LumaSense Technologies, Inc. v. Advanced Engineering Services, LLC
3:20-cv-07905
N.D. Cal.Jul 14, 2021Background
- LumaSense, a temperature/gas sensor company, granted AES a license under a Value Added Reseller (VAR) Agreement; the relationship soured and multiple suits followed.
- AES sued LumaSense in state court (trade-secret and contract claims); LumaSense then sued AES in federal court for copyright, trademark, false designation of origin, and unfair competition arising from AES’s alleged improper use/removal of LumaSense marks.
- The related state action was removed and consolidated; AES’s earlier motions to strike under California Anti‑SLAPP and to dismiss under Rule 12(b)(6) were denied.
- AES filed an Answer containing multiple conditional denials (notably ¶¶ 11, 12, 19, 33) and ten affirmative defenses; LumaSense moved to strike certain denials and six affirmative defenses under Rule 12(f) and Twombly/Iqbal.
- The court examined (1) sufficiency of specific denials, (2) whether particular defenses are truly affirmative defenses, and (3) whether other affirmative defenses pleaded with factual detail meeting Twombly/Iqbal.
- Ruling: ¶19 — answer adequate (motion denied); ¶¶11 and 33 — struck with leave to amend; ¶12 — struck as immaterial with leave to amend; Affirmative Defenses 1, 6, 7 — struck without leave to amend (not affirmative defenses); Affirmative Defenses 3, 4, 8 — struck with leave to amend for failure to meet Twombly/Iqbal; AES allowed to amend by July 26, 2021.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Sufficiency of ¶19 (legal conclusions / "document speaks for itself") | AES improperly evaded Rule 8(b) by calling legal conclusions and deferring to the VAR (leaving facts unanswered). | AES gave a conditional denial, denied underlying factual allegations, and correctly noted the VAR controls. | Denied motion to strike ¶19 — conditional denial coupled with denial of factual allegations is sufficient. |
| Denials of knowledge re ¶¶11, 12, 33 (lack of information) | Denials are improper where registries/public records make facts readily verifiable. | AES says denials regard validity and requires discovery to evaluate. | ¶¶11 and 33 struck with leave to amend (insufficient denials); ¶12 struck as immaterial/impertinent with leave to amend. |
| Are Affirmative Defenses 1, 6, 7 (failure to state, no damages, no causation) true affirmative defenses? | These defenses do nothing more than negate elements of LumaSense’s prima facie case and should be struck. | AES argues defenses should remain unless plaintiff shows prejudice. | Struck without leave to amend — defenses negate prima facie elements and are not affirmative defenses. |
| Do Affirmative Defenses 3, 4, 8 meet Twombly/Iqbal? (fair use; waiver/acquiescence/estoppel; breach of VAR bars relief) | Bare recitations of doctrines without factual grounding are insufficient under Twombly/Iqbal. | AES contends fair‑notice suffices and prior filings/exhibits supply facts. | Struck with leave to amend — Twombly/Iqbal applies to affirmative defenses; must plead factual basis to give fair notice. |
Key Cases Cited
- Whittlestone, Inc. v. Handi‑Craft Co., 618 F.3d 970 (9th Cir. 2010) (purpose and limits of Rule 12(f) motions to strike)
- Barnes v. AT & T Pension Ben. Plan‑Nonbargained Program, 718 F. Supp. 2d 1167 (N.D. Cal. 2010) (motions to strike disfavored; sufficiency of conditional denials and applying heightened pleading to affirmative defenses)
- Zivkovic v. S. California Edison Co., 302 F.3d 1080 (9th Cir. 2002) (a defense that merely shows plaintiff failed to meet its burden is not an affirmative defense)
- Wyshak v. City Nat. Bank, 607 F.2d 824 (9th Cir. 1979) (leave to amend should be freely given absent prejudice)
- In re Mortgs. Ltd., 771 F.3d 623 (9th Cir. 2014) (pleaded factual allegations must be presumed true; courts cannot disregard pleadings as sham without proper basis)
- Barnes & Noble, Inc. v. LSI Corp., 849 F. Supp. 2d 925 (N.D. Cal. 2012) (Twombly/Iqbal pleading standard applies to affirmative defenses to ensure factual basis)
- E.E.O.C. v. California Psychiatric Transitions, Inc., 725 F. Supp. 2d 1100 (E.D. Cal. 2010) (definition and nature of an affirmative defense)