United States: Counterclaims For Declaratory Judgment For Non-Infringement And Invalidity Dismissed As Duplicative Of Infringement Complaint And Failure To Plead Any Facts Describing How The Patent Was Invalid

Last Updated: May 22 2013
Article by Stanley M. Gibson

Plaintiff, The Sliding Door Company ("Sliding Door"), brought an action for patent infringement against KLS Doors, LLC ("KLS Doors") alleging infringement of a patent for a sliding door system. KLS Doors filed a counterclaim for declaratory judgment for, among other things, that it did not infringe the patent and that the patent was invalid. Sliding Door moved to dismiss several of the counterclaims, including the counterclaims for declaratory judgment for non-infringement and invalidity.

As explained by the district court, Plaintiff created a "sliding door systems that provides a smooth and quiet glide with a safety mechanism and design flexibility. (Compl. ¶ 9). Plaintiff manufactures and sells sliding doors incorporating this patented technology including room dividers, closet doors, office partitions, and wall slide doors. (Compl., ¶10). On January 19, 2010, U.S. Patent No. 7,647,729 B2 (the "729 Patent") was issued by the United States Patent and Trademark Office ("USPTO") for "Sliding Door System" with Plaintiff as the assignee of the 729 Patent (Compl., ¶¶ 13-14). Plaintiff's Sliding door System features a distinctive appearance that identify to customers that the origin of the product lies with Plaintiff and allow for unique and non-functional decorative panel arrangement options. (Compl., ¶¶ 19, 21)."

The complaint also alleged that "Defendants were aware of the 729 Patent. (Compl., ¶24). Without any authorization from Plaintiff, Defendants have replicated patented sliding door systems and have used similar names in describing these products. (Comp., ¶ 25). Defendants have imported and sold products including Wardrobe Aluminum Doors, Surface Aluminum Doors, Aluminum Room Dividers, and Aluminum Partitions. (Compl, ¶ q26). Defendants' sliding door systems incorporate Plaintiff's patented safety latch mechanism, upper roller assembly, and removable divider strips."

In moving to dismiss the declaratory judgment action for non-infringement, Sliding Door asserted that "Defendants' claims for declaratory judgment for non-infringement should be dismissed since they (1) fail to allege which of their products are non-infringing and (2) are duplicative claims of Plaintiff's infringement claims. (Mot. At 14-15)."

The district court agreed with Sliding Door because the declaratory judgment claim was duplicative. "Here, Defendants' request for declaratory judgment for non-infringement of the 729 Patent is duplicative to Plaintiff's first cause of action. (Compare Comp., ¶¶ 32-37 with Counterclaim, ¶¶ 7-13). As such, Defendants' First Claim for Relief does not serve any useful purpose. While it is not always appropriate to strike counterclaims simply because they concern the same subject matter, here, the counterclaim f or declaratory judgment for non-infringement of the 729 patent presents an issue that is already before the Court in Plaintiff's Complaint. Englewood Lending, Inc. v. G&G Coachella Investments, LLC., 651 F. Supp. 2d 1141, 1147 (C.D. Cal. 2009). Therefore, Defendants' First claim for relief is dismissed as it does not serve any useful purpose."

Plaintiff also asserted that the declaratory relief claim for invalidity should be dismissed because it plead no facts in support of the claim. "Plaintiff argues that Defendants' claim for declaratory judgment for invalidity of the 729 Patent fails to allege facts showing patent invalidity since it does not state how the requirements of patentability re not met. (Mot. At 15). Defendants argue that at the pleading stage, patent invalidity claims do not fall under the heightened pleading standards of Twombly and Iqbal. (Opp. at 17-18). Courts are split on whether invalidity claims must meet the pleading standards of Twombly and Iqbal. For example, in Microsoft Corp. v. Phoenix Solutions, Inc., 741 F. Supp. 2d 1156, 1159 (C.D. Cal. 2010), the court held that "it would be incongruous to require heightened pleading when the pleading standard for infringement does not require facts such as 'why the accused products allegedly infringe' or 'to specifically list the accused products.'" Id. at 1159. On the other hand, the court in Qarbon.com v. eHelp Corp., 315 F. Supp. 2d 1046, 1040-51 (N.D. Cal. 2004) held that an affirmative defense or counterclaim for declaratory judgment that merely references these sections of the patent Act and fails to provide the factual basis for alleging a patent's invalidity is "radically insufficient." Id. at 1049-51."

The district court granted this motion as well because the declaratory relief claim for invalidity contained no factual detail: "Since the pleading requirements of Rule 8 are intended to give notice to parties of the allegations against them, this Court agrees with the district courts that require sufficient allegations to give fair notice to the other party. Here, Defendants' Second Claim for Relief does not allege any facts to support its assertion that the 729 Patent is invalid. (See Counterclaim, ¶¶ 14-18). The Counterclaim merely states that Defendants "Allege that one or more claims of the 729 Patent are invalid for failure to meet the requirements of patentability." (Counterclaim, ¶ 15). Therefore, Defendants' claim for declaratory judgment of invalidity of the 729 Patent and its companion third affirmative defense are dismissed as they fail to state a claim upon which relief can be granted."

The Sliding Door Company v. KLS Doors, LLC, et al., Case No. EDCV 13-00196 JGB (DTBx) (C.D. Cal. May 1, 2013)

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