In the Southern District of New York, the court granted plaintiff’s motion to dismiss defendant’s declaratory judgment counterclaim of invalidity because defendant failed to include factual allegations (such as prior art) to support its claim of invalidity.
Defendant’s counterclaim alleged, without additional facts, that each of the asserted patents “is invalid for failure to satisfy one or more conditionals of patentability…including but not limited to 35 U.S.C. §§ 102, 103, 112, and/or 171.” The court held these statements were merely conclusory and failed to meet the Twombly“plausibility” pleading standard. The court highlighted that defendant “does not identify any prior art that anticipates or renders obvious [plaintiff’s] patents.” Because defendant failed to identify any prior art (or other bases of invalidity), defendant failed to “assert nonconclusory factual matter sufficient to nudge its claims across the line from conceivable to plausible.”
The Court rejected defendant’s argument that the plausibility/Twombly pleading standard should not apply to patent invalidity counterclaims. In particular, Defendant pointed to the district’s local patent rules, which set forth the process for disclosing the factual allegations and contentions for the invalidity claim, including any prior art. The court disagreed, noting (1) the pleading standard and local patent rules are not inconsistent, and (2) there is no precedent that invalidity counterclaims should be measured under a different pleading standard than other claims.
Ultimately, the court dismissed all of defendant’s invalidity counterclaims, but granted one opportunity to amend to cure the pleading deficiencies.
Crye Precision LLC v. Duro Textiles, LLC, 15-cv-1681-DLC (June 16, 2015) (Cote, J.).