Intellectual Property – Motions to Dismiss

May 27, 2011

Publication| Intellectual Property

Judge Stark Rules on Motions to Strike and Dismiss

In Southco, Inc. v. Penn Engineering & Manufacturing Corp., C.A. No. 10-03-LPS (D. Del. Mar. 7, 2011), Judge Stark denied plaintiff Southco, Inc.’s motion to strike and dismiss, denied defendant Penn Engineering & Manufacturing Corp.’s (“PEM”) motion to strike and dismiss counterclaims, and denied PEM’s motion to strike Southco’s reply brief or alternatively grant leave for a surreply to the extent it sought to strike Southco’s reply brief and granted it to the extent it sought leave to file a surreply.  The Court found that Southco had not yet demonstrated that PEM’s inequitable conduct defense and counterclaim should be dismissed, and therefore denied Southco’s motion to dismiss and strike.  Also, the Court could not conclude that Southco’s allegations were insufficient to support its affirmative defense and counterclaim of fraud, and therefore denied PEM’s motion to strike and dismiss Southco’s counterclaim.  The Court found no basis to strike Southco’s reply brief, since it did not raise new arguments, and did not find a surreply brief from PEM to be necessary.  However, because Southco submitted an unopposed proposal to permit PEM to file a surreply brief so long as Southco was permitted to file a response to the surreply, the Court allowed the filing of both a surreply and a response.

Judge Stark Denies Motion to Dismiss Plaintiff’s Second Amended Complaint

In Brinkmeier v. Graco Children’s Products, Inc., C.A. No. 09-262-LPS (D. Del. Mar. 7, 2011), Judge Stark denied defendant Graco Children’s Products, Inc.’s motion to dismiss.  Plaintiff Jennifer L. Brinkmeier had filed a qui tam action against Graco alleging false patent marking.  Graco moved to dismiss the complaint for failure to state a claim, contending that Brinkmeier failed to meet the heightened pleading standard required by Stauffer for false marking claims insofar as she did not sufficiently plead that Graco intended to deceive the public.  The Court stated that “whether Defendant’s use of a conditional marking belies its intent to deceive the public is an argument that conflates the pleading stage with the proof stage.”  Judge Stark concluded that Brinkmeier had sufficiently pled that the products identified in her complaint were marked with expired patents or patents that did not cover the marked products, and denied the motion to dismiss.

Judge Robinson Limits Period for Damages

In Minkus Electronic Display Systems Inc. v. Adaptive Micro Systems LLC, et al., C.A. No. 10-666-SLR (D. Del. Mar. 16, 2011), Judge Robinson limited the period for which damages would be available in response to a motion filed by 14 of the 50 defendants to dismiss plaintiff’s indirect infringement claim.  Minkus Electronic Display Systems Inc. had filed suit alleging infringement of a patent for a display system allowing for the receipt and transmittal of information between the display system and a remote control.  Though Minkus had no obligation before discovery to identify a third party who directly infringed the patent, and though Minkus properly identified products incapable of non-infringing use, the Court held that the complaint lacked facts to support the allegation that the defendants had knowledge of the patent and thus failed to state a claim.  As a result, the Court ordered that any damages would run only from the time that the defendants learned of the patent, i.e., the date of filing of the complaint.

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