Joao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc.

292 F.R.D. 167, 2013 WL 2650206, 2013 U.S. Dist. LEXIS 82996
CourtDistrict Court, D. Delaware
DecidedJune 13, 2013
DocketCiv. No. 12-1138-SLR
StatusPublished

This text of 292 F.R.D. 167 (Joao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Joao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc., 292 F.R.D. 167, 2013 WL 2650206, 2013 U.S. Dist. LEXIS 82996 (D. Del. 2013).

Opinion

MEMORANDUM OPINION

SUE L. ROBINSON, District Judge.

I. INTRODUCTION

On September 14, 2012, Joao Bock Transaction Services, LLC (“JBTS”) filed a complaint against defendant Jack Henry & Associates, Inc. (“Jack Henry”), alleging that certain Jack Henry products, “such as but not limited to its ‘goDough’ and ‘NetTeller Online Banking1 products,” infringe U.S. Patent No. 7,096,003 (“the '003 Patent”). (D.I. 1) On December 3, 2012, Jack Henry answered and counterclaimed. (D.I. 6) Presently before the court is JBTS’ motion for dismissal of Jack Henry’s counterclaims and to strike certain affirmative defenses and background information, filed December 27, 2012 (D.I. 11), and Jack Henry’s motion for leave to file amended counterclaim, filed February 12, 2013 (D.I. 21). The court has jurisdiction over this matter pursuant to 28 U.S.C. §§ 1331 and 1338(a).

II. BACKGROUND

JBTS is a Delaware limited liability company and maintains its principal place of business at 116 Sweetfield Circle, Yonkers, New York 10704. (D.I. 1 at 1-2) Jack Henry is a Delaware corporation and maintains its principal place of business at 663 W. Highway 60, P.O. Box 807, Monett, MO 65708. (D.I. 1 at 2)

Jack Henry’s answer and counterclaim includes statements such as:

... The '003 patent contained the exact same priority date (subject to a terminal disclaimer), specification, description and drawings as [U.S. Patent No. 6,529,725 (“'725 Patent”) ]. The claims of the ['725]1 and the '003 patents are substan[169]*169tially—in many cases almost word for word—the same. To obtain the '003 patent, JBTS dumped hundreds of references totaling over 3200 pages—including the art JHA had disclosed in discovery in the Sleepy Hollow litigation—on the examin-er____
1. ... The substance of this patent was litigated in 2010 in the Southern District of New York, where a jury found unanimously that the ['725]2 patent, from which the '003 patent claims priority, was invalid and that Jack Henry’s product did not infringe it____
9. ... However, Jack Henry denies that there was a “full and fair examination” of this patent. Raymond Joao dumped numerous references totaling thousands of pages on the patent office, including documents obtained during the litigation of the '725 patent, documents he knew the patent office would not actually consider but that would be documented on the face of the patent. Raymond Joao is a patent attorney and engaged in activities that necessarily prevented a fair and full examination of the '003 patent____
24 ... The claims in the '003 patent are substantially similar if not virtually identical to the claims in the '725 patent, and the court’s final judgments of non-infringement and invalidity in the Sleepy Hollow litigation (which the Federal Circuit affirmed) preclude JBTS’ asserting claims in the '003 patent against Jack Henry.... 33. Jack Henry avers that U.S. Patent No. 7,096,003 is void, invalid and unenforceable for the reasons set forth in its Answer to the Complaint filed by Plaintiff. ...

(D.I. 6 at 2, 4, 9)

III. STANDARDS OF REVIEW

A. Motion To Dismiss Pursuant To Rule 12(b)(6)

In reviewing a motion filed under Federal Rule of Civil Procedure 12(b)(6), the court must accept all factual allegations in a complaint as true and take them in the light most favorable to plaintiff. See Erickson v. Par-dus, 551 U.S. 89, 94, 127 S.Ct. 2197, 167 L.Ed.2d 1081 (2007); Christopher v. Har-bury, 536 U.S. 403, 406, 122 S.Ct. 2179, 153 L.Ed.2d 413 (2002). A court may consider the pleadings, public record, orders, exhibits attached to the complaint, and documents incorporated into the complaint by reference. Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308, 322, 127 S.Ct. 2499, 168 L.Ed.2d 179 (2007); Oshiver v. Levin, Fish-bein, Sedran & Berman, 38 F.3d 1380, 1384-85 n. 2 (3d Cir.1994). A complaint must contain “a short and plain statement of the claim showing that the pleader is entitled to relief, in order to give the defendant fair notice of what the ... claim is and the grounds upon which it rests.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 545, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) (internal quotation marks omitted) (interpreting Fed. R.Civ.P. 8(a)). A complaint does not need detailed factual allegations; however, “a plaintiffs obligation to provide the ‘grounds’ of his entitle[ment] to relief requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do.” Id. at 545, 127 S.Ct. 1955 (alteration in original) (citation omitted). The “[f]aetual allegations must be enough to raise a right to relief above the speculative level on the assumption that all of the complaint’s allegations are true.” Id. Furthermore, “[w]hen there are well-ple[d] factual allegations, a court should assume their veracity and then determine whether they plausibly give rise to an entitlement to relief.” Ashcroft v. Iqbal, 556 U.S. 662, 664, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009). Such a determination is a context-specific task requiring the court “to draw on its judicial experience and common sense.” Id.

B. Motion To Strike Pursuant To Rule 12(f)

Federal Rule of Civil Procedure 12(f) states: “The court may strike from a pleading an insufficient defense or any redundant, immaterial, impertinent, or seandal[170]*170ous matter.” “As a general matter, motions to strike under Rule 12(f) are disfavored.” Fesnak and Assocs., LLP v. U.S. Bank Nat’l Ass’n, 722 F.Supp.2d 496, 502 (D.Del.2010). “When ruling on a motion to strike, the [c]ourt must construe all facts in favor of the nonmoving party and deny the motion if the defense is sufficient under law. Further, a court should not grant a motion to strike a defense unless the insufficiency of the defense is clearly apparent.” Symbol Techs., Inc. v. Aruba Networks, Inc., 609 F.Supp.2d 353, 356 (D.Del.2009) (internal quotations and citations omitted).

C. Motion For Leave To File Amended Counterclaim

The Federal Rules of Civil Procedure

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292 F.R.D. 167, 2013 WL 2650206, 2013 U.S. Dist. LEXIS 82996, Counsel Stack Legal Research, https://law.counselstack.com/opinion/joao-bock-transaction-systems-llc-v-jack-henry-associates-inc-ded-2013.