By: Daily Record Staff//April 23, 2013
By: Daily Record Staff//April 23, 2013//
U.S. District Court, WDNY
Counterclaims — Sufficiency of the Pleadings
Gradient Enterprises Inc. v. Skype Technologies S.A., et al.
Background: The plaintiff commenced a patent infringement action against the defendant. The plaintiff was issued a patent for a “method of detecting, reporting and responding to network node-level events and a system thereof.” The defendant asserted counterclaims including invalidity of the patent, non-infringement, and the unenforceability due to laches or estoppel. The plaintiff moved to dismiss the counterclaims.
Ruling: The District Court granted in part and denied in part. The court held that because form 18 governs claims of direct infringement, the pleading standards represented by form 18 also apply to counterclaims seeking a declaration of non-direct infringement as the defendant can do little more than deny the direct infringement claim. With respect to a counterclaim of invalidity and indirect infringement, the Twombly standard must be met. The court concluded that the invalidity counterclaim and the claim that the defendant did not indirectly infringe the patent are facially insufficient.
Donald W. O’Brien Jr. and Dennis B. Danella of Woods Oviatt Gilman for the plaintiff; Michael B. Eisenberg, Stefan R. Stoyanov, Douglas E. Lumish and Parker C. Ankrum of Kasowitz Benson Torres & Friedman, and Robert B. Wilson of Quinn Emanuel Urquhart & Sullivan for the defendants