. |
| Should Twombly/Iqbal plausibility standards apply to counterclaims for noninfringement and invalidity? | Twombly/Iqbal apply to all federal pleadings, including counterclaims. | Form 18 controls; Twombly/Iqbal do not govern counterclaims. | Twombly/Iqbal apply to indirect noninfringement and to invalidity counterclaims; direct noninfringement remains under Form 18. |
| Are the noninfringement counterclaims sufficient under Form 18? | Noninfringement claims should meet Form 18's minimal requirements. | Counterclaims must have comparable detail to direct infringement pleading. | Direct noninfringement counterclaim is sufficient under Form 18. |
| Are the indirect noninfringement and invalidity counterclaims sufficient under Twombly/Iqbal? | They should be evaluated under Twombly/Iqbal. | They should be evaluated under heightened pleading standards. | Dismissed for insufficiency; leave to amend allowed. |
Key Cases Cited
- McZeal v. Sprint Nextel Corp., 501 F.3d 1354 (Fed. Cir. 2007) (Form 18 model for patent infringement complaints; pleading standards discussed)
- In re Bill of Lading Transmission and Processing System Patent Litig., 681 F.3d 1323 (Fed. Cir. 2012) (Form 18 controls direct infringement pleading; tension with Twombly/Iqbal)
- Superior Industries, LLC v. Thor Global Enterprises Ltd., 700 F.3d 1287 (Fed. Cir. 2012) (Form 18 pleading standard governs patent infringement claims)
- Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (Supreme Court 2007) (Pleading must show plausible claim, not merely conceivable)
- Ashcroft v. Iqbal, 556 U.S. 662 (Supreme Court 2009) (Pleading standard clarified to require plausibility)
- Leatherman v. Tarrant County Narcotics Intelligence & Coordination Unit, 507 U.S. 163 (Supreme Court 1993) (Judicial interpretation of pleading standards; note cited in discussion)