IN THE UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF OREGON 

TANNERITE SPORTS, LLC and 

DANIEL TANNER, 

Plaintiffs, 

vs. 

JERENT ENTERPRISES, LLC, dba 

SONIC BOOM EXPLODING TARGETS, 

Defendant. 

Andrea D. Coit 

Harrang Long Gary Rudnick, PC 

360 East lOth Avenue, Suite 300 

Eugene, OR 97401 

Kevin M. Drucker (pro hac vice) 

David L. Cargille (pro hac vice) 

Mendelsohn, Drucker, & Dunleavy, PC 

1500 John F. Kennedy Blvd., Suite 312 

Philadelphia, PA 19102 

Attorneys for plaintiffs 

Joshua M. Wolf 

Wolf Legal, LLC 

17390 SW Rose Petal Lane #206 

Beaverton, OR 97003 

Page 1 - OPINION AND ORDER 

Case No. 6:15-cv-180-AA 

OPINION AND ORDER 
Michael T. Hilgers (pro hac vice) 

Gober Hilgers, PLLC 

14301 FNB Parkway, Suite 100 

Omaha, NE 68154 

Attorneys for defendant 

AIKEN, Chief Judge: 

Plaintiffs Tannerite Sports, LLC and Daniel Tanner move to 

dismiss defendant Jerent Enterprises, LLC, dba Sonic Boom Exploding 

Targets' counterclaims under Fed. R. Civ. P. 12 (b) (6). For the 

reasons set forth below, plaintiffs' motion to dismiss defendant's 

counterclaims is GRANTED in part and DENIED in part. 

BACKGROUND 

On February 2, 2015, plaintiffs filed a complaint alleging 

patent infringement of its Tannerite® brand binary targets under the 

Patent Act, 35 U.S.C. § 271. Plaintiff Daniel Tanner is the patent 

holder of binary exploding rifle targets used for long-range 

shooting practice. These targets are safe and legal to ship and 

store because they are packaged to keep the oxidizer separate from 

the catalyst, thus preventing the target from exploding until mixed. 

See Pls.' Mot. to Dismiss at 8. 

On March 31, 2015, plaintiffs filed an amended complaint. 

Plaintiffs realleged that defendant continues to willfully and 

deliberately commit direct infringement, inducement of direct 

infringement by its customers and end users, and contributory 

infringement of at least claim 25 of U.S. Patent No. RE44,386 ("the 

'386 patent") through its manufacture, use, sale, and offering for 

sale of nearly identical binary exploding rifle targets marketed 

under the "Sonic Boom" brand name. Plaintiff also added a second 

Page 2 - OPINION AND ORDER 
claim that defendant infringed U.S. Patent No. RE44,440 ("the '440 

patent") in the same manner as summarized above. 

On April 14, 2015, defendant answered plaintiffs' amended 

complaint with affirmative defenses and counterclaims, and then 

filed an amended answer. Defendant alleges the following 

counterclaims: ( 1) defendant has not directly or indirectly 

infringed, and is not continuing to directly or indirectly infringe, 

the '386 or '440 patent; (2) some or all of the claims of the '386 

and '440 patents are invalid; and (3) plaintiffs have engaged in 

inequitable conduct rendering the claims of the '386 and '440 

patents invalid and unenforceable. 

Plaintiffs move to dismiss defendant's counterclaims. 

STANDARD OF REVIEW 

"Where a counterclaim 'fail[s] to state a claim upon which 

relief can be granted,' it must be dismissed." Unum Life Ins. Co. 

of Am. v. Martin, 2013 WL 3995005, *2 (D. Or. Aug. 1, 2013) (quoting 

Fed. R. Civ. P. 12 (b) (6)). To survive a motion to dismiss, a 

counterclaim must allege "enough facts to state a claim to relief 

that is plausible on its face." Bell Atlantic Corp. v. Twombly, 550 

U.S. 544, 570 (2007); Ashcroft v. Iqbal, 556 U.S. 662, 129 (2009). 

