Intellectual Property Law

Judge Joseph J. Farnan, Jr.: Motion to Strike Answer, Defenses and Counterclaims

By Karen E. Keller, Andrew A. Lundgren et al.

Reminding parties that the Court disfavors motions to strike pursuant to Fed. R. Civ. P. 12(f), Judge Farnan, granted in part and denied in part plaintiffs? motion to strike portions of the defendant?s answer, defenses and counterclaims in Symbol Technologies, Inc. v. Aruba Networks, Inc., C.A. No. 07-519-JJF, Memo. Op. (D. Del. Mar. 30, 2009).

? Equitable Estoppel - Defendant alleged that Plaintiff Symbol was equitably estopped from asserting its patents because during merger negotiations between Symbol and Defendant they never suggested they may assert the patents against Defendant. Judge Farnan denied plaintiffs? motion because equitable estoppel is so driven by the underlying facts and the factual record at this stage of the proceeding was so ?sparse.? Id. at 6.

? Laches ? Noting that defendant pled a ?garden variety? laches defense, and finding a difference between putting a plaintiff on notice of a typical laches defense and a prosecution laches defense, Judge Farnan granted plaintiffs? motion as to that defense giving defendant leave to amend in order to put ?Plaintiffs on fair notice of their alleged ?prosecution laches? defense.? Id. at 8.

? Inequitable Conduct - Defendant alleged that plaintiff Wireless Valley committed inequitable conduct when it ?buried? a highly material reference in a disclosure to the patent examiner. Plaintiffs moved as to this defense and counterclaim because the reference was cited to the examiner. In granting plaintiff?s motion, Judge Farnan noted that dicta in the Molins court may support the contention that ?burying? a reference is indicative of bad faith, this is contradicted by the decision of that case and the Federal Circuit decisions in Scripps and Fiskars. The Court followed the Federal Circuit precedent in Fiskars, that held ?An applicant can not be guilty of inequitable conduct if the reference was cited to the examiner.? Id. at 8-9. (internal citations omitted).

? Introduction and Summary ? In an interesting portion of their motion, plaintiffs? asked the Court to strike defendant?s introduction and summary to their answer as non-responsive to the complaint and potentially prejudicial. Judge Farnan granted plaintiffs? motion on this issue concluding that the ?surplusage? contained therein was irrelevant to defendant?s equitable defenses. Id. at 10-12.

Symbol Technologies, Inc. v. Aruba Networks, Inc., C.A. No. 07-519-JJF, Memo. Op. (D. Del. Mar. 30, 2009).

Full post as published by Delaware IP Law Blog on April 10, 2009 (boomark / email).