UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
ASPEX EYEWEAR, INC., AND
CONTOUR OPTIK, INC.,
Plaintiffs,
v.
CLARITI EYEWEAR, INC.,
Defendant.
Case No.: 07 Civ. 2373 (DC)
CLARITI EYEWEAR, INC.,
Counterclaim-Plaintiff,
v.
ASPEX EYEWEAR, INC., AND
CONTOUR OPTIK, INC.,
Counterclaim-Defendants.
MEMORANDUM OF LAW OF
DEFENDANT/COUNTERCLAIM-PLAINTIFF CLARITI EYEWEAR, INC. IN
OPPOSITION TO PLAINTIFFS’/COUNTERCLAIM-DEFENDANTS’
RULE 12 MOTION TO DISMISS AND IN SUPPORT OF CLARITI’S
CROSS-MOTION, IN THE ALTERNATIVE, TO DISMISS THE COMPLAINT
MINTZ LEVIN COHN FERRIS GLOVSKY and POPEO, P.C.
666 Third Avenue, 25th Floor
New York, New York 10017
Phone: (212) 935-3000
Attorneys for Defendant/Counterclaim-Plaintiff Clariti Eyewear, Inc.
Case 1:07-cv-02373-DC Document 13 Filed 09/28/07 Page 1 of 8
Defendant/Counterclaim-Plaintiff Clariti Eyewear, Inc. (“Clariti”), through its
undersigned counsel, submits this memorandum of law in opposition to Plaintiffs’/
Counterclaim-Defendants’ (“Plaintiffs”) Rule 12 Motion To Dismiss and in support of
Clariti’s cross-motion, in the alternative, to dismiss the complaint (a copy of which is
attached hereto as Exhibit A) pursuant to Rule 12(b)(6) for failure to state a claim.
PRELIMINARY STATEMENT
Plaintiffs’ motion to strike certain affirmative defenses and dismiss certain
counterclaims by Clariti is a waste of both time and judicial resources, and should be
denied for at least four reasons.
First, Plaintiffs’ motion is terribly hypocritical and seeks to impose a double-
standard. Plaintiffs’ complaint suffers from the very same infirmities that they argue
should result in dismissal of Clariti’s defenses and counterclaims. Thus, if Plaintiffs’
motion is granted in any part, the Court should not stop with Clariti’s pleadings but
should dismiss the entire case.
Second, Plaintiffs’ motion is nothing but a litigation tactic that ignores the liberal
notice pleading rules and that improperly is designed to increase Clariti’s expenses in
defending this action.
Third, Plaintiffs’ claims that they lack sufficient notice of the basis for Clariti’s
invalidity claims and affirmative defenses is incorrect.
And fourth, Plaintiffs’ argument that Clariti has insufficiently pled a fraud claim
is a red herring. Clariti has not currently pled a counterclaim for fraud or inequitable
conduct (but reserves the right to do so, especially after further discovery).
Case 1:07-cv-02373-DC Document 13 Filed 09/28/07 Page 2 of 8
2
For these reasons, and because Plaintiffs filed a responsive pleading before filing
this motion to dismiss, Plaintiffs’ motion should be denied. See Fed. R. Civ. P. 12(b), (e)
and (f).
I. PLAINTIFFS’ MOTION IS HYPOCRITICAL
To the extent Plaintiffs’ motion has any merit, the same “flaws” it identifies in
Clariti’s defenses and counterclaims are also found in Plaintiffs’ complaint.
While Plaintiffs purport to state claims for patent infringement, the Complaint
does not tell Clariti which claims of the patents-in-suit are infringed. Nor does the
Complaint tell Clariti which particular products supposedly infringe. The Complaint’s
sole attempt to identify the allegedly infringing products is in paragraphs 12 and 21.
Paragraph 12 reads as follows:
12. Upon information and belief, Defendant, well knowing
of the ‘747 Patent, has infringed thereon by offering for
sale and selling magnetic eyeglass frames and clip-on
attachments as claimed in the ‘747 Patent, including
without limitation those styles sold under its “AirMag”
designations, within this district and on information and
belief, elsewhere as well.
(Emphasis added.) Paragraph 21 contains the same, ambiguous “without limitation”
language, but relates to the ‘545 Patent. That Complaint, therefore, fails to give adequate
notice of the products that allegedly infringe the patents-in-suit.