The complaint is liberally construed in favor of the counterclaimant 

and its allegations are taken as true. Rosen v. Walters, 719 F.2d 

1422, 1424 (9th Cir. 1983). Bare assertions, however, that amount 

to nothing more than a "formulaic recitation of the elements" of a 

claim "are conclusory and not entitled to be assumed true." Ashcroft 

v. Iqbal, 556 U.S. at 681. Rather, to state a plausible claim for 

Page 3 - OPINION AND ORDER 
relief, the complaint "must contain sufficient allegations of 

underlying facts" to support its legal conclusions. Starr v. Baca, 

652 F.3d 1202, 1216 (9th Cir. 2011), cert. denied, 132 S. Ct. 2101 

(2012) . 

DISCUSSION 

Plaintiffs contend defendant's counterclaims fail to state a 

claim for relief because they are unsupported by sufficient facts, 

vague, and are conclusory recitations of the elements of a claim. 

Defendant maintains its counterclaims are pled with sufficient 

factual support and afford plaintiff fair notice of its claims. 

I. Non-Infringement Claim 

First, defendant brings a non-infringement counterclaim seeking 

a declaration that it has not infringed the '386 or '440 patent 

("patents-in-suit"). Defendant "denies that it has directly or 

indirectly infringed the Patents-In-Suit and denies that it is 

continuing to directly or indirectly infringe the Patents-In-Suit." 

Def. 's Am. Answer 'II 106. Defendant otherwise makes no factual 

allegations to support its non-infringement counterclaim. Defendant 

does however "incorporate by reference" paragraphs 80 through 104 

of the "FACTS" section preceding its counterclaims, but fails to 

direct the Court to any particular facts within the twenty-four 

paragraphs in support of the non-infringement counterclaim. 

Plaintiffs argue the vague and conclusory language of 

defendant's non-infringement counterclaim fails to state which of 

defendant's products do not infringe the patents-in-suit, or provide 

any reasons to support the alleged non-infringement. 

Page 4 - OPINION AND ORDER 
A motion to dismiss for failure to state a claim upon which 

relief can be granted is a purely procedural question; thus, 

regional circuit law is applied. McZeal v. Sprint Nextel Corp., 501 

F.3d 1354, 1355-56 (Fed. Cir. 2007) (citing C & F Packing Co., Inc. 

v. IBP, Inc., 224 F.3d 1296, 1306 (Fed. Cir. 2000)). Typically, the 

pleading sufficiency of a counterclaim is adjudged in light of the 

Supreme Court's pleading standard set forth in Iqbal and Twombly. 

However, a "direct" infringement claim in a patent case is an 

exception, as district courts are split on whether to apply the 

minimal pleading requirements of Fed. R. Civ. P. Form 181 or the 

significantly more demanding requirements of Iqbal and Twombly. 

Furthermore, the Ninth Circuit has not addressed which pleading 

standard to apply to direct infringement claims. Aubin Indus., Inc. 

v. Caster Concepts, Inc., No. 2:14-CV-02082-MCE-CKD, 2015 WL 

3914000, at *3 (E.D. Cal. June 25, 2015) (quoting Microsoft Corp. v. 

Phx. Solutions, 741 F. Supp. 2d 1156, 1158 (C. D. Cal. 2010)). 

This Court is persuaded by a recent patent opinion from the 

Chief Judge of the Eastern District of California where a similarly 

situated plaintiff moved to dismiss counterclaims of non1 Form 18, found in the Appendix of Forms accompanying the 

Federal Rules of Civil Procedure, is an approved model complaint 

for asserting a claim of direct patent infringement, which 

requires identifying a general "category" of infringing products 

and an allegation of infringement in general terms, but does not 

require the plaintiff to identify any specific patent claim 

("claim" refers to a patent claim, not a legal claim). See Fed. 

R. Civ. P. Form 18; Infineon Tech. AG v. Volterra Semiconductor 

Corp., No. C-11-6239-MMC, 2012 WL 3939353, at *2 (N.D. Cal. Sept. 

