United States District Court, E.D. Texas, Marshall Division
PAYNE UNITED STATES MAGISTRATE JUDGE
GREE, Inc. (“GREE”) filed a motion
(“Motion”) to strike Defendant Supercell Oy's
(“Supercell”) affirmative defense of invalidity
(Dkt. No. 20), which is now before the Court.In this Motion,
GREE asks the Court to find that Supercell is estopped under
35 U.S.C. § 325(e)(2) from raising the affirmative
defense of invalidity of the patent-at-issue in this case.
GREE argues that the estoppel statute should apply since
Supercell previously filed a petition for post-grant review
(“PGR”) of the same patent and that petition was
denied by the Patent Trial and Appeal Board
(“PTAB”) in a final written decision.
the owner by assignment of U.S. Patent No. 9, 597, 594 (the
“'594 Patent”), which issued on March 21,
2017. (Dkt. No. 1, at 3). On November 7, 2017, Supercell
filed a petition for post-grant review of the '594
Patent, solely raising the ground of patent ineligibility
under 35 U.S.C. § 101 in its petition. (Dkt. No. 27, at
On January 2, 2019, the PTAB issued a final written decision,
holding claims 1, 8, and 10-20 of the '594 Patent
unpatentable, but finding that Supercell had not satisfied
its burden of showing the claims were unpatentable under
§ 101 for claims 2-7 and 9 of the '594 Patent. (Dkt.
No. 27, at 2).
February 28, 2019, GREE filed a Complaint (Dkt No. 1) against
Supercell for patent infringement of the '594 Patent in
the Eastern District of Texas. On May 16, 2019, Supercell
filed its Answer to the Complaint, raising a series of
defenses to GREE's claims, including the affirmative
defense of invalidity as its third defense. (Dkt. No. 18, at
6). GREE now moves to strike Supercell's affirmative
defense of invalidity as insufficient or improper under
Fed.R.Civ.P. 12(f) due to the defense being statutorily
estopped under 35 U.S.C. § 325(e)(2). Supercell argues
it, as the former PGR petitioner, is not estopped in this
action from advancing a ground for invalidity that it did not
petition for in its PGR before the PTAB.
Leahy-Smith America Invents Act (“AIA”), Pub. L.
No. 112-29, 125 Stat. 284 (2011), created the PGR process in
which the parties engaged. See Cuozzo Speed Techs., LLC
v. Lee, 136 S.Ct. 2131, 2136-38 (2016). A party may
petition for PGR “to cancel as unpatentable 1 or more
claims of a patent on any ground . . . (relating to the
invalidity of the patent or any claim).” 35 U.S.C. §
321(b). After receiving a petition, the PTAB must decide
whether to institute PGR by determining whether “it is
more likely than not that at least 1 of the claims challenged
in the petition is unpatentable.” § 324(a).
the PTAB issues a final decision, the PGR petitioner is
estopped from arguing in a civil action that a “claim
is invalid on any ground that the petitioner raised or
reasonably could have raised during that post-grant
review.” 35 U.S.C. § 325(e)(2) (emphasis
STATEMENT OF LAW
Federal Rule of Civil Procedure 12(f), the court may, on its
own or on a motion made by a party, move to “strike
from a pleading an insufficient defense or any redundant,
immaterial, impertinent, or scandalous matter.”
Fed.R.Civ.P. 12(f). “Although motions to strike a
defense are generally disfavored, a Rule 12(f) motion to
dismiss a defense is proper when the defense is insufficient
as a matter of law.” Twin Rivers Eng'g, Inc. v.
Fieldpiece Instruments, Inc., 2016 WL 7042232, at *1
(E.D. Tex. Apr. 6, 2016) (quoting Kaiser Aluminum v.
Chem. Sales, Inc., 677 F.2d 1045, 1057 (5th Cir. 1982)).
To find that a defense is insufficient as a matter of law,
the Court considers whether the defense is applicable to the
instant case and whether the pleadings give plaintiff fair
notice of the defense. See Woodfield v. Bowman, 193
F.3d 354, 362 (5th Cir. 1999). This standard prevents a
plaintiff from being a victim of “unfair
surprise.” Id. The Court possesses
considerable discretion in ruling on a motion to strike.
Fisher v. JPMorgan Chase Bank N.A., 2018 WL 5621861,
at *2 (E.D. Tex. Oct. 30, 2018). However, if an affirmative
defense raises either a question of fact or a question of
law, the court must deny a motion to strike. Priester v.
Long Beach Mortg. Co., 2018 WL 1833255, at *4 (E.D. Tex.
Jan. 23, 2018) (citations omitted).
Current State of PTAB review
seeks to preclude Supercell from raising an affirmative
defense of invalidity based on 35 U.S.C. § 325(e)(2),
the PGR estoppel provision. Specifically, GREE argues that
Supercell is estopped from asserting grounds not raised in
Supercell's petition that ...