United States District Court, D. Massachusetts
MEMORANDUM AND ORDER
ALLISON D. BURROUGHS DISTRICT JUDGE.
PetEdge, Inc. (“PetEdge”), alleges that Defendant
Yahee Technologies Corp. (“Yahee”) is infringing
upon its patent entitled “Folding Pet Ramp and Steps,
” United States Patent No. 7, 621, 236 (the
“'236 Patent”), in violation of 35 U.S.C.
§ 271. Yahee asserted nine affirmative defenses and
brought a counterclaim for a declaratory judgment of
invalidity and non-infringement of the '236 Patent.
PetEdge moved to dismiss Yahee's counterclaim pursuant to
Federal Rule of Civil Procedure 12(b)(6) and to strike
Yahee's sixth and seventh affirmative defenses pursuant
to Rule 12(f). [ECF No. 15]. For the reasons explained below,
the Court denies PetEdge's motion to dismiss Yahee's
counterclaim and grants PetEdge's motions to strike
Yahee's sixth and seventh affirmative defenses.
following facts are drawn from the complaint. [ECF No. 1].
PetEdge is in the business of designing, sourcing,
manufacturing, and distributing pet-related merchandise.
PetEdge invented a folding pet ramp and steps combination
apparatus (“pet ramp/steps”) and owns a patent,
the '236 Patent, directed to various embodiments of this
apparatus. PetEdge sells its pet ramp/steps under its Pet
Studio and Guardian Gear brands.
is also in the business of selling pet-related merchandise
and offers several pet ramp/steps for sale. Although Yahee
offers four distinct models, they all appear to be the same
or very similar to each other. Yahee's products compete
directly with PetEdge's pet ramp/steps products.
initiated this action against Yahee on August 17, 2015. [ECF
No. 1]. On October 24, 2016, Yahee filed its answer. [ECF No.
9]. Currently before this Court is PetEdge's motion to
dismiss Yahee's counterclaim and to strike Yahee's
sixth and seventh affirmative defenses. [ECF No. 15]. Yahee
amended its counterclaim and opposed PetEdge's motion to
dismiss and motion to strike on November 17, 2016. [ECF Nos.
17-18]. PetEdge filed its reply to Yahee's opposition
[ECF No. 23] and an answer to the amended counterclaim [ECF
No. 24] on December 1, 2016.
PETEDGE'S MOTION TO DISMISS YAHEE'S
motion to dismiss Yahee's counterclaim, PetEdge argues
that Yahee failed to meet the pleading requirements of Rule
8. [ECF No. 15]. Yahee responded by amending its counterclaim
to set forth additional factual allegations. [ECF No. 17].
PetEdge has not renewed its motion to dismiss with respect to
the amended counterclaim.
is well settled that an amended complaint supersedes the
original complaint.” Lowden v. William M. Mercer,
Inc., 903 F.Supp. 212, 216 (D. Mass. 1995). Because
Yahee amended its counterclaim, its original counterclaim
“is no longer operative.” In re Celexa &
Lexapro Mktg. & Sales Practices Litig., 751
F.Supp.2d 277, 286 (D. Mass. 2010) (denying a motion to
dismiss as moot where the complaint that defendant moved to
dismiss had been amended). Therefore, PetEdge's motion to
dismiss Yahee's original counterclaim is denied as moot.
PETEDGE'S MOTION TO STRIKE YAHEE'S AFFIRMATIVE
has also moved to strike Yahee's sixth and seventh
affirmative defenses pursuant to Federal Rule of Civil
Procedure 12(f), which authorizes this Court to “strike
from a pleading an insufficient defense or any redundant,
immaterial, impertinent, or scandalous matter.”
“Motions to strike under Rule 12(f) are generally
disfavored, and this Court has previously stated that they
‘should be granted only when it is beyond cavil that
the defendant could prevail on them.'” United
States SEC v. Nothern, 400 F.Supp.2d 362, 364 (D. Mass.
2005) (quoting Honeywell Consumer Prods. Inc. v. Windmere
Corp., 993 F.Supp. 22, 24 (D. Mass. 1998)). “A
plaintiff may prevail on a Rule 12(f) motion where ‘it
clearly appears that the plaintiff would succeed despite any
state of facts which could be proved in support of
defense.'” Id. (quoting FDIC v.
Gladstone, 44 F.Supp.2d 81, 85 (D. Mass. 1999)).
“Even when technically appropriate, motions to strike
are not typically granted absent a showing of prejudice to
the moving party.” United States v. Sampson,
820 F.Supp.2d 202, 241 (D. Mass. 2011). “[A] motion to
strike will not be granted if the insufficiency of the
defense is not clearly apparent, or if it raises factual
issues that should be determined on a hearing on the
merits.” Nothern, 400 F.Supp.2d at 364
(quoting 5C Charles Alan Wright & Arthur R. Miller,
Federal Practice & Procedure § 1381, at
421-22 (3d ed. 2004)).
PetEdge's Motion to Strike Yahee's Seventh
seventh affirmative defense reads, in full:
Upon information and belief, and as likely will be supported
by evidence after a reasonable opportunity for further
investigation and discovery the '236 Patent is
unenforceable because during their prosecution, the United
States Patent and Trademark Office was not fully advised of
all material facts and prior art, ...