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District Court Strikes Affirmative Defenses of Laches, Waiver, Estoppel and Acquiescence for Lack of Sufficient Detail

After the plaintiff filed a Second Amended Complaint against Fieldpiece Instruments, Inc. (“Defendant”) for patent infringement, the Defendant filed its an answer raising a series of affirmative defenses to Plaintiff’s claims. The Plaintiff then moved to strike several of the Defendant’s affirmative defenses as insufficient or improper under Fed. R. Civ. P. 12(f).

The Plaintiff argued that Defendant’s fourth affirmative defense, which includes “laches, waiver, estoppel, and acquiescence,” is “improper, confusing and fails to give Plaintiff fair notice. As explained by the district court, in support of these four discrete defenses, Defendant’s Answer only provided a single, conclusory sentence: “[Plaintiff] is barred in whole or in part from asserting the [patent-in-suit] against Fieldpiece under the equitable doctrines of laches, waiver, estoppel, and/or acquiescence.”

The district court found that “[t]his broad and generic recitation of equitable defenses does not recite any facts as to how Plaintiff’s conduct gives rise to any of such defenses. While the Court acknowledges that ‘in some cases, merely pleading the name of the affirmative defense . . . may be sufficient,’ Defendant’s Answer ‘falls well short of the minimum particulars needed to identify the affirmative defense in question.’ Woodfield v Bowman, 193 F.3d 354, 362 (5th Cir. 1999). Accordingly, the Court finds that Defendant’s fourth affirmative defense should be stricken.”

The Plaintiff also contended that Defendant’s eighth affirmative defense (“prior downstream or implied license”) is improper because it “is not an affirmative defense at all.” Here, the district court disagreed: “this Court has previously recognized that an allegation of implied license is an affirmative defense. See Fiber Sys. Int’l, Inc. v. Applied Optical Sys., Inc., No. 2:06-CV-473, 2009 WL 3571350, at *4 (E.D. Tex. Oct. 26, 2009) (denying defendant’s motion for summary judgment because defendant failed to allege implied license as an affirmative defense in its answer). Unlike the prior instance, Defendant here provides a sufficient factual basis to support its implied license defense. Specifically, the Answer contains allegations that Plaintiff continued to supply components to Defendant or its authorized vendors after the termination of the underlying business agreement, and that such conduct gave rise to an implied or downstream license. (Answer at 18). Implied license is a recognized affirmative defense and is supported by factual allegations contained in the Answer. Accordingly, Defendant’s eighth affirmative defense should not be stricken.”

The Plaintiff also argued that the tenth affirmative defense (“no intent to deceive”) and eleventh affirmative defense (“no likelihood of confusion”) on the ground that both defenses are merely general denials of elements of Plaintiff’s affirmative claims. The district court also agreed that these should be stricken. “The purported defense of ‘no intent to deceive’ is nothing more than an attempt to negate an element of Plaintiff’s false marking claim. Likewise, ‘no likelihood of confusion’ is not an affirmative defense but instead simply a denial of an element of Plaintiff’s unfair competition claim. Defendant’s answer already contains denials of these elements of Plaintiff’s claims. (See Answer at ΒΆΒΆ 33-36, 91-98). While Defendant is free to challenge these elements of Plaintiff’s case-in-chief at trial, it is inappropriate and redundant for Defendant to rehash its general denials under the guise of affirmative defenses. See F.T.C. v. Think All Pub. L.L.C., 564 F. Supp. 2d 663, 665-66 (E.D. Tex. 2008). This Court concludes that Defendant’s tenth and eleventh defenses should be stricken.”

Twin Rivers Engineering, Inc. v. Fieldpiece Instruments, Inc., Case No. 2:15-cv-1838-JRG (E.D. Tex. April 2016)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or

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