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Inc. v. Actiontec Elecs., Inc.

United States District Court, W.D. New York

November 21, 2014

Wi3, INC., Plaintiff,
v.
ACTIONTEC ELECTRONICS, INC., Defendant

For Wi3, Inc., Plaintiff, Counter Defendant: Ashley E. LaValley, PRO HAC VICE, Timothy J. Haller, Niro, Haller & Niro, Chicago, IL.

For Actiontec Electronics, Inc., Defendant, Counter Claimant: Nicola Anthony Pisano, LEAD ATTORNEY, Foley & Lardner LLP, San Diego, CA; Scott Richard Kaspar, LEAD ATTORNEY, PRO HAC VICE, Foley & Lardner LLP - Chicago, Chicago, IL.

Page 359

DECISION AND ORDER

ELIZABETH A. WOLFORD, UNITED STATES DISTRICT JUDGE.

BACKGROUND

Plaintiff Wi3, Inc. (" Plaintiff" ) commenced the instant action on June 11, 2014, alleging that Defendant Actiontec Electronics, Inc. (" Defendant" ) has infringed certain claims of United States Patent No. 6,108,331

Page 360

(the " '331 Patent" ). (Dkt. 1). Plaintiff alleges that it is the owner of the '331 Patent, which is entitled " Single Medium Wiring Scheme for Multiple Signal Distribution in Building and Access Port Therefor," and issued on August 22, 2000. (Dkt. 1 at ¶ 1). According to Plaintiff, Defendant has infringed " at least claims 26, 27, 29 and 30 of the '331 Patent" by making and selling products known as Actiontec MoCA Network Adapters and/or Network Extenders. ( Id. at ¶ 20). Defendant denies infringing the '331 Patent and brings two counterclaims, one seeking a declaratory judgment of non-infringement of the '331 Patent (Counterclaim 1) and one seeking a declaratory judgment of invalidity of the '331 Patent (Counterclaim 2) (the " Invalidity Counterclaim" ). (Dkt. 13).

On September 15, 2014, Plaintiff filed a motion asking the Court to dismiss Defendant's counterclaims and to strike the portion of Defendant's answer entitled " Reservation of Defenses." (Dkt. 17). Defendant filed its opposition to Plaintiff's motion on October 6, 2014. (Dkt. 20). Plaintiff subsequently withdrew its request to dismiss Defendant's non-infringement counterclaim (Counterclaim 1) and filed an answer to that counterclaim only. (Dkt. 21, 22). Plaintiff filed reply papers with respect to the remaining portions of its motion on October 20, 2014. (Dkt. 23). For the reasons set forth below, Plaintiff's motion is granted with respect to the request to dismiss the Invalidity Counterclaim and denied with respect to the request to strike the portion of Defendant's answer entitled " Reservation of Defenses."

DISCUSSION

I. Legal Standard

A. Motion to Dismiss

" A motion to dismiss counterclaims is governed by the well-known standard for determining a motion under Rule 12(b)(6) to dismiss for failure to state a claim upon which relief can be granted." Excellus Health Plan, Inc. v. Tran, 287 F.Supp.2d 167, 171 (W.D.N.Y. 2003). In considering a motion to dismiss, a court generally may only consider " facts stated in the [pleading] or documents attached to the [pleading] as exhibits or incorporated by reference." Nechis v. Oxford Health Plans, Inc., 421 F.3d 96, 100 (2d Cir. 2005). " In reviewing the motion to dismiss, all reasonable inferences must be drawn in the counterclaimant's favor." Excellus Health Plan, 287 F.Supp.2d at 171.

" [C]ounterclaims must meet the pleading requirements of Rule 8(a), as interpreted by [ Bell A. Corp. v. Twombly, 550 U.S. 544, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007)] and [ Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009)], in order to survive a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6)." Erickson Beamon Ltd. v. CMG Worldwide, Inc., No. 12 CIV. 5105 NRB, 2014 WL 3950897, at *7 (S.D.N.Y. Aug. 13, 2014); see also Gradient Enterprises, Inc. v. Skype Technologies S.A., 932 F.Supp.2d 447, 452 (W.D.N.Y. 2013) (" [A] counterclaim of patent invalidity must be measured against the Twombly standard." ). Under Twombly and Iqbal, to withstand dismissal, a counterclaimant must set forth " enough facts to state a claim to relief that is plausible on its face." Twombly, 550 U.S. at 570. " '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 ...


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