Gen-Probe Incorporated v. Becton Dickinson and Company

Filing 563

ORDER Denying Gen-Probe's 482 Motions to Strike and Dismiss Becton Dickinson's First Amended Answers and Counterclaims. Signed by Judge Roger T. Benitez on 10/30/2012. (knb)(jrd)

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OEPUTY

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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Plaintiff,

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CASE NO. 09-CV-2319 BEN (NLS)
1O-CV-0602 BEN (NLS)

GEN-PROBE INCORPORATED,

ORDER DENYING GEN-PROBE'S
MOTIONS TO STRIKE AND
DISMISS BECTON DICKINSON'S
FIRST AMENDED ANSWERS
AND COUNTERCLAIMS

vs.

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BECTON, DICKINSON AND COMPANY,

[ECF No. 482]

Defendant.

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INTRODUCTION
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On August 23, 2012, Defendant Becton Dickinson and Company ("BD") filed its First
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Amended Answer and Counterclaims ("Countercl.") in its patent dispute with Plaintiff Gen-Probe
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Incorporated. ECF Nos. 460, 461.1 Gen-Probe now moves to dismiss and strike BD's counterclaims

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and affirmative defenses related to inequitable conduct. ECF No. 482. The Court heard oral argument

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on October 15,2012. The thrust ofOen-Probe's motion is that BD failed to allege inequitable conduct
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with particularity as required by Rule 9(b) of the Federal Rules of Civil Procedure. The Court
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1 BD filed an Amended Answer and Counterclaims in this case as well as in the consolidated
case, Case No. 1O-cv-0602. The filings are substantively similar. Oen-Probe moves to dismiss count
eight ofBD's Amended Counterclaim in Case No. 09-cv-2319 and count five in Case No.1 0-cv-0602
case. Oen-Probe also moves to strike BD's thirteenth affirmative defense in Case No. 09-cv-2319 and
its tenth affirmative defense in Case No.1 0-cv-0602. Page references in this orderreferto BD's filing
in Case No. 09-cv-2319.

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1 disagrees. For the reasons stated below, Oen-Probe's motion is DENIED.
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BACKGROUND

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Oen-Probe brought a patent infringement action alleging that BD infringes its "Automation"

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and "Cap" patents. The Automation Patents describe an automated method for nucleic acid-based

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testing. Oen-Probe accuses BD of infringing on its patents through the use and sale of the VIPER

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XTR and BD Max, BD's automated testing instruments. On September 28, 2012, the Court resolved

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several pending motions. ECF No. 491. Among other things, the Court granted partial summary

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In its First Amended Answers and Counterclaims, BD asserts that the Automation Patents are
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unenforceable due to Gen-Probe's inequitable conduct during prosecution. Countercl.

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alleges that Mr. Mark Toukan, a contractor, contributed to the methods claimed in those patents, in

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part, by designing a luminometer module. Id

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learned of Mr. Toukan's contributions, and after failing to acquire his ownership rights, intentionally

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hid his contributions from the United States Patent & Trademark Office ("PTa"). Id

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153, 169, 185, 201.

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misrepresenting in various "terminal disclaimers" that it was the sole owner ofthe patents to overcome

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non-final PTa rejections on the ground obviousness-type double patenting. Id

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68, 199-200,211. BD asserts that' the PTa would never have issued the patents had Oen-Probe

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submitted accurate information regarding inventorship and ownership. Id ~~ 138-39, 154-55, 170-71.

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Although BD names two of Gen-Probe's attorneys in its filing, it directs some accusations to simply

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"Oen-Probe" and "Oen-Probe and its attorneys."

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16. BD

21-47,66. It alleges that Gen-Probe's attorneys

ft 87-89, 137,

BD also contends that Oen-Probe engaged in inequitable conduct by

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136, 151-52, 167­

DISCUSSION

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"A motion to dismiss under Federal Rule ofCivil Procedure 12(b)(6) for failure to state a claim

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upon which relief can be granted tests the legal sufficiency of a claim." Conservation Force v.