Plaintiffs, nevertheless argue that Clariti should be held to a higher standard and
should be required to recite with factual detail how its unspecified products do not
infringe unidentified claims, and how those unidentified claims are invalid. As a matter
of logic and common sense, this double standard should not be foisted upon Clariti. Any
Case 1:07-cv-02373-DC Document 13 Filed 09/28/07 Page 3 of 8
3
order dismissing claims on the grounds urged by Plaintiffs should also dismiss the entire
case, without prejudice to Plaintiffs’ ability to refile their complaint.1
II. CLARITI HAS MET THE NOTICE PLEADING STANDARD
The federal rules were designed to liberalize pleading requirements. See
Swierkiewicz v. Sorema N. A., 534 U.S. 506 513-14 (2002). This includes both claims and
affirmative defenses. See Hassan v. U.S. Postal Service, 842 F.2d 260, 263 (11th Cir.
1988) (“liberal pleading rules established by the Federal Rules of Civil Procedure apply
to the pleading of affirmative defenses”); Barnwell & Hays, Inc. v. Sloan, 564 F.2d 254,
256 (8th Cir. 1977) (noting that federal rules were intended to liberalize pleading
requirements and that failure to use term “waiver” in answer “impose[d] a requirement of
undue formalism . . . inconsistent with that liberal purpose”); 5 Charles Alan Wright &
Arthur R. Miller, Federal Practice and Procedure § 1274 at 455-56 (2d ed. 1990) (“[a]n
affirmative defense may be pleaded in general terms and will be held to be sufficient . . .
as long as it gives Plaintiff fair notice of the nature of the defense”).
Following these liberal pleading requirements, courts have widely recognized that
motions to strike affirmative defenses are generally disfavored. See Securities and
Exchange Commission v. Toomey, 866 F. Supp. 719, 722 (S.D.N.Y. 1992) (“Motions to
strike are generally not favored and will be denied unless it is clear that under no
circumstances could the defenses succeed.”); U.S. v. Pretty Products, Inc., 780 F. Supp.
1488, 1498 (S.D. Ohio 1991) (“Motions to strike a defense as insufficient are not favored
by the courts because of their dilatory character. Thus, even when technically appropriate
and well-founded, they often are not granted in the absence of a showing of prejudice to
1 Dismissing the entire case would also moot Clariti’s pending motion to stay the case pending a
decision by the U.S. Patent & Trademark Office on Clariti’s requests for reexamination of the two
patents-in-suit.
Case 1:07-cv-02373-DC Document 13 Filed 09/28/07 Page 4 of 8
4
the moving party.”) (quoting Wright & Miller, Federal Practice and Procedure 2d §
1381); Glenside West Corp. v. Exxon Co., 761 F. Supp. 1100, 1114 (D.N.J. 1991)
(motions to strike affirmative defenses are not to be granted “unless it appears to a
certainty that Plaintiffs would succeed despite any state of the facts which could be
proved in support of the defense.”).
Clariti’s answer and counterclaims meet the liberal, notice pleading requirements.
Clariti has given Plaintiffs notice of its various defenses and has also indicated, through
its counterclaims, its disagreement with Plaintiffs’ allegations that Plaintiffs’ yet-to-be-
specified patent claims are valid and infringed by unnamed products.2 Moreover,
nowhere in their motion do Plaintiffs suggest that they cannot obtain further detail and
narrowing of the factual bases for Clariti’s defenses and counterclaims through discovery,
such as interrogatories and document requests. Indeed, the very purpose of discovery is to
allow a party to learn and narrow the factual bases for claims and defenses. And Clariti
already has provided, in response to Plaintiffs’ discovery demands, in letters to this
Court, and in the applications for reexamination filed by Clariti with the U.S. Patent and
Trademark Office (the “PTO”), detailed information concerning Clariti’s counter-claims
and affirmative defenses.
Given the undeniable availability of discovery and the liberal notice pleading
requirements, Plaintiffs’ motion should be denied.3
2 When Clariti asked Plaintiffs to identify the claims in issue, Plaintiffs sent a letter stating that “at
least” certain claims were alleged to be infringed. First, the use of “at least” means that Plaintiffs have
essentially failed to identify which specific claims are at issue, and second, if Plaintiffs’ use of a letter
was sufficient for them to have “pled” which claims are at issue, Plaintiffs’ motion is moot because
Clariti already has provided or will provide in discovery the information that Plaintiffs seeks (such as
via the reexamination request).
