748 F. Supp. 2d 1354
S.D. Fla.2010Background
- IMX, Inc. filed Renewed Motion for Partial Judgment on the Pleadings under Rule 12(c) against E-Loan's seventh, tenth, twelfth, and fifteenth defenses and Count III of the Amended Counterclaims.
- The dispute centers on patent rights tied to the '947 patent and alleged infringement by E-Loan with various equitable defenses and counterclaims.
- E-Loan withdrew its seventh affirmative defense and partially withdrew its fifteenth defense and portions of Count III.
- The court applies Rule 12(c) standard: judgment on the pleadings where no material fact exists and the movant is entitled to judgment as a matter of law.
- Key issues include patent misuse/unclean hands under 35 U.S.C. § 271(d)(3), laches, estoppel, waiver, implied license, and mitigation of damages; the court grants in part and denies in part.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| §271(d)(3) barred defenses/Count III? | IMX argues alleged patent misuse and unclean hands are wrongful enforcement | E-Loan asserts defenses/Count III bar by § 271(d)(3) | Partially barred; to extent arguing threats about non-embodied invention barred |
| Laches and prejudice | IMX argues no prejudice and insufficient pleading | E-Loan asserts laches due to long delay and prejudice | Laches defense survives; prejudice adequately alleged; motion denied on laches |
| Equitable estoppel | Estoppel not sufficiently pleaded prejudice or reliance | E-Loan contends reliance on prior dismissal and silence caused prejudice | Estoppel adequately pleaded; motion denied on estoppel |
| Implied license and waiver | No affirmative grant of consent or permission alleged | Implied license/waiver argued by conduct/equitable estoppel | Implied license and waiver dismissed; only equitable estoppel remains |
| Mitigation of damages defense | Mitigation not a patent defense; no facts supporting defense | Mitigation may reduce damages and was pled with delay and damages rationale | Mitigation defense remains viable; denial of judgment on pleadings |
Key Cases Cited
- Aspex Eyewear Inc. v. Clariti Eyewear Inc., 605 F.3d 1305 (Fed. Cir. 2010) (equitable estoppel elements and reliance requirements in patent disputes)
- Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339 (Fed. Cir. 2009) (requirements to prove laches in patent cases)
- Aldana v. Del Monte Fresh Produce, N.A., Inc., 416 F.3d 1242 (11th Cir. 2005) (notice/fair notice and fair pleading in Rule 12 context)
- Winbond Elecs. Corp. v. Int'l Trade Comm'n, 262 F.3d 1363 (Fed. Cir. 2001) (implied licenses and equitable estoppel distinctions)
- Wang Labs., Inc. v. Mitsubishi Elecs. Am., Inc., 103 F.3d 1571 (Fed. Cir. 1997) (distinguishing implied licenses from equitable estoppel)
- Strategic Income Fund, L.L.C. v. Spear, Leeds & Kellogg Corp., 305 F.3d 1293 (11th Cir. 2002) (pleading standards and factual sufficiency for Rule 12(b)(6)/12(c))
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (U.S. 2007) (plausibility pleading standard)
- Conley v. Gibson, 355 U.S. 41 (U.S. 1957) (pleading standards prior to Twombly)