Tyco Fire Products LP v. Victaulic Co.
777 F. Supp. 2d 893
E.D. Pa.2011Background
- Tyco alleges patent infringement against Victaulic concerning two patents: '736 and '201.
- Victaulic answers with five affirmative defenses and two counterclaims asserting patents are invalid and/or unenforceable.
- Plaintiff moves to strike the defense and dismiss the counterclaim under Rule 12(b)(6) and 12(f).
- Court considers whether Twombly and Iqbal apply to affirmative defenses, and how the pleading standards differ for defenses versus claims.
- Court finds Twombly and Iqbal do not apply to affirmative defenses but require fair notice; counterclaim must meet plausibility standard.
- Court grants in part and denies in part: dismisses the counterclaim, strikes redundant language in the defense, and allows amendment.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Applicability of Twombly–Iqbal to affirmative defenses | Twombly/Iqbal should apply to defenses to strike vague defenses. | Affirmative defenses need only provide fair notice, not plausibility. | Twombly–Iqbal do not apply to affirmative defenses. |
| Adequacy of Defendant's affirmative defense of invalidity/unenforceability | Defense lacks fair notice; unenforceability is potentially predicated on inequitable conduct. | Invalidity and unenforceability are proper defenses; discovery will flesh out facts. | Affirmative defense is adequate except for redundancy of unenforceability. |
| Redundancy of the term unenforceable in the defense | unenforceable adds no new theory beyond invalidity. | unenforceable mirrors other defenses and may be redundant. | Term 'unenforceable' is redundant and stricken. |
| Plaintiff's counterclaim for invalidity/unenforceability | Counterclaim should be evaluated under Twombly plausibility standard. | Counterclaim should be allowed under fair notice and/or local rules. | Counterclaim dismissed for lack of plausibility; struck Paragraph 2(a). |
| Effect of local patent rules on pleading standards | Local patent rules should not modify national pleading standards. | Local rules can aid in alleging invalidity with specificity. | Local patent rules cannot modify pleading standards; but amendment of pleadings permitted. |
Key Cases Cited
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (U.S. 2007) (requires plausibility for claims; not applied to defenses)
- Ashcroft v. Iqbal, 556 U.S. 662 (U.S. 2009) (plausibility standard; factual content to show liability)
- Conley v. Gibson, 355 U.S. 41 (U.S. 1957) (notice pleading origin; no longer controlling for plausibility)
- Pfizer Inc. v. Apotex Inc., 726 F. Supp. 2d 921 (N.D. Ill. 2010) (local patent rules aided noting sufficient invalidity pleadings)
- Microsoft Corp. v. Phoenix Solutions, Inc., 741 F. Supp. 2d 1156 (C.D. Cal. 2010) (invalidity contentions not subjected to Twombly/Iqbal pleading height)
- Aspex Eyewear, Inc. v. Clariti Eyewear, Inc., 531 F. Supp. 2d 620 (S.D.N.Y. 2008) (conclusory defenses may be struck for lack of notice)