Order re Defendant’s Second Motion to Dismiss & Strike Affirmative Defense, Summers Manufacturing Co., Inc., v. Tri County AG, LLC, et al.: 4:17-cv-00186-RGE-CFB (November 29, 2017) (S.D. Iowa, Judge Rebecca Ebinger)
In patent cases, it is not uncommon for a defendant to file boilerplate counterclaims asking for declaratory judgments of non-infringement and invalidity. Such counterclaims are typically accompanied by a list of affirmative defenses that includes non-infringement and invalidity. A recent opinion in Summers v. Tri County shows the perils of pleading counterclaims in a conclusory manner. It also explains the important differences between counterclaims and affirmative defenses. The lessons of the opinion can help both plaintiffs and defendants avoid needless pleading-stage motion practice.
The defendants’ counterclaims included boilerplate claims for a declaratory judgment of non-infringement, as well as a declaratory judgment of invalidity that referenced a European patent that was alleged to invalidate the patents-in-suit. The court dismissed the non-infringement counterclaims, because they consisted of legal conclusions rather than specific factual allegations and, as such, failed to satisfy Tombly and Iqbal.
In resisting the motion to dismiss, the counterclaimant referred to a letter attached to the plaintiff’s complaint. That letter articulated the counterclaimant’s non-infringement positions. Nevertheless, the court emphasized that a counterclaim should be able to stand on its own, without reference to documents outside of the counterclaims. Thus, a counterclaimant might not be able to rely on allegations in the original complaint to shore up a counter-complaint that is light on specific factual allegations. The court also held that an answer’s denial of factual allegations in the complaint did not serve to give a counter-defendant proper notice of the counterclaimant’s specific legal theories or factual contentions. Again, the counter-complaint should be able to satisfy FRCP 8 on its own.
The counterclaimant’s declaratory judgment claims for invalidity were more than mere boilerplate, because they referred to a specific patent as an invalidating reference (they also referred generally to the references cited on the faces of the patents). Nevertheless, the court concluded that the claims were largely boilerplate and did not perform a meaningful analysis of the cited prior art. The court noted that some other courts have declined to dismiss similarly-pled claims where local patent rules call for the service of detailed invalidity contentions. But the court explained that the Southern District of Iowa does not have such patent local rules, and that even if it did, that would not allow the court to depart from the pleading requirements of Iqbal and Twombly.
The court then turned to the defendant’s affirmative defense of invalidity, which basically mirrored the counterclaims of invalidity. There is disagreement among district courts about whether Iqbal and Twombly apply to affirmative defenses. But Judge Ebinger concluded that in the Eighth Circuit the better approach is to require only notice pleading for affirmative defenses. This is consistent with the wide-spread consensus that motions to strike affirmative defenses are generally disfavored. Furthermore, a plaintiff is not required to respond to affirmative defenses, making detailed and specific affirmative defenses unnecessary. Accordingly, the court declined to strike the affirmative defense of invalidity.
In sum, even though the counterclaims of invalidity and the affirmative defense of invalidity were pled in a nearly identical manner, the court treated them very differently. One lesson is that counterclaimants should think twice before filing boilerplate counterclaims. Another is that plaintiffs should generally not bother moving to strike affirmative defenses of invalidity in the patent context. These lessons can help litigants avoid unnecessary and likely unhelpful motion practice.