Bose Corp. v. LIGHTSPEED AVIATION, INC.

• Decision Date: 04 March 2010
• Docket Number: Civil Action No. 09-10222-WGY.
• Citation: Bose Corp. v. Lightspeed Aviation, Inc., 691 F. Supp.2d 275 (D. Mass. 2010)
• Parties: BOSE CORPORATION, Plaintiff, v. LIGHTSPEED AVIATION, INC., Defendant.
• Court: U.S. District Court — District of Massachusetts

691 F. Supp.2d 275

BOSE CORPORATION, Plaintiff, v. LIGHTSPEED AVIATION, INC., Defendant.

Civil Action No. 09-10222-WGY.

United States District Court, D. Massachusetts.

March 4, 2010.

Andrew R. Kopsidas, Steven A. Bowers, Fish & Richardson P.C., Washington, DC, Charles Hieken, Fish & Richardson P.C., Boston, MA, for Plaintiff.

John S. Leroy, Marc Lorelli, Mark A. Cantor, Brooks Kushman, P.C., Southfield, MI, Gina M. McCreadie, Mark D. Robins, Nixon Peabody, LLP, Boston, MA, for Defendant.

MEMORANDUM AND ORDER

YOUNG, District Judge.

I. INTRODUCTION

The plaintiff Bose Corporation ("Bose") brought an action against the defendant Lightspeed Aviation, Inc. ("Lightspeed") for patent infringement, claiming that Lightspeed's sales of its Zulu ANR Aviation headset (the "Zulu headset") infringed upon Bose-owned U.S. Patent No. 5,181,-252, entitled "High Compliance Headphone Driving" (the "'252 patent"). Lightspeed filed a counterclaim against Bose, alleging that Bose breached an agreement executed between the two parties to resolve a prior lawsuit. Subsequently, Lightspeed amended its answer to Bose's complaint and added four more counterclaims against Bose. Bose now moves to dismiss three of Lightspeed's four added counterclaims pursuant to Federal Rules of Civil Procedure 12(b)(6) and 12(f).

A. Procedural Posture

On February 13, 2009, Bose sued Lightspeed for patent infringement in this Court Doc. No. 1. On June 8, 2009, Lightspeed filed its answer to Bose's complaint and filed a counterclaim against Bose for breach of contract Doc. No. 4. Bose filed an answer to Lightspeed's breach of contract counterclaim on June 12, 2009 Doc. No. 12. On November 13, 2009, Lightspeed filed an amended answer to Bose's complaint and added four new counterclaims against Bose in addition to its breach of contract counterclaim Doc. No. 28.

On December 3, 2009, Bose moved to dismiss Lightspeed's second, fourth, and fifth counterclaims pursuant to Federal Rules of Civil Procedure 12(b)(6) and 12(f) Doc. Nos. 36, 37. On December 21, 2009, Lightspeed filed an opposition to Bose's motion to dismiss Lightspeed's amended counterclaims Doc. No. 39, and Bose replied to Lightspeed's opposition on January 8, 2010 Doc. No. 41.

B. Facts

Lightspeed alleges that in 1996 it began using the trademark "QUIET COFORT" on the packaging and advertising for its aviation headsets. Am. Answer, Counterclaims at ¶ 5. Lightspeed further alleges that Bose filed for and the U.S. Patent & Trademark Office ("PTO") awarded Bose a trademark for the mark "QUIETCOMFORT" in February 2002. Bose subsequently began selling products under this mark. Id. ¶¶ 7-9. Following these sales, Lightspeed sued Bose in July 2002 in the District Court of Oregon for trademark infringement. Id. ¶¶ 10-11. Lightspeed alleges that it then entered into an agreement with Bose to resolve this lawsuit (the "Settlement Agreement"). Id. ¶ 13.

Pursuant to the Settlement Agreement, Lightspeed agreed to phase out its use of the "QUIET COMFORT" trademark. Id. ¶ 14. In exchange, Bose agreed "not to sue Lightspeed ... for infringement of any ... patent that is owned by Bose or its affiliates" and also agreed not to assert any currently owned patents against Lightspeed "based on any future improvements of ... ANR models, so long as those improvements bear no material relationship to the claim limitations of the 5,181,252 patent." Lightspeed's Opp'n to Bose's Mot. to Strike Am. Answer, Counterclaims, Ex. 1 at 1. The Settlement Agreement further stated that "future improvements which continue to use the same or essentially the same drivers used in the ANR models and do not relate to structure limiting the maximum excursion of the diaphragm ... are deemed by the parties to bear no material relationship to the claim limitations of the '252 patent." Id. at 1-2.

Lightspeed's first counterclaim against Bose alleges that Bose breached the Settlement Agreement by suing Lightspeed for infringement of the '252 patent. Am. Answer, Counterclaims at ¶ 21. Lightspeed added four additional counterclaims to its breach of contract claim when it amended its answer to Bose's complaint on November 13, 2009, and Bose has moved to dismiss three of the four additional counterclaims. Bose's Mot. to Strike Am. Answer, Counterclaims. First, Bose seeks to dismiss Lightspeed's second counterclaim, which requests the Court to issue a declaration canceling Bose's "QUIECOMFORT" trademark. Bose's Mem. Supp. Mot. to Strike Lightspeed's Am. Answer, Counterclaims at 3. Second, Bose moves to dismiss Lightspeed's fourth counterclaim, which alleges that the '252 patent is unenforceable because Bose made material misrepresentations to the PTO with intent to deceive with respect to the names of inventors on the '252 patent application. Id. at 4. Third, Bose seeks to dismiss Lightspeed's fifth counterclaim, which contends that the '252 patent is unenforceable because Bose, with intent to deceive, made a material misrepresentation to the PTO by not disclosing public uses of a particular Bose headset when it applied for the '252 patent. Id. at 5-6.