10, 2012). 

Page 5 - OPINION AND ORDER 
infringement and invalidity. See Aubin Indus., Inc., 2015 WL 3914000 

at *3-5. The district court there determined that "Form 18, which 

is appended to the Federal Rules of Civil Procedure, provides an 

example for alleging direct patent infringement that requires little 

more than a conclusory statement that the defendant infringed the 

plaintiff's patent. 11 Id. at * 4 (quoting Microsoft Corp., 7 41 F. 

Supp. 2d at 1158) (internal quotations omitted) . 2 Similarly, the 

Northern District of California determined that "[t]he direct noninfringement portion of [defendant's] counterclaim must be evaluated 

under Form 18, whereas the indirect non-infringement portion is 

subjected to the heightened pleading standard of Iqbal and Twombly. 11 

PageMeldinq, Inc. v. ESPN, Inc., No. C 11-06263 WHA, 2012 WL 

3877686, at *2 (N.D. Cal. Sept. 6, 2012). 

Therefore, after applying the Form 18 requirements to 

defendant's direct non-infringement counterclaim, this Court finds 

the counterclaim sufficiently plead. Defendant asserted the detail 

required by Form 18, including the patents at issue, i.e., the '386 

and '440 patents, and the allegedly infringing product, i.e., the 

Sonic Boom Exploding Targets. 3 Def.'s Am. Answer~~ 29, 96, 108. 

2 Nonetheless, plaintiffs often challenge, and courts 

continue to debate, whether Form 18 pleading standards apply to a 

plaintiff's direct infringement claim only, and do not apply to a 

counterclaim alleging direct non-infringement. This debate is 

unsettled; this Court applies Form 18 pleading standards to 

defendant's direct non-infringement counterclaim. Aubin Indus., 

Inc., 2015 WL 3914000 at *3-4. 

3 However, the Court notes that defendant's pleading barely 

satisfied Form 18 standards given that the Court infers the 

allegedly infringing product from defendant's admission in~ 29-

30 of its Amended Answer. The Court encourages defendant, should 

it seek to amend, to plead clear and particularized facts within 

Page 6 - OPINION AND ORDER 
Next, regarding defendant's indirect non-infringement claim, 

the heightened pleading standard of Twombly and Iqbal is applied. 

R+L Carriers, Inc. v. Driver Tech LLC, 681 F.3d 1323, 1336 (Fed. 

Cir. 2012) ("Form 18 should be strictly construed as measuring only 

the sufficiency of allegations of direct infringement, and not 

indirect infringement."); PageMeldinq, Inc., 2012 WL 3877686 at *3. 

Defendant here has failed to allege sufficient facts, when 

taken as true, that lead to a reasonable inference that defendant 

did not intend another party to infringe the patents-in-suit. Aside 

from pleading that it did not indirectly infringe the patents-insuit, notably in the same sentence it denied direct infringement, 

defendant states no facts to support its claim that it sold or 

offered to sell a product that had no substantial non-infringing 

use. Although the facts incorporated by reference provide some 

support for the indirect non-infringement claim, defendant leaves 

the Court to guess which facts support a claim for relief. The Court 

finds defendant's indirect non-infringement counterclaim fails at 

the pleading level. Thus, plaintiffs' motion to dismiss defendant's 

direct non-infringement counterclaim is denied, but the motion to 

dismiss the indirect non-infringement counterclaim is granted. 

II. Invalidity Claim 

Second, defendant brings an invalidity counterclaim seeking a 

declaration that the '386 and '440 patents are invalid. Plaintiff 

maintains that defendant's invalidity claim is vague and should be 

dismissed for failure to allege anything more than a conclusory 

the individual counterclaim sections. 

Page 7 - OPINION AND ORDER 
recitation of the statute. Plaintiffs' motion to dismiss defendant's 

invalidity counterclaim is granted. 

