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Tyco Fire Products Lp v. Victaulic Company

January 5, 2012

TYCO FIRE PRODUCTS LP
PLAINTIFF,
v.
VICTAULIC COMPANY, DEFENDANT.



The opinion of the court was delivered by: Eduardo C. Robreno, J.

MEMORANDUM

I. INTRODUCTION

Plaintiff Tyco Fire Products LP ("Plaintiff") brings this patent infringement suit against Victaulic Company ("Defendant"). Plaintiff alleges that Defendant has infringed on two of Plaintiff's patents (the "Asserted Patents"): (1) United States Patent Number 7,793,736 ("'736 patent"), entitled "Ceiling-Only Dry Sprinkler Systems and Methods for Addressing a Storage Occupancy Fire"; and (2) United States Patent Number 7,819,201 ("'201 patent"), entitled "Upright, Early Suppression Fast Response Sprinkler." Third Am. Compl. ¶¶ 9, 17, Oct. 27, 2011, ECF No. 57. Defendant's answer pleads five affirmative defenses and asserts two counterclaims. Answer to Third Am. Compl. ¶¶ 26-36, Nov. 9, 2011, ECF No. 62. Before the Court is Plaintiff's motion to dismiss Defendant's counterclaims for lack of subject matter jurisdiction and to strike Defendant's affirmative defenses of non-infringement and invalidity.

For the reasons discussed below, Plaintiff's motions will be granted in part and denied in part.

II. BACKGROUND

Plaintiff filed suit alleging Defendant infringed the '736 and '201 patents on September 14, 2010, subsequently filed an Amended Complaint on September 28, 2010, and further filed a Second Amended Complaint on November 2, 2010. See ECF Nos. 1, 4, 9. This Court issued a scheduling order on March 29, 2011. ECF No. 30. The parties exchanged proposed claim constructions on July 29, 2011, and they filed a joint statement of terms to be construed with the Court on August 19, 2011. That same day, Plaintiff filed applications with the U.S. Patent and Trademark Office ("PTO") seeking reissue of both the '736 and '201 patents to correct "inadvertent errors" in the claims of those patents. Shortly thereafter, Plaintiff moved to stay the present litigation pending the outcome of those reissue proceedings. ECF No. 41. The Court denied Plaintiff's motion. ECF. No. 53.

Then, Plaintiff moved to amend its Complaint once more and did so by stipulation with Defendant. Plaintiff filed a Third Amended Complaint, the operative complaint, on October 27, 2011.

Plaintiff's Third Amended Complaint claims that its patents are infringed by Defendant's manufacture and sale of the Model LP-46 V4603 K25 Standard Response Storage Upright Sprinklers with varying temperature ratings. See Third Am. Compl. ¶¶ 13, 21. Specifically, Plaintiff alleges in Count I that Defendant induced infringement of claim 33 of the '736 patent by making, using, selling or offering for sale the Model LP-46 V4603 K25 Standard Response Storage Upright Sprinkler with a temperature rating of 286◦ Fahrenheit (the "286◦ product"). And Plaintiff alleges in Count II that Defendant induced and directly infringed claim 48 of the '201 patent by making, using, selling or offering for sale the Model LP-46 V4603 K25 Standard Response Storage Upright Sprinklers with temperature ratings of 162◦ and 212◦ Fahrenheit (the "162◦ product" and "212◦ product", respectively).

Defendant acknowledges manufacturing and marketing the products in question, see Answer to Third Am. Compl. ¶¶ 13, 23, but denies Plaintiff's averments of patent infringement. See id. ¶¶ 14-18, 24-28. Defendant further raises a series of affirmative defenses and two counterclaims. These counterclaims seek a declaration that Plaintiff's '736 and '201 patents are invalid for failure to comply with the patentability requirements in 35 U.S.C. §§ 101, 102, 103, 112 and that it has not infringed the '736 and '201 patents. Id. ¶¶ 35, 36. After Defendant's answer, Plaintiff filed a motion to dismiss Defendant's counterclaims for lack of subject matter jurisdiction pursuant to Federal Rule of Civil Procedure 12(b)(1) alleging that Defendant's counterclaims do not present an Article III "case or controversy." In particular, Plaintiff provided a unilateral covenant not to sue Defendant on the now-unasserted claims of the '736 and '201 patents. Pl.'s Reply Br. in Supp. of Mot. to Dismiss 3, Dec. 15, 2011, ECF No. 72. This motion is now fully briefed and ripe for disposition.

III. STANDARD OF REVIEW

Plaintiff moves to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(1) arguing that the Court lacks subject matter jurisdiction. In particular, Plaintiff argues that Defendant's counterclaims for declaration of invalidity and non-infringement do not present an Article III "case or controversy." U.S. Const. art. II, § 2. When a party challenges the factual basis for the Court's jurisdiction, the Court is "not confined to the allegations in the complaint . . . and can look beyond the pleadings to decide factual matters relating to jurisdiction." Cestonaro v. United States, 211 F.3d 749, 752 (3d Cir. 2000). Defendant, as the counterclaimant here, has the burden to prove that subject matter jurisdiction exists. Benitec Austrl., Ltd. v. Nucleonics, Inc., 495 F.3d 1340, 1344 (Fed. Cir. 2007).

IV. DISCUSSION

Plaintiff moves to dismiss Defendant's counterclaims of non-infringement and invalidity. Plaintiff also moves to strike Defendant's affirmative defenses of non-infringement and invalidity.*fn1 For the reasons that follow, the Court ...


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