In a recent Memorandum Order, Chief Judge Leonard P. Stark denied plaintiffs’ motion for judgment on the pleadings regarding defendant’s patent-misuse defense, and also denied plaintiffs’ motion for leave to file a motion for summary judgment on the same defense. Intellectual Ventures I LLC v. Symantec Corp., C.A. No. 13-440-LPS (D. Del. Sept. 24, 2014).
First, given that defendant raised patent misuse as an affirmative defense rather than a claim or counterclaim, Judge Stark determined that plaintiffs’ motion for judgment on the pleadings should be treated as motion to strike under Fed. R. Civ. P. 12(f), rather than a motion pursuant to Fed. R. Civ. P. 12(c) as plaintiffs had contended. Id. at 2-3. Judge Stark noted that “[a] majority of the District Courts within the Third Circuit that have addressed the issue have determined that the pleading requirements of Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007), and Ashcroft v. Iqbal, 556 U.S. 662 (2009), do not apply to the pleading of affirmative defenses.” Id. at 2. Defendant alleged that plaintiffs engaged in patent misuse by “tying the ‘wanted’ patents-in-suit with a large and undisclosed number of ‘unwanted’ patents,” collecting royalties from invalid patents, and “creating and maintaining an unlawful monopoly.” Id. at 6-9. Because Judge Stark could rely only on the pleadings, and because defendant’s affirmative defense required “additional information” or otherwise implicated “legal and factual” questions that the Court could not resolve at this stage of the case, plaintiffs’ motion to strike was denied. Id.
Turning to plaintiff’s motion for leave to file a motion for summary judgment on the patent misuse defense, Judge Stark noted that plaintiffs’ motion focused on defendant “tying the patents-in-suit to irrelevant and unwanted patents in package licenses.” Id. at 9. Judge Stark explained that because there was a “factual dispute as to whether [plaintiffs] improperly tied licensing the patents-in-suit in this case with unrelated patents, this issue does not appear to be amenable to resolution on summary judgment.” Id. at 8-9. Further, citing to the Court’s scheduling order setting the date for case-dispositive motions, Judge Stark noted that “[m]ore importantly, the Court perceives no persuasive reason to permit a motion for summary judgment on this one issue at this time.” Id. at 9.