Counterclaims seeking declaratory relief for invalidity are 

adjudged under the Iqbal and Twombly standard. PageMelding, Inc., 

2012 WL 3877686 at *3. The elements of an invalidity claim depend 

on the section of the Patent Act violated. Defendant alleges: "The 

claims of the Patents-In-Suit are invalid for failure to satisfy one 

or more of the requirements of Title 35, including without 

limitations, Sections 102, 103 and/ or 112." De f. 's Am. Answer <JI 112. 

Defendant argues: "Mr. Tanner, either directly or through his 

company, offered for sale more than one year prior to the effective 

filing date of the Patents-In-Suit Tannerite-branded targets that 

practice, or whose use practices, the claims of the '386 patent and 

the '449 [sic] patent. Mr. Tanner's sale of this product violates 

the on-sale bar and renders the Patents-In-Suit invalid under 

Section 102." Def.'s Am. Answer <JI 113. 

Defendant fails to connect the facts plead in support of its 

Section 102 claim with the binary targets that are the patents-insuit. First, defendant asserts that plaintiffs' June 2 000 

advertisement in Shotgun News demonstrates that plaintiff was 

offering for sale the binary-form of Tannerite-brand targets more 

than one year prior to the effective filing date of the patents-insuit, because the advertisement announced that "Tannerite Exploding 

Rifle Targets" explode when shot by a centerfire rifle. Id. <JI 93. 

Defendant, however, fails to assert additional facts, that if taken 

as true, would lead to the conclusion that plaintiffs were 

Page 8 - OPINION AND ORDER 
advertising the "binary" exploding targets that are the patents-insuit, rather than a predecessor product, the "pre-mixed" exploding 

target. 

Second, defendant asserts that plaintiffs' U.S. Trademark 

Application Serial No. 85041916 demonstrates that plaintiff was 

offering for sale the Tannerite-brand binary targets more than one 

year prior to the effective filing date of the patents-in-suit. 

Specifically, defendant alleges that the trademark application 

represents that the Tannerite trademark was used as early as May 8, 

1996 and Tannerite is the trademark for the Binary Exploding Rifle 

Target. Id. ~ 95. However, defendant again failed to plead facts 

linking the 1996 use of "Tannerite" with the binary targets at 

issue. Defendant also omitted the date the trademark application was 

filed. Thus, defendant failed to assert that the trademark 

application was filed more than one year prior to the effective 

filing date of the patents-in-suit, August 20, 2001. As a result, 

the facts currently plead do not support more than a mere 

possibility that the "binary" targets were offered for sale prior 

to August 1, 2000. Where a counterclaim pleads facts that are merely 

consistent with a plaintiff's liability, "it stops short of the line 

between possibility and plausibility of entitlement to relief." See 

Ashcroft v. Iqbal, 556 U.S. at 678 (internal quotations omitted). 

Therefore, plaintiffs' motion to dismiss defendant's invalidity 

counterclaim under Section 102 is granted. 

Furthermore, defendant alleges no facts to support invalidity 

under Sections 103 or 112, asserting conclusory pleadings at best. 

Page 9 - OPINION AND ORDER 
PageMelding, Inc., 2012 WL 3877686 at *3; Infineon Tech. AG, 2013 

WL 1832558 at *2. The Ninth Circuit clarified that a counterclaim 

is entitled to a presumption of truth when it ncontain[s] sufficient 

allegations of underlying facts to give fair notice and to enable 

the opposing party to defend itself effectively"; and nthe factual 

allegations that are taken as true [] plausibly suggest an 

entitlement to relief, such that it is not unfair to require the 

opposing party to be subjected to the expense of discovery and 

continued litigation." Starr, 652 F.3d at 1216. Defendant has met 

neither of these requirements; thus, plaintiffs' motion to dismiss 

defendant's invalidity claims under Section 103 and Section 112 of 

the Patent Act is granted. 

