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Super-Sparkly Safety Stuff, LLC v. Skyline USA, Inc

United States District Court, N.D. Texas, Dallas Division

October 2, 2019

SUPER-SPARKLY SAFETY STUFF, LLC, Plaintiff,
v.
SKYLINE USA, INC., d/b/a GUARD DOG SECURITY, Defendant and Counter-Plaintiff.

          MEMORANDUM OPINION AND ORDER

          David C. Godbey United States District Judge

         This order addresses Plaintiff Super-Sparkly Safety Stuff, LLC's (“Super-Sparkly”) motion to dismiss Defendant Skyline USA, Inc., d/b/a Guard Dog Security's (“Skyline”) counterclaims [30]. For the reasons set forth below, the Court grants in part and denies in part Super-Sparkly's motion.

         I. Origins of the Dispute

          This is a patent infringement action between two companies specializing in self-defense products. Super-Sparkly, a manufacturer and distributer of personal protection devices, filed suit against Skyline, an importer and seller that distributes security products to third parties such as Amazon. Mot. Dismiss Def.'s Counterclaims 1-3 [30]. Super-Sparkly's suit claimed that Skyline's “Bling it On” pepper spray, a rhinestone-covered pepper spray cannister, infringes on Super-Sparkly's design patents for “Bling Sting” pepper spray, which also features rhinestones. Id. at 2. In response, Skyline asserted ten counterclaims against Super-Sparkly, which Super-Sparkly now moves to dismiss.

         II. Rule 12(b)(6) Legal Standard

          When addressing a Rule 12(b)(6) motion to dismiss, a court must determine whether the plaintiff has asserted a legally sufficient claim for relief. Blackburn v. City of Marshall, 42 F.3d 925, 931 (5th Cir. 1995). A viable complaint must include “enough facts to state a claim to relief that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). To meet this standard, a plaintiff must “plead[ ] factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). A court generally accepts well-pleaded facts as true and construes the complaint in the light most favorable to the plaintiff. Gines v. D.R. Horton, Inc., 699 F.3d 812, 816 (5th Cir. 2012). But a court does not “accept as true conclusory allegations, unwarranted factual inferences, or legal conclusions.” Ferrer v. Chevron Corp., 484 F.3d 776, 780 (5th Cir. 2007) (citation omitted). “Factual allegations must be enough to raise a right to relief above the speculative level on the assumption that all the allegations in the complaint are true (even if doubtful in fact).” Twombly, 550 U.S. at 555.

         III. The Court Grants in Part and Denies in Part Super-Sparkly's Motion to Dismiss

         A. The Court Grants Super-Sparkly's Motion To Dismiss Skyline's Declaratory Judgment Counterclaims Mirroring Its Affirmative Defenses

         Skyline raised noninfringement, invalidity, unenforceability, and noncompliance with 35 U.S.C. § 287 (requiring marking), as both affirmative defenses and counterclaims, seeking declaratory relief for its counterclaims. The Declaratory Judgment Act grants federal courts broad discretion in determining whether to exercise jurisdiction over claims seeking declaratory judgment. Innovative Therapies, Inc. v. Kinetic Concepts, Inc., 599 F.3d 1377, 1385 (Fed. Cir. 2010). District courts may decline to exercise jurisdiction when entertaining claims would not further the purpose of the Declaratory Judgment Act. Cat Tech LLC v. TubeMaster, Inc., 528 F.3d 871, 883 (Fed. Cir. 2008); Serco Servs. Co., L.P. v. Kelley Co., Inc., 51 F.3d 1037, 1039 (Fed. Cir. 1995) (stating that a court “must make a reasoned judgment whether the investment of time and resources will be worthwhile”). The underlying goal of the Declaratory Judgment Act is to “allow a party ‘who is reasonably at legal risk because of an unresolved dispute to obtain judicial resolution of that dispute without having to await the commencement of legal action by the other side.'” Capo, Inc. v. Dioptics Medical Prods., Inc., 387 F.3d 1352, 1354 (Fed. Cir. 2004) (quoting BP Chems. Ltd. v. Union Carbide Corp., 4 F.3d 975, 977 (Fed. Cir. 1993) (abrogated on other grounds)).

         The Court finds that entertaining Skyline's declaratory judgment counterclaims mirroring its affirmative defenses would not further the Declaratory Judgment Act's purpose. Skyline's use of the declaratory judgment vehicle in this procedural context is unnecessary - Skyline has simply recast as counterclaims the very arguments it pled in response to Super-Sparkly's claims. Dismissing these declaratory counterclaims will not leave Skyline “helpless and immobile.” Capo, Inc., 387 F.3d at 1358. On the contrary, to the extent Skyline requests declaratory judgment simply to limit Super-Sparkly's ability to move for dismissal of its claims, that would appear to be a disfavored use of the declaratory judgment process. The Court thus grants Super-Sparkly's motion to dismiss the noninfringement, invalidity, unenforceability, and section 287 counterclaims.

         B. The Court Grants Super-Sparkly's Motion to Dismiss Skyline's Tortious Interference Counterclaims

          Super-Sparkly also seeks dismissal of Skyline's interference counterclaims. Because Skyline has not met the Rule 12(b)(6) plausibility standard, the Court grants the motion as to these counterclaims.

         1. Tortious Interference with Contractual Relations. - To succeed on its claim for tortious interference with contract, a party must allege that (1) a valid contract existed; (2) defendant willfully and intentionally interfered with the contract; (3) the interference proximately caused plaintiff damage; and (4) plaintiff suffered actual damage or loss. Butnaru v. Ford Motor Co., 84 S.W.3d 198, 207 (Tex. 2002). The plaintiff must identify “a specific contract that is the subject of interference.” M-I LLC v. Stelly, 733 F.Supp.2d 759, 774 (S.D. Tex. Aug. 17, 2010). Here, Skyline merely alleged that it had “contract(s) to do business with customers, ” First Am. Answer First Am. Counterclaims 28 [29], failing “to plead adequately the first element of a tortious interference with contract claim.” M-I LLC, 733 F.Supp.2d at 775. The Court thus grants Super-Sparkly's motion to dismiss this claim and grants Skyline leave to replead.

         2. Tortious Interference with Prospective Contracts and Business Relations. - Skyline alleges tortious interference with prospective contracts and business relations. Texas law treats these grounds as distinct torts, so ...


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