Case 1:09-cv-06884 Document 29 Filed 01/11/10 Page 1 of 2

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

Performance Proxy Research, )

LLC, )
)
Plaintiff, )
)
v. ) 09 C 6884
)
Microsoft Corporation, )
)
Defendant. )

MEMORANDUM ORDER

Microsoft Corporation (“Microsoft”) has filed its Answer and

Counterclaim in this patent infringement action brought against

it by Performance Proxy Research, LLC (“Performance”). This sua

sponte memorandum order is triggered by two problematic aspects

of that responsive pleading.

To begin with, Microsoft’s First Defense is at odds with the

concept of affirmative defenses within the scope of Fed.R.Civ.P.

8(b)(5) and the universal caselaw applying that Rule (see also

App’x 5 to State Farm Mut. Auto. Ins. Co. v. Riley, 199 F.R.D.

276, 279 (N.D. Ill. 2001)). That is because the First Defense is

totally inconsistent with Complaint ¶¶ 3 and 7-9, which must be

accepted as true for affirmative defense purposes.

Second, this Court has consistently been bemused over the

years by the penchant of patent lawyers to advance counterclaims

that do nothing more than mirror the allegations of patent

infringement complaints. Here (as always in such cases)

 Case 1:09-cv-06884 Document 29 Filed 01/11/10 Page 2 of 2

Microsoft is charged with patent infringement, something that

necessarily depends on the existence of a valid patent. After

all, both infringement and validity must be proved by Performance

to justify its recovery under the Complaint. Hence it is

difficult to understand just what (other than extra paper) is

added to the case by a counterclaim that seeks declarations of

non-infringement and invalidity of the patent in issue.1

Accordingly the First Defense is stricken. This Court will

leave it to Microsoft’s counsel to either explain the need for

the present counterclaim or to file an amended pleading to take

its place.

_________________________________
Milton I. Shadur
Senior United States District Judge

Date: January 11, 2010

1
To the extent that Microsoft seeks (as it does) an
award of attorneys’ fees and expenses on the premise that this
action is “exceptional,” that might well take the form of an
affirmative defense or, if that seems inappropriate, a one- or
two-paragraph counterclaim without the added mirroring of the
denials already set out in the Answer.

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 Case 1:09-cv-06884 Document 31 Filed 01/21/10 Page 1 of 10

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

PERFORMANCE PROXY §
RESEARCH, LLC §
§
CIVIL ACTION NO. 1:09-CV-06884
Plaintiff, §
§
JURY TRIAL DEMANDED
vs. §
§
Hon. Judge Shadur
MICROSOFT CORPORATION §
§
Defendant. §

MICROSOFT’S MOTION TO CLARIFY MEMORANDUM ORDER

Defendant Microsoft Corporation (“Microsoft”) respectfully moves for clarification of

the Court’s Memorandum Order dated January 11, 2010, which struck Microsoft’s First Defense

(Non-Infringement of the Asserted Patent) from its Original Answer and invited further

explanation regarding the necessity of Microsoft’s counterclaims for invalidity and non-

infringement. (Dkt. 29).

Regarding the invalidity counterclaim, Microsoft has pleaded invalidity as an affirmative

defense as required by the Patent Statute. 35 U.S.C. § 282. The present circumstances in this

case, therefore, do not require this position to also be pleaded as a counterclaim.

However, Microsoft files this motion to address the possible necessity of its non-

infringement counterclaim. Microsoft pleaded non-infringement as a defense in its Original

Answer in view of State Farm Mutual Auto Insurance Co. v. Riley, 199 F.R.D. 276, 279 (N.D.

Ill. 2001), Federal Rule of Civil Procedure 8(b)(5), and the Patent Statute, which requires that

non-infringement “shall be pleaded.” See 35 U.S.C. § 282. Additionally, Microsoft has found at

least one court in this jurisdiction holding that non-infringement is a defense that must be
 Case 1:09-cv-06884 Document 31 Filed 01/21/10 Page 2 of 10

affirmatively pleaded or else is waived. See Para Gear Equipment Co. Inc. v. Square One, No.

04-cv-601, Order dated September 2, 2008 (Brown, J.) (attached as Exhibit A). Specifically, the

Para Gear court granted summary judgment in favor of the plaintiff, holding that the defendant

“effectively conceded” infringement because, despite its denial of the plaintiff’s allegations of

infringement, the defendant did not separately plead non-infringement as a defense and its

pleadings did not contain a live counterclaim for non-infringement. Id. at 2-4 (“It is not enough

merely to deny the patentee’s allegations of infringement.”). To avoid similarly “conceding”

infringement, therefore, Microsoft not only denied Plaintiff’s infringement allegations, but also

pleaded non-infringement both as its First Defense and as a counterclaim.

Microsoft’s aim is to sufficiently preserve (and not waive) its non-infringement defense

in this case. Based on the authorities cited in this Motion, it appears that one possible way to

preserve the non-infringement defense is to plead it as a counterclaim. Out of an abundance of

caution, therefore, Microsoft seeks clarification from the Court on how to properly preserve the

defense, and will file an amended pleading in accordance with the Court’s further instructions.

Dated: January 21, 2010 Respectfully Submitted,

s/ Walter Jones, Jr.

B. Trent Webb (admitted pro hac vice)

Patrick A. Lujin (admitted pro hac vice)
Michelle L. Marriott ( pro hac vice filed)
Mary Jane Peal (ARDC No. 6287070)
SHOOK, HARDY & BACON LLP
2555 Grand Boulevard
Kansas City, Missouri 64108
(816) 474-6550
(816) 421-5547 Facsimile

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Case 1:09-cv-06884 Document 31 Filed 01/21/10 Page 3 of 10

Walter Jones, Jr. (ARDC No. 1365665)

Uma Chandrasekaran (ARDC No. 6281690)
PUGH, JONES, JOHNSON & QUANDT, P.C.
180 North LaSalle Street, Suite 3400
Chicago, Illinois 60601
(312) 768-7800
(312) 768-7801 Facsimile
Attorneys For Defendant Microsoft Corporation

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CERTIFICATE OF SERVICE

I, Walter Jones, Jr., an attorney, certify that I shall cause to be served a copy of
Microsoft’s Motion to Clarify Memorandum Order upon the following individual(s), by
deposit in the U.S. mail box at 180 North LaSalle Street, Chicago, Illinois 60601, postage
prepaid, same-day personal delivery by messenger, Federal Express overnight delivery, facsimile
transmitted from (312) 768-7801, or Case Management/Electronic Case Filing System
(“CMECF”), as indicated below on January 21, 2010

CM/ECF Raymond P. Niro

Facsimile/___ Pages Dean D. Niro
Federal Express Frederick Christopher Laney
U.S. Mail Joseph Albert Culig
Messenger Niro, Scavone, Haller & Niro, Ltd.
181 West Madison Street
Suite 4600
Chicago , IL 60602

s/ Walter Jones, Jr.

Walter Jones, Jr.

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