3 To the extent Plaintiffs’ motion seeks to “strike” or dismiss particular paragraphs of Clariti’s
pleading--as opposed to specific defenses or counterclaims--the motion is infirm. Individual portions
of a pleading should not be stricken unless their contents are shown to be wholly irrelevant,
Case 1:07-cv-02373-DC Document 13 Filed 09/28/07 Page 5 of 8
5
III. PLAINTIFFS’ ATTACKS ON CLARITI’S INVALIDITY
CONTENTIONS AND DEFENSES ARE MISPLACED
Given the liberal pleading requirements and stage of this case, Plaintiffs’ attacks
on Clariti’s defenses and counterclaims related to invalidity are equally misplaced.
Again, Plaintiffs’ arguments impose a double-standard. The Complaint did not
identify specific patent claims that are allegedly infringed by specific products, but
Plaintiffs argue that Clariti should be required to specifically plead such facts in its
responsive pleading. This is improper.
In any event, Plaintiffs already have knowledge of the bases of Clariti’s invalidity
contentions here. Plaintiffs are well-aware that Clariti has filed a request with the USPTO
for reexamination of the patents-in-suit. The papers Clariti submitted in support of that
request show in substantial part much of Clariti’s invalidity contentions. Moreover,
Clariti has already provided Plaintiffs with discovery responses that gave them
information regarding Clariti’s affirmative defenses. In addition, Clariti’s request to file a
motion for summary judgment regarding equitable estoppel and laches provided specific
facts and information as to that defense. Given all the information Plaintiffs have
received, it is unclear what they hope to gain by this motion. Regardless, any argument
by Plaintiffs that they are prejudiced and lack sufficient notice is simply unfounded.
Finally, as discovery progresses, expert analysis occurs, and the claims are
interpreted in a Markman hearing, Clariti may assert additional bases for invalidity.
redundant, immaterial, impertinent or scandalous to the opposing party and the opposing party
establishes that the content is clearly prejudicial. See Fed. R. Civ. Proc. 12(f); Davis v. Ruby Foods,
Inc., 269 F.3d 818, 821 (7th Cir. 2001).
Case 1:07-cv-02373-DC Document 13 Filed 09/28/07 Page 6 of 8
6
IV. PLAINTIFFS ATTACK A FRAUD CLAIM THAT CLARITI
SIMPLY HAS NOT PLED
Plaintiffs spend multiple pages of their brief arguing that fraud and inequitable
conduct must be pled with particularity and that Clariti’s “fraud” and “inequitable
conduct” counterclaims do not meet this standard. In one sense, Plaintiffs are right; fraud-
based counterclaims must be pled with particularity. But that is irrelevant at this time
because Clariti has yet to assert such counterclaims. Plaintiffs’ motion is therefore
misdirected and confusing because it attacks claims Clariti simply has not yet pled.
To be sure, Clariti ultimately may assert such claims. When appropriate, Clariti
will seek leave to amend to adequately plead any such claims. But for purposes of
Plaintiffs’ motion here, Plaintiffs’ arguments about non-existent Clariti claims should be
ignored.
Case 1:07-cv-02373-DC Document 13 Filed 09/28/07 Page 7 of 8
7
VI. CONCLUSION
As detailed in Clariti’s July 3, 2007 letter to the Court, Plaintiffs’ motion is
untimely because they waived their right to pursue this motion when they filed a
responsive pleading. None of Plaintiffs’ arguments in its motion justifies or excuses its
waiver. Moreover, Plaintiffs’ motion lacks merit and should be denied. Alternatively, if
any part of Plaintiffs’ motion is granted, the Complaint also should be dismissed because
it fails to adequately state claims for infringement of the two patents-in-suit.
Respectfully submitted,
Dated: September 28, 2007 MINTZ LEVIN COHN FERRIS GLOVSKY and
POPEO, P.C.
By: /s Kevin N. Ainsworth
Kevin N. Ainsworth (KA 8493)
666 Third Avenue, 25th Floor
New York, New York 10017
Phone: (212) 935-3000
Attorneys for Defendant/Counterclaim-Plaintiff
CLARITI EYEWEAR, INC.
OF COUNSEL:
Andrew D. Skale, Esq.
MINTZ LEVIN COHN FERRIS GLOVSKY
and POPEO, P.C.
9255 Towne Centre Drive, Suite 600
San Diego, California 92121-3039
Phone: (858) 320-3000
Email: askale@mintz.com
Case 1:07-cv-02373-DC Document 13 Filed 09/28/07 Page 8 of 8
