United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION AND ORDER
M. ROWLAND, UNITED STATES DISTRICT JUDGE.
the Court are the remaining issues in Plaintiff Sioux
Steel's Motion to Dismiss Defendant Prairie Land's
First and Second Counterclaims; to Strike Defendant's
Second and Third Affirmative Defenses; and to Rule that
Defendant is Estopped from Asserting Certain Invalidity
Defenses . For the reasons explained below, the Court
grants in part and denies in part Sioux Steel's Motion
a patent infringement action case involving U.S. Patent No.
8, 967, 937 (“the ‘937 patent”), owned by
Sioux Steel. The ‘937 patent covers a “Modular
Storage Bin Sweep System.” The sweep is commonly used
in a grain silo and can be compared to a massive broom.
Prairie Land petitioned for inter partes review (IPR) of the
‘937 patent. On April 4, 2018, the Patent Trial and
Appeals Board (PTAB) issued its final decision, concluding
that Prairie Land did not show that claims 1-28 of the
‘937 patent were unpatentable. On March 29, 2019, the
Court ruled on two motions, granting in part and denying in
part Sioux Steel's motion for summary judgment, and
granting Prairie Land's motion to amend its affirmative
defenses and counterclaim. (Dkt. 134). On April 5, 2019,
Prairie Land filed its Second Amended Answer, Affirmative
Defenses, and Counterclaims. (Dkt. 135).
Steel moved to dismiss Prairie Land's First and Second
Counterclaims under Federal Rule of Civil Procedure 12(b)(6),
to strike Prairie Land's Second and Third Affirmative
Defenses under Federal Rule of Civil Procedure 12(f), and for
an order that Prairie Land is estopped from raising certain
invalidity grounds. On May 3, 2019, the Court denied Sioux
Steel's Motion to Dismiss insofar as it sought
reconsideration of her estoppel decision in the March 29,
2019 order. (Dkts. 134, 143, 147). The remaining issues in
the motion are now fully briefed.
motion to dismiss tests the sufficiency of a complaint, not
the merits of the case. Gibson v. City of Chicago,
910 F.2d 1510, 1520 (7th Cir. 1990). “To survive a
motion to dismiss under Rule 12(b)(6), the complaint must
provide enough factual information to state a claim to relief
that is plausible on its face and raise a right to relief
above the speculative level.” Haywood v. Massage
Envy Franchising, LLC, 887 F.3d 329, 333 (7th Cir. 2018)
(quotations and citation omitted). See also Fed. R.
Civ. P. 8(a)(2) (requiring a complaint to contain a
“short and plain statement of the claim showing that
the pleader is entitled to relief.”). A court deciding
a Rule 12(b)(6) motion accepts plaintiff's well-pleaded
factual allegations as true and draws all permissible
inferences in plaintiff's favor. Fortres Grand
Corp., 763 F.3d at 700.
plaintiff need not plead “detailed factual
allegations”, but “still must provide more than
mere labels and conclusions or a formulaic recitation of the
elements of a cause of action for her complaint to be
considered adequate under Federal Rule of Civil Procedure
8.” Bell v. City of Chi., 835 F.3d 736, 738
(7th Cir. 2016) (citation and internal quotation marks
omitted). Dismissal for failure to state a claim is proper
“when the allegations in a complaint, however true,
could not raise a claim of entitlement to relief.”
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 558, 127
S.Ct. 1955, 1966 (2007). See also Ashcroft v. Iqbal,
556 U.S. 662, 679, 129 S.Ct. 1937, 1950 (2009)). “There
is no requirement for [plaintiff] to ‘prove its case at
the pleading stage.'…[Federal Circuit] precedent
requires that a complaint place the alleged infringer
‘on notice of what activity . . . is being accused of
infringement.” Lifetime Indus., Inc. v. Trim-Lok,
Inc., 869 F.3d 1372, 1379 (Fed. Cir. 2017).
Rule 12(f), “[t]he court may strike from a pleading an
insufficient defense or any redundant, immaterial,
impertinent, or scandalous matter.” Fed.R.Civ.P. 12(f).
Motions to strike are generally disfavored because they
"potentially serve only to delay," and so
affirmative defenses "will be stricken only when they
are insufficient on the face of the pleadings."
Heller Fin., Inc. v. Midwhey Powder Co., Inc., 883
F.2d 1286, 1294 (7th Cir. 1989). To survive a motion to
strike, an affirmative defense must be adequately pleaded and
withstand a Rule 12(b)(6) challenge. See Maui Jim, Inc.
v. SmartBuy Guru Enters., 386 F.Supp.3d 926, 937 (N.D.
Ill. 2019) (citations omitted). The Twombly and
Iqbal pleading standard applies to affirmative
Land's First Counterclaim alleges that the ‘937
Patent is invalid and unenforceable. Its Second Counterclaim
alleges that some or all of Prairie Land's products do
not infringe, induce infringement, or contribute to the
infringement of any claim of the ‘937 Patent. Prairie
Land's Second Affirmative Defense asserts that the
‘937 Patent invalid and unenforceable. The Third
Affirmative Defense asserts that some or all of Prairie
Land's products do not infringe, induce infringement, or
contribute to the infringement of any claim of the 937
Patent. There are scant factual allegations in support of
these claims. (Dkt. 135 at par. 80-87). In its motion, Sioux
Steel argues that the counterclaims are conclusions that do
not contain sufficient factual allegations to state a
plausible claim, and that the allegation that the patent is
unenforceable does not meet the heightened Rule 9(b) pleading
standard. Sioux Steel contends that the two affirmative
defenses are deficient for the same reasons.
First Counterclaim and Second Affirmative Defense: Invalidity
Steel argues that Prairie Land's allegation that the
‘937 Patent is unenforceable fails to satisfy the
heightened pleading standard of Rule 9(b). Prairie Land does
not address this argument in its response brief. (Dkt. 153).
The Court agrees with Sioux Steel. As the Federal Circuit
explained in Exergen Corp. v. Wal-Mart Stores, Inc.,
575 F.3d 1312 (Fed. Cir. 2009), “inequitable conduct,
while a broader concept than fraud, must be pled with
particularity under Rule 9(b)” (internal citation and
quotations omitted). The elements of inequitable conduct are:
“(1) an individual associated with the filing and
prosecution of a patent application made an affirmative
misrepresentation of a material fact, failed to disclose
material information, or submitted false material
information; and (2) the individual did so with a specific
intent to deceive the [Patent and Trademark Office].”
Id. at 1327 n.3. Pleading with particularity in this
context “requires identification of the specific who,
what, when, where, and how of the material misrepresentation
or omission committed before the PTO.” Id. at
Prairie Land fails to provide any factual allegations in its
Second Amended Answer to support the conclusion that the
‘937 Patent is unenforceable. Prairie Land does not
identify the who, what, when, where, and how of any alleged
material misrepresentation or omission by Sioux Steel.
See Medline Indus. v. C.R. Bard, Inc., 2018 U.S.
Dist. LEXIS 154408, at *18 (N.D. Ill. Sep. 11, 2018)
(granting the motion to dismiss inequitable conduct
counterclaims). Accordingly, Court also grants the motion to
strike the allegation in the Second Affirmative Defense that
the ‘937 Patent is unenforceable. See id.
(“the affirmative defenses are ...