By Eric Schweibenz
On December 23, 2011, ALJ Robert K. Rogers, Jr. issued Order No. 11 granting-in-part Complainant Openwave Systems, Inc.’s (“Openwave”) motion to strike Respondents Research In Motion Corporation and Research In Motion, Ltd.’s (collectively “RIM”) first, second, third, fourth, tenth, eleventh, twelfth, thirteenth, fourteenth and sixteenth affirmative defenses, and granting RIM’s unopposed motion for leave to file an amended response to the Complaint in Certain Devices for Mobile Data Communication (Inv. No. 337-TA-809).

According to the Order, Openwave contended that RIM’s aforementioned defenses were inadequately pled and should be stricken.  Specifically, Openwave asserted that RIM’s factual support for each of these defenses is insufficient to meet the requirements of Commission Rule 210.13 or the heightened pleading standard of Rule 9(b) of the Federal Rules of Civil Procedure.  RIM opposed the motion, arguing that it fully complied with Commission Rules and the ALJ’s precedent in pleading each defense with “as much specificity as possible,” and with the heightened particularity under Rule 9(b) when necessary.  The Commission Investigative Staff (“OUII”) also opposed the motion, arguing that the specificity sought by Openwave with respect to RIM’s defenses of non-infringement and invalidity is not required at this stage.  However, OUII asserted that RIM failed to sufficiently plead patent misuse, inequitable conduct, prosecution history estoppel, lack of standing, lack of candor and abuse of process, express license, patent exhaustion, first sale, incorporation and reservation, but stated that RIM should be allowed to supplement its response before these defenses are stricken.

In the Order, ALJ Rogers emphasized that Commission Rule 210.13(b) provides that affirmative defenses shall be pleaded with “as much specificity as possible in the response,” and explained that the heightened pleading standard required by Rule 9(b) of the Federal Rules of Civil Procedure applies to affirmative defenses of inequitable conduct.  ALJ Rogers further determined that RIM’s affirmative defenses of non-infringement and invalidity should not be stricken, noting that Openwave “fails to cite any decision in which a court or the Commission struck a non-infringement or validity defense from the pleadings” and reiterating that Rule 210.13(b) “encourages, but does not require, respondents to include … a showing of non-coverage … and/or a showing of how any prior art renders each asserted claim invalid or unenforceable.”

ALJ Rogers agreed with Openwave that RIM’s affirmative defense of inequitable conduct failed to name the specific individual involved in the alleged inequitable conduct, failed to allege facts showing that anyone knew of the alleged inequitable conduct, and failed to identify which claims the allegedly withheld references were relevant to, and thus held this defense to be inadequately pled.  However, the ALJ determined that RIM’s unopposed motion to amend its response to supplement this affirmative defense should be granted, and therefore RIM’s inequitable conduct defense would not be stricken.

As to RIM’s affirmative defense that Openwave should be denied relief under the doctrines of patent misuse, estoppel, acquiescence, waiver, contract or unclean hands, ALJ Rogers held that the motion to strike these defenses (except patent misuse) would be denied because “Openwave has not shown that RIM could have provided more specific pleadings.”  However, the ALJ agreed with Openwave and OUII that RIM had not set forth facts sufficient to support a finding of patent misuse.

Finally, ALJ Rogers determined that the language of RIM’s affirmative defenses of prosecution history estoppel, lack of standing, express or implied license, patent exhaustion/first sale, lack of candor and abuse of process is improper boilerplate language and these defenses would therefore be stricken.  The ALJ stated, “[w]hile I appreciate that certain facts in this investigation will almost exclusively be in the hands of Openwave, RIM has failed to identify any particularized information which led it make the allegations in its Third, Fourth, Twelfth, Thirteenth, and Sixteenth Affirmative Defenses.”