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Dicar, Inc. v. Stafford Corrugated Products

June 22, 2009


The opinion of the court was delivered by: Dennis M. Cavanaugh, U.S.D.J.


Hon. Dennis M. Cavanaugh



This matter comes before the Court upon motion by Plaintiffs Dicar, Inc. and Robud ("Plaintiffs") to dismiss Defendants Stafford Corrugated Products, Inc. and Rodicut Rotary Diecutting's ("Defendants") counterclaims for failure to state a claim upon which relief can be granted, pursuant to FED. R. CIV. P. 12(b)(6); as well as to strike Defendants' Affirmative Defenses to the underlying lawsuit pursuant to FED R. CIV. P. 12(f). Oral argument was heard on June 8, 2009. After carefully considering the submissions and oral arguments of the parties, and based upon the following, it is the finding of this Court that Plaintiffs' motion to dismiss Defendants' counterclaims is granted in part and denied in part; and Plaintiffs' motion to strike Defendants' affirmative defenses is denied.


A. Factual Background

Plaintiff Dicar is in the business of manufacturing and selling products for use in the rotary die cutting industry. One such product is the die cutter blanket. Plaintiff Robud is the owner of patents related to the die cutter blanket. Robud has sold an exclusive license to Dicar to manufacture the die cutter blanket. Defendants Stafford and Rodicut are also in the rotary die cutting industry. Stafford sells and imports a die cutter blanket manufactured by Rodicut.

In 1997, Robud was involved in prosecuting an application for a patent that eventually became U.S. Patent No. 5,720,212 entitled "Locking Arrangement For Die Cutter Blanket" (the "'212 Patent"). On April 15, 1997, during prosecution of the '212 Patent, the patent examiner rejected claim 18 of the patent application. Robud in claim 18 described the '212 Patent as a "locking member including a compressible means." On April 25, 1997, in response to the rejection, Robud amended claim 18 of the application to call for "a locking member and compressible means coupled to the locking member." As a result of Robud's amendment, the patent examiner approved claim 18. Claim 18 later became claim 13 of the patent application. On February 24, 1998, the United States Patent and Trademark Office ("USPTO") issued to Robud the '212 Patent entitled "Locking Arrangement For Die Cutter Blanket."

B. Procedural Background

On November 16, 2005, Plaintiffs commenced an action alleging, inter alia, infringement of the '212 Patent against Stafford. After proceeding through discovery for approximately two years, Plaintiffs moved on November 28, 2007 for summary judgment on their '212 Patent infringement claim. At the Court's instruction, and after Plaintiffs withdrew their motion, both parties filed amended pleadings. Discovery continued until May 5, 2008, at which time Plaintiffs filed an Amended Complaint and added Rodicut as a Defendant. Defendants Stafford and Rodicut filed their Answer and Counterclaims on July 3, 2008.

Stafford and Rodicut's counterclaims consist of: (1) declaratory judgment of non-infringement, invalidity and unenforceability of the '212 Patent; (2) violation of Section 1 of the Sherman Antitrust Act (15 U.S.C. § 1); (3) violation of Section 2 of the Sherman Antitrust Act (15 U.S.C. § 2); and (4) violation of New Jersey Antitrust laws (N.J. Stat. §§ 56:9-1 et seq.). Stafford and Rodicut also assert the following affirmative defenses: (1) laches and estoppel; (2) invalidity and unenforceability of the '212 Patent; (3) inequitable conduct before the USPTO; and (4) unclean hands as a result of Plaintiffs impermissible broadening of the scope of the '212 Patent.

Plaintiffs responded with this motion to dismiss and strike Defendants' counterclaims and affirmative defenses pursuant to FED R. CIV. P. 12(b)(6), 12(f) and 9(b). There is presently a dispute between the parties as to the construction of the '212 Patent and its prosecution history which will be addressed at a Markman hearing*fn2 .


A. Motion to Dismiss under Rule 12(b)(6)

When deciding a motion to dismiss for failure to state a claim under FED. R. CIV. P. 12(b)(6), all allegations must be taken as true and viewed in the light most favorable to the plaintiff. See Warth v. Seldin, 422 U.S. 490, 501 (1975); Philips v. County of Allegheny, 515 F.3d 224, 233 (3d Cir. 2008) (quoting Pinker v. Roche Holdings Ltd., 292 F.3d 361, 374 n.7 (3d Cir.2002). The court must "determine whether, under any reasonable reading of the complaint, the plaintiff may be entitled to relief." County of Allegheny, 515 F.3d at 233 (quoting Pinker, 292 F.3d at 374 n.7). In evaluating a Rule 12(b)(6) motion, a court may consider only the complaint, exhibits attached to the complaint, matters of public record, and undisputedly authentic documents, if the plaintiff's claims are based on those documents. Pension Benefit Guar. Corp. v. White Consol. Indus., 998 F.2d 1192, 1196 (3d Cir. 1993).

Pleading standards have been directly applied to Antitrust claims. The Supreme Court explains A that "a claim requires a complaint with enough factual matter (taken as true) to suggest [the required element]." Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 556 (2007). Stated differently, the "[f]actual allegations [of the complaint] must be enough to raise a right to relief above the speculative level." Id. at 555. Nonetheless, the Supreme Court specified that there is no heightened standard of fact pleading or requirement to plead specifics. Instead, there is a requirement to plead "only enough facts to state a claim to relief that is plausible on its face." Twombly, 550 U.S. at 570.

While the pleading standard as provided by FED. R. CIV. P. 8 does not require "detailed factual allegations," it does demand more than an unadorned accusation. Bell Atlantic Corp. v. Twombly 550 U.S. 544, 555 (2007). A pleading that offers labels and conclusions or "a formulaic recitation of the elements of a cause of action will not do." Id. Recently the Supreme Court explained:

To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to "state a claim to relief that is plausible on its face." A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.

The plausibility standard is not akin to a "probability requirement," but it asks for more than a sheer possibility that a defendant has acted unlawfully. Where a complaint pleads facts that are "merely consistent with" a defendant's liability, it "stops short of the line between possibility and plausibility of entitlement to relief." Ashcroft v. Iqbal, 129 S.Ct. 1937 (U.S. 2009) (citing Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 556-57, 570 (2007).

B. Motion to Strike under Rule 12(f)

Under 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 "viewed with disfavor" and will "be denied unless the allegations have no possible relation to the controversy and may cause prejudice to one of the parties, or if the allegations confuse the issues." Cryofab, Inc. v. Precision Med., Inc., 2008 U.S. Dist LEXIS 51758 at *6 (D.N.J. Jul. 3, 2008) (quoting Garlanger v. Verbeke, 223 F. Supp. 2d 596, 609 (D.N.J. 2002). Furthermore, this Court has held that "Rule 12(f) should be construed strictly against striking portions of the pleading on grounds of immateriality and if the motion is granted at all, the complaint should be pruned with ...

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