In the alternative to Rule 12(b)(6) dismissal, Bose requests the Court to strike the same three counterclaims under Federal Rule of Civil Procedure 12(f) because Bose alleges that Lightspeed had nearly six months to amend its original answer, and also that Lightspeed's counterclaims are "insufficient" or "immaterial."

C. Federal Jurisdiction

This Court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a) because this action concerns a federal question of patent law and federal district courts have original jurisdiction in civil actions relating to patents. Additionally, this Court has jurisdiction pursuant to 28 U.S.C. § 1332 because the action arises between citizens of different states and the amount in controversy exceeds $75,000.

II. ANALYSIS

A. The Motion to Dismiss

1. Rule 12(b)(6)

In ruling on a motion to dismiss a counterclaim for failure to state a claim upon which relief can be granted, the Court "must accept all factual averments in the counterclaim as true and draw all reasonable inferences in the counterclaimant's favor." Encompass Ins. Co. of Massachusetts v. Giampa, 522 F.Supp.2d 300, 305-06 (D.Mass.2007) (Lindsay, J.) (quoting Brandt v. Advanced Cell Tech. Inc., 349 F.Supp.2d 54, 57 (D.Mass.2003) (Gorton, J.)). To survive a motion to dismiss, a complaint must contain enough factual information, accepted as true, to "state a claim to relief that is plausible on its face." Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). Factual allegations must be sufficient to "raise a right to relief above the speculative level ... on the assumption that all the allegations in the complaint are true (even if doubtful in fact)." Id. at 555, 127 S.Ct. 1955.

The Court ought dismiss a counterclaim if the counterclaimant fails to allege a "plausible entitlement to relief." See Rodriguez-Ortiz v. Caribe, 490 F.3d 92, 95 (1st Cir.2007) (quoting Twombly, 550 U.S. at 559, 127 S.Ct. 1955). The counterclaimant is obliged to plead "more than labels and conclusions" and "a formulaic recitation of the elements of a cause of action will not do." Twombly, 550 U.S. at 555, 127 S.Ct. 1955. The Court is only required to look at the allegations set forth in the counterclaim and must deny a motion to dismiss if, under any theory, the allegations are sufficient to state a cause of action. See Brandt, 349 F.Supp.2d at 57 (citing Knight v. Mills, 836 F.2d 659, 664 (1st Cir.1987)). The Court may, however, also consider documents that are undisputed and authentic, such as official public records, documents central to the counterclaimant's claim, and documents adequately referred to in the counterclaim. See Watterson v. Page, 987 F.2d 1, 3 (1st Cir.1993).

2. Rule 12(f)

Federal Rule of Civil Procedure 12(f) allows the Court to "strike from a pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter." Motions to strike defenses under Rule 12(f) are generally disfavored; therefore, the Court should grant such motions only when it is "beyond cavil that the defendant could not prevail on their defenses." Honeywell Consumer Prods., Inc. v. Windmere Corp., 993 F.Supp. 22, 24 (D.Mass.1998) (Gorton, J.) (quoting Coolidge v. Judith Gap Lumber Co., 808 F.Supp. 889, 893 (D.Me.1992)). One wellknown treatise states the following with respect to Rule 12(f) motions: "Motions to strike a defense as insufficient are not favored by the federal courts because of their somewhat dilatory and often harassing character. Thus even when technically appropriate and well-founded, Rule 12(f) motions often are not granted in the absence of a showing of prejudice to the moving party." 5C Charles Alan Wright & Arthur R. Miller, Federal Practice & Procedure § 1381, at 421-22 (3d ed. 2004); see also S.E.C. v. Nothern, 400 F.Supp.2d 362, 364 (D.Mass.2005) (Gorton, J.) (discussing legal standard of review for Rule 12(f) motions).

B. Timeliness of the Amendment

Bose argues that because Lightspeed had nearly six months to amend its original answer and did not do so in a timely manner, the Court should strike the added counterclaims pursuant to Rule 12(f). Bose's Mot. to Strike Lightspeed's Am. Answer, Counterclaims. This argument is without merit. These parties proposed a joint case management schedule pursuant to Local Rule 16.1 in which they proposed November 13, 2009 as the deadline to file amended pleadings Doc. Nos. 16, 17, and the Court adopted this deadline. Lightspeed filed its amended answer on November, 13, 2009, thus meeting the deadline agreed upon by the parties and adopted by the Court. The amendment was timely.

C. Counterclaim Count II—Declaration Canceling Bose's "QUIECOMFORT" Trademark

In its second counterclaim against Bose, Lightspeed alleges that it had senior use of the "QUIET COMFORT" mark to Bose's 2000 application for...