WI3, Inc. v. Actiontec Electronics, Inc.
2014 U.S. Dist. LEXIS 163417
W.D.N.Y.2014Background
- Wi3 sued Actiontec for infringement of U.S. Patent No. 6,108,331, alleging Actiontec’s MoCA network adapters/net extenders infringe claims 26, 27, 29 and 30.
- Actiontec answered, denied infringement, and asserted two declaratory judgment counterclaims: (1) non-infringement and (2) invalidity of the '331 patent under 35 U.S.C. §§ 101, 102, 103 and/or 112.
- Wi3 moved to dismiss Actiontec’s invalidity counterclaim and to strike a “Reservation of Defenses” clause in Actiontec’s answer. Wi3 later withdrew its request to dismiss the non-infringement counterclaim.
- The invalidity counterclaim consisted of boilerplate allegations repeating the answer and asserting invalidity under the listed statutory sections without factual detail.
- The Reservation of Defenses clause broadly preserved Actiontec’s right to assert affirmative defenses based on future discovery.
- Actiontec requested leave to amend only in a brief statement in its opposition, without filing a formal, compliant motion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Sufficiency of invalidity counterclaim | The counterclaim lacks factual allegations to give fair notice of the basis for invalidity and should be dismissed. | The counterclaim is adequate and consistent with Form 18 and need not plead details now. | Dismissed without prejudice: boilerplate statutory assertions are insufficient under Twombly/Iqbal. |
| Reservation of Defenses clause | The clause improperly reserves the unilateral right to add defenses and circumvents Rule 15; it should be stricken. | The clause merely reserves the right to assert defenses discovered later and to seek leave to amend. | Not stricken: where construed as reserving the right to seek leave to amend, the clause is permissible (but does not excuse Rule 15/16 constraints). |
| Request for leave to amend | Wi3 sought dismissal; implicitly opposes unpleaded defenses. | Actiontec asked in a footnote for leave to amend if dismissal granted. | Denied as procedurally noncompliant: request was not a proper motion and failed to follow Local Rules; Actiontec must file a proper motion. |
Key Cases Cited
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (plausibility standard for pleadings)
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (application of Twombly plausibility standard)
- Gradient Enterprises, Inc. v. Skype Technologies S.A., 932 F. Supp. 2d 447 (W.D.N.Y. 2013) (invalidity counterclaim stating only statutory sections is insufficient)
- Microsoft Corp. v. Phoenix Solutions, Inc., 741 F. Supp. 2d 1156 (C.D. Cal. 2010) (discussing pleading standards for invalidity counterclaims)
- Excellus Health Plan, Inc. v. Tran, 287 F. Supp. 2d 167 (W.D.N.Y. 2003) (Rule 12(b)(6) standard for counterclaims)
- Nechis v. Oxford Health Plans, Inc., 421 F.3d 96 (2d Cir. 2005) (consideration of pleadings and incorporated documents)
- Arista Records, LLC v. Doe 3, 604 F.3d 110 (2d Cir. 2010) (Twombly/Iqbal do not create a heightened pleading standard)