Opinion
Civil Action No. 3:01-CV-1940-G
March 5, 2002
MEMORANDUM ORDER
Before the court is the motion of defendant Mothers Polishes Waxes Cleaners Incorporated ("Mothers") to strike certain matters from the complaint filed by the plaintiff Auto Wax Co., Inc. ("Auto Wax"). For the reasons stated below, the motion is denied.
I. BACKGROUND
Auto Wax, a corporation with its principal place of business in Dallas, Texas, is a manufacturer of automobile related products sold throughout the United States and internationally. Complaint ("Complaint") ¶¶ 1, 5. On September 28, 2001, Auto Wax filed this patent infringement action against Mothers, a corporation with its principal place of business in Huntington Beach, California. Id. ¶¶ 2, 9-14. The patent at issue in this action is United States Patent No. 5,727,993 ("the `993 patent"). Id. ¶ 6. Auto Wax alleges that Mothers "sold, made, imported, and/or used infringing `clay-type' products" to retailers, distributors, dealers, and the general public without authorization from Auto Wax. Id. ¶¶ 9, 11, 12. No other parties are named in the complaint, and Auto Wax alleges no trademark infringement claims against Mothers. Brief in Support of Motion to Strike Certain Matters From Complaint ("Motion") at 2.
II. ANALYSIS
Mothers moves to strike portions of the complaint — specifically, Exhibits B and C in their entireties, as well as portions of paragraph 8 — for containing immaterial, impertinent, and unfairly prejudicial subject matter. Id. at 7. The portions of the complaint that Mothers seeks to strike are references to and documents generated in Auto Wax Co., Inc. v. Mark V Products, Inc., NO. 3-99-CV-0982-M (N.D. Tex.) (Lynn, J.), an infringement action of the `993 patent brought by Auto Wax against defendant Mark V Products, Inc., ("Mark V"). Motion at 3; Plaintiff Auto Wax Co. Inc.'s Response to Defendant's Motion to Strike ("Response") at 1. At trial, the jury returned a verdict in favor of Auto Wax. Response at 1. Specifically, the jury found that the automotive detailing clay sold by Mark V infringed the `993 patent. Id. Both parties agree that Mark V supplied Mothers with the infringing detailing clay. Response at 1; Motion at 5.
In support of its motion to strike, Mothers first argues that it was never a party to the litigation between Auto Wax and Mark V and thus is not bound by the judgment in that case. Motion at 1. Auto Wax contends, however, that although Mothers was not a party to that dispute, two representatives of Mothers appeared at trial and voluntarily testified on behalf of Mark V. Response at 1-2. According to Auto Wax, Mothers appeared at trial in an attempt to influence the decision of the court and the jury since Mothers would benefit from a favorable outcome. Id. at 3.
Mothers also claims that the matters it moves to strike are not essential to support the allegations against Mothers made by Auto Wax and are unfairly prejudicial to Mothers. Motion at 7. Mothers states that at least eight pages in Exhibit B, as well as paragraph 5 of Exhibit C, pertain to trademark matters in Auto Wax's suit against Mark V. Id. at 6. Although both parties agreed to the removal of the trademark references in their Rule 7.1 conference, Mothers argues that Exhibits B and C should be stricken in their entirety, given that they "are so filled with immaterial and unfairly prejudicial subject matter, and are so completely unnecessary to the present case." Id. at 7. Specifically, Mothers opposes references to damage amounts, an award of attorney's fees, and a finding of willful patent infringement against Mark V. Id.
Mothers relies upon Magnavox Company v. APE Electronics, Inc., 496 F. Supp. 29 (N.D. Ill. 1980), in support of its motion. In Magnavox, one of the defendants, Fairchild Camera and Instrument Corporation ("Fairchild"), moved to strike several counts of the complaint (specifically, Counts 10, 11, and 12) which recited facts about two prior patent infringement actions that the plaintiff had brought relating to the patent at issue in Magnavox. Id. at 35. Fairchild had not been a party to either of the actions. Id. The complaint averred that one of the actions resulted in a finding of validity by the court after a trial on the merits and the other resulted in a compromise settlement. Id. Fairchild argued that the references to the prior patent infringement actions were irrelevant and prejudicial. Id. The court noted that prior patent law held that "judicial determination of validity creates a presumption of validity that should only be disturbed, when in the second action, `persuasive new evidence' is presented or when there is a `material distinction between the cases.'" Id. at 35-36. The court struck Count 11, which referred to a settlement agreement of one of the plaintiffs past actions relating to the patent at issue, deeming the settlement agreement irrelevant to the issue of patent validity. Id. at 36. The court refused to strike Counts 10 and 12, however, since they referred to a finding of validity and, therefore, contained matters relevant to the instant action. Id.
Mothers argues that it has a status analogous to Fairchild and that this court should strike Exhibits B and C and paragraph 8 of Auto Wax's complaint. Although Mothers' position is analogous to that of Fairchild, Mothers misinterprets the holding in Magnavox. As Auto Wax persuasively argues, the references and documents in the complaint that Mothers seeks to strike appear relevant based on Magnavox. Since Auto Wax's action against Mark V resulted in a finding of patent validity after a trial on the merits, the motion to strike should be granted at this stage only if Mothers has provided persuasive new evidence or material distinction between the facts in the Mark V litigation and this case. Mothers has provided no such information.
FED. R. Civ. P. 12(f) states that "[u]pon motion made by a party . . ., the court may order stricken from any pleading . . . any redundant, immaterial, impertinent, or scandalous matter." Mothers has failed to show how Exhibits B and C in their entirety, as well as paragraph 8 from Auto Wax's complaint, fall within the scope of the rule. To the contrary, Magnavox clearly suggests that the references to and documents of Auto Wax's litigation with Mark V may be relevant in the current patent infringement action against Mothers.
After considering Mothers' reply brief, the court remains unpersuaded by Mothers' arguments to strike certain matters from the complaint. Mothers has failed to convince the court that references to Mark V's willful infringement of the `993 patent is impertinent or scandalous under FED. R. Civ. P. 12(f). Mothers also argues that because the willful infringement references relate to the personal actions and subjective intent of Mark V, the references are immaterial in this case. See Defendant Mothers Polishes Waxes Cleaners Inc.'s Reply Re: Its Motion to Strike Certain [Matters] From the Complaint ("Reply") at 3. Conclusory statements about unfair prejudice to Mothers are not enough to justify its motion to strike; a stronger showing is required under FED. R. Civ. P. 12(f). Furthermore, Mothers has not convincingly demonstrated, in light of the holding in Magnavox, that Auto Wax's references to attorney's fees awarded against Mark V and damages awarded to Auto Wax in the Mark V litigation are immaterial to the instant action. Since the `993 patent was deemed valid in Mark V, references to and documents of the case may be relevant in this patent infringement action. Mothers could have established that the references to and documents from the Mark V litigation were irrelevant if it had shown a material distinction between the actions. Mothers states that it "takes issue with Auto Wax's contention that this case `will involve the same clay, the same infringing activity, the same evidence, the same witnesses, the same issues, and essentially the same parties' as the Mark V litigation." Reply at 4 (quoting Response at 4). After making this statement, however, Mothers neglects to demonstrate the inaccuracy of Auto Wax's assertion. In conclusion, Mothers has not adequately shown the court, under FED. R. Civ. P. 12(f), that these matters should be stricken from the complaint at this stage of the litigation.
III. CONCLUSION
For the reasons discussed above, Mothers' motion to strike is DENIED.SO ORDERED.