LumaSense Technologies, Inc. v. Advanced Engineering Services, LLC
- William Orrick
- 3:20-cv-07905
- U.S. District Court · Northern District of California
- 12
In LumaSense Technologies v. Advanced Engineering Services, Judge Orrick granted in part and denied in part LumaSense’s motion to strike AES’s answer.
LumaSense’s motion was partly granted and partly denied. AES must amend Paragraphs 11, 12, and 33 and the Third, Fourth, and Eighth defenses if it continues to assert them, while the First, Sixth, and Seventh defenses were struck without leave to amend. Paragraph 19 remained in the answer.
What happened
LumaSense Technologies, Inc. sued Advanced Engineering Services, LLC over alleged misuse of LumaSense’s copyrights and trademarks. LumaSense asked the court to strike four responses in AES’s answer and six defenses. AES opposed the request.
The court found that AES properly denied one disputed paragraph, but that three other responses were insufficient or immaterial. It also found that three asserted defenses were not legally proper defenses and that three others were too conclusory because they lacked supporting facts.
Judge Orrick granted in part and denied in part LumaSense’s motion to strike. AES may amend three answer paragraphs and three defenses, but may not amend the three defenses that merely challenged elements of LumaSense’s claims. The court denied the request concerning Paragraph 19.
The detailed version
- LumaSense Technologies, Inc. v. Advanced Engineering Services, LLC · No. 3:20-cv-07905
- William Orrick
- July 14, 2021
Background
LumaSense sued Advanced Engineering Services, LLC (AES) on claims involving alleged copyright infringement, trademark infringement, false designation of origin, false description and representation, and unfair competition. The dispute arose after AES filed a related state-court case alleging, among other things, breach of contract and trade-secret misappropriation. The related case was removed to federal court and consolidated with this case.
AES answered LumaSense’s complaint and asserted ten defenses. LumaSense moved under Federal Rule of Civil Procedure 12(f) to strike four portions of AES’s answer and six defenses. LumaSense argued that some responses improperly failed to deny allegations and that some defenses were either not true affirmative defenses or were inadequately pleaded under the pleading standard associated with Twombly and Iqbal.
Responses to the Complaint
The court denied the request to strike Paragraph 19. AES said that the paragraph contained legal conclusions and that the agreement involved in the dispute spoke for itself, but AES also denied the allegations to the extent they were inconsistent with that agreement. The court held that this conditional denial sufficiently responded to the paragraph under Rule 8(b).
The court granted the motion to strike Paragraphs 11 and 33, with leave to amend. Those paragraphs alleged that LumaSense owned registered trademarks and copyrights. The court found AES’s denials based on lack of knowledge or information insufficient under Rule 8(b).
The court also granted the motion to strike Paragraph 12, with leave to amend. That paragraph alleged that LumaSense had attached true and correct copies of trademark registrations. The court found AES’s denial immaterial or impertinent because whether the documents were attached was unnecessary to resolving the dispute.
Affirmative Defenses
The court granted the motion to strike AES’s First, Sixth, and Seventh defenses without leave to amend. Those defenses asserted failure to state a claim, no damages, and no causation. The court held that these were not affirmative defenses because they merely challenged elements of LumaSense’s claims rather than asserting additional facts that would defeat the claims even if the complaint’s allegations were true.
The court applied the Twombly/Iqbal plausibility standard to affirmative defenses. That standard requires enough factual content to give the opposing party fair notice of the basis for a defense, rather than merely listing legal doctrines.
The court granted the motion to strike AES’s Third, Fourth, and Eighth defenses, with leave to amend. Those defenses invoked fair use, nominative fair use, descriptive use, waiver, acquiescence, estoppel, and an alleged breach of the agreement, but gave no factual explanation of how those doctrines applied. The court said AES could incorporate pertinent portions of earlier pleadings and memoranda if doing so helped identify the issues.
Disposition
LumaSense’s motion to strike was granted in part with leave to amend as to Paragraphs 11, 12, and 33 and the Third, Fourth, and Eighth defenses. It was granted in part without leave to amend as to the First, Sixth, and Seventh defenses. It was denied in part as to Paragraph 19. The court stated that AES could file an amended answer by July 26, 2021.
This was a procedural order about the sufficiency and form of AES’s answer and defenses. The court did not decide the underlying copyright, trademark, false-designation, or unfair-competition claims.
Read the full 12-page opinion on CourtListener, the free public archive maintained by the Free Law Project.