III. Inequitable Conduct Claim 

Finally, defendant brings an inequitable conduct counterclaim, 

seeking a declaration that the '386 and '440 patents are 

unenforceable due to inequitable conduct that occurred during patent 

prosecution. Defendant alleges plaintiff Daniel Tanner, individually 

and through his counsel, failed to disclose to the U.S. Patent and 

Trademark Office (nPTO") that he was selling products, namely the 

Tannerite®-brand binary exploding rifle targets that practice the 

claims of the '386 and '440 patents, or at least practice the '386 

and '440 claims if used by consumers as intended, more than one year 

prior to the effective filing date of the patents. As a result, 

defendant maintains plaintiffs violated the on-sale bar limitation 

on patentability under Section 102 of the Patent Act. Def.'s Am. 

Answer <JI<JI 118-19. Furthermore, defendant alleges that plaintiff 

Page 10 - OPINION AND ORDER 
Daniel Tanner and his legal counsel knew that the patents-in-suit 

would be invalid based on this information and willfully chose to 

deceive the PTO and the Examiner. Id. at ~~ 123-27. 

Plaintiffs argue defendant has not alleged facts to support its 

allegation that plaintiffs made false statements to the PTO that 

were material to the prosecution of the patents-in-suit, nor alleged 

facts permitting a plausible inference that information was withheld 

by plaintiffs with the specific intent to defraud the PTO. 

Inequitable conduct is an equitable defense to patent 

infringement involving egregious misconduct that if proved, bars 

enforcement of a patent. Therasense, Inc. v. Becton, Dickinson & 

Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011) (discussing the trio of 

unclean hands cases of Keystone, Hazel-Atlas, and Precision from 

which the doctrine evolved). Unlike other patent infringement 

defenses, such as invalidity which is claim specific, inequitable 

conduct regarding any single claim renders the entire patent 

unenforceable. Id. at 1288. Courts recognized the problems created 

by the expansion and overuse of the inequitable conduct doctrine and 

narrowed the scope in which the defense is applicable to incidences 

of truly egregious conduct. Id. at 1285. 

To prevail on an inequitable conduct claim, a defendant must 

prove: ~(1) an individual associated with the filing and prosecution 

of a patent application made an affirmative misrepresentation of a 

material fact, failed to disclose material information, or submitted 

false material information; and (2) the individual did so with a 

specific intent to deceive the PTO." Cypress Semiconductor Corp. v. 

Page 11 - OPINION AND ORDER 
GSI Tech., Inc., No. 13-CV-02013-JST, 2014 WL 988915, at *2 (N.D. 

Cal. Mar. 10, 2014) (quoting Exergen Corp. v. Wal-Mart Stores, Inc., 

575 F. 3d 1312, 1327 n.3 (Fed. Cir. 2009)); Therasense, Inc., 649 

F.3d at 1287. 

The circumstances of inequitable conduct must be plead in 

accordance with the heightened pleading standard of Fed. R. Civ. P. 

9(b). Thus, the pleading must "identify the specific who, what, 

when, where, and how of the material misrepresentation or omission 

committed before the PTO." Exergen Corp., 575 F.3d at 1328. In 

addition, the pleading must include "sufficient allegations of 

underlying facts from which a court may reasonably infer that a 

specific individual (1) knew of the withheld material information 

or of the falsity of the material misrepresentation, and ( 2) 

withheld or misrepresented this information with a specific intent 

to deceive the PTO." Id. at 1328-29. 

Defendant alleges: "Daniel Tanner, individually and through his 

counsel, failed to disclose to the [PTO] that he, either directly 

or through his company, was selling products that practice, or whose 

use by consumers as intended practices, the claims of the '38 6 

patent and the '440 patent, namely Tannerite-brand binary exploding 

rifle targets, more than one-year prior to the effective filing date 

of the Patents-In-Suit." Def.'s Am. Answer en 118. Defendant further 

asserts that plaintiff Daniel Tanner knowingly failed to disclose 

to the PTO and Examiner that more than one-year prior to filing, he 

sold Tanneri te-brand targets, which he knew violated the on-sale bar 

limitation under Section 102. Id. en 119, 121-22. Specifically, 

Page 12 - OPINION AND ORDER 
defendant alleges that plaintiff Daniel Tanner had the requisite 

knowledge because he represented in his trademark application that 

the Tannerite mark had been in use on or in connection with his 

binary exploding rifle targets since in 1996. Id. ~ 121. Further, 

a June 2000 advertisement in Shotgun News conveyed that Tannerite 

Exploding Rifle Targets explode when shot with a center-fire rifle. 

Id. ~ 122. Finally, defendant maintains that when asked by the 

Examiner whether competitors were selling exploding targets prior 

to October 17, 2002, plaintiff Daniel Tanner's attorney represented 

that he was unaware of any competitor or references selling 

exploding targets having the features of the present claims, and 

further deceived the PTO during the prosecution process by 

representing that plaintiff Daniel Tanner's prior art did not 

contemplate exploding the target with a center-fire round, in order 

to overcome the cited prior art. Id. ~ 124-25. 

Plaintiffs maintain that defendant's claim fails to meet the 

heightened Rule 9(b) pleading standard because it does not allege 

facts sufficient to permit a reasonable inference that a particular 

individual both knew of the information being withheld and did so 

with the requisite scienter. Plaintiffs further contend that 

defendant failed to plead facts alleging the who, what, when, where, 

and how requirements of an inequitable conduct claim. 

The Court finds the facts defendant alleges to support its 

counterclaim are insufficient to state a claim that is plausible on 

its face; rather, the facts plead support a reasonable inference 

that plaintiffs and counsel did not fail to make required 

Page 13 - OPINION AND ORDER 
disclosures, and importantly, did not omit information with the 

specific intent to deceive the PTO. 

First, defendant's primary argument hinges on the allegation 

that plaintiffs sold the binary, user-mixed targets one year or more 

prior to the effective filing date, August 20, 2001. However, even 

viewing the facts in the light most favorable to defendant, the 

Court is persuaded by the reasonable explanation that the June 2000 

advertisement in Shotgun News referred to premixed targets, rather 

than the binary, user-mixed targets at issue in this case. In other 

words, the targets advertised did not have the same claim terms and 

limitations as the patents-in-suit, rendering defendant's allegation 

that plaintiffs sold user-mixed targets more than one year prior to 

the effective filing date insufficient to state a claim for relief. 

Second, defendant does not allege sufficient facts to support 

its claims that plaintiffs' use of the brand-name Tannerite in 1996 

actually referred to the binary, user-mixed targets; rather, the 

most reasonable inference drawn from the facts plead is that 

plaintiff developed the binary product later. Furthermore, defendant 

has not identified any specific sale or public use to support the 

allegation that the products were sold more than one year prior to 

the effective filing date. 

Finally, defendant has failed to plead sufficient facts to 

support the conclusion that the sole reason the patent Examiner 

allowed the patented claims was because he did not know about the 

potential prior art of the "center-fire rifle bullet" limitation. 

The Court finds defendant failed to plead facts sufficient to 

Page 14 - OPINION AND ORDER 
meet the elements of an inequitable conduct claim. Moreover, an 

inference that plaintiffs specifically intended to deceive the PTO 

is not the single most reasonable inference to explain the nondisclosure that defendant alleges occurred during the patent 

prosecution. Thera sense, Inc. , 64 9 F. 3d at 12 90-91 (". when 

there are multiple reasonable inferences that may be drawn, intent 

to deceive cannot be found."). Therefore, plaintiffs' motion to 

dismiss defendant's inequitable conduct claim is granted. 

CONCLUSION 

For the reasons set forth above, plaintiffs' motion to dismiss 

defendant's counterclaims (doc. 32) is GRANTED in part and DENIED 

in part. Leave to amend defendant's counterclaims should be filed 

within 20 days of the date of this Opinion and Order and include the 

amendments defendant proposes. 

IT IS SO ORDEEED. 

Dated 

/ '/1{_. this~· day of October 2015. 

Ann Aiken 

United States District Judge 

Page 15 - OPINION AND ORDER