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Salazar, 646 F.3d 1240, 1241-42 (9th Cir. 2011 ) (citation and quotation marks omitted). Dismissal

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is appropriate if, taking all factual allegations as true, the complaint fails to state a plausible claim for

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relief on its face. Bell Atl. Corp. v. Twombly, 550 U.S. 544,556-57 (2007); see also Ashcroft v. Iqbal,

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556 U.S. 662, 678 (2009) (requiring plaintiff to plead factual content that provides "more than a sheer

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1 possibility that a defendant has acted unlawfully"). Rule 12(f) permits a court to "strike from a
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pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter."

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The inequitable conduct defense to patent infringement has two elements: "(1) an individual

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associated with the filing and prosecution of a patent application made an affirmative

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misrepresentation ofa material fact, failed to disclose material information, or submitted false material

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information; and (2) the individual did so with the specific intent to deceive the PTO." Exergen Corp.

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v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 n.3 (Fed. Cir. 2009). The defense must be pled with

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particularity under Rule 9(b). Id. at 1326. That means a pleading must identify "the specific who,

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what, when, where, and how of the material misrepresentation or omission committed before the

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PTO." Id at 1328. In addition, it must include "sufficient allegations ofunderlying facts from which

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a court may reasonably infer that a specific individual (1) knew ofthe withheld material information

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or ofthe falsity ofthe material misrepresentation, and (2) withheld or misrepresented this information

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with a specific intent to deceive the PTO." Id at 1328-29.

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Materiality in this context typically means "but for" materiality, although the Federal Circuit

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has carved out an exception for "affirmative egregious misconduct," such as the filing of an

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"unmistakably false affidavit." Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1291-92

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(Fed. Cir. 2011). Under the "but for" standard, "[m]ere claims that the PTO would not have granted

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the patent had it known ofthe omission or misrepresentation are insufficient." Human Genome Scis.,

19 Inc. v. Genentech, Inc., Case No. ll-cv-6519, 2011 U.S. Dist. LEXIS 153834, at *13 (C.D. Cal. Dec.
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9,2011). "Instead, the accused infringer must identify some fact that would make it plausible that the

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PTO would not have granted the patent but-for the misrepresentation." Id

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Gen-Probe argues that BD's pleading falls short in two respects: (1) it fails to specifically

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identify who engaged in the inequitable conduct, and (2) it fails to adequately plead that any omissions

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or misstatements were material. With respect to the "who" requirement, Gen-Probe asserts that

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allegations against entities such as "Gen-Probe" and "Gen-Probe and its attorneys," rather than specific

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people, lack the requisite particularity. The Court accepts BD's representation at the October 15,2012

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hearing that all of its allegations are directed at the two attorneys named in the pleading and that

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additional references to "Gen-Probe" are mere shorthand for those individuals. Subject to that

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limitation, BD's pleading is sufficient.

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BD has adequately pled "materiality" as well. In Therasense, the Federal Circuit held that

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"[w]hen an applicant fails to disclose prior art to the PTO, that prior art is but-for material ifthe PTO

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would not have allowed the claim had it been aware ofthe undisclosed prior art," 649 F.3d at 1291.

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BD has alleged inequitable conduct of a slightly different sort, one in which there is less ambiguity

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about the omission's effect on patent issuance. Ultimately, non-disclosure of a reference may have

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no effect on an examiner's decision whether to allow a claim, but "[e]xaminers are required to reject

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applications under 35 U.S.C. § 102(f) on the basis of improper inventorship," PerSeptive Biosystems,

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Inc. v. PharmaciaBiotech, Inc., 225 F.3d 1315,1321 (Fed. CiT. 2000)(emphasisadded). Giventhis

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statutory constraint and BD's factual allegations of Mr. Toukan' s contributions, it is plausible that the

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PTO would not have granted the patents absent Gen-Probe's misrepresentations. That is because

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inventorship is "a critical requirement for obtaining a patent." Id. at 1321; TecSec, Inc. v. Int'l Bus.

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Mach. Grp., 763 F. Supp. 2d 800, 811 (B.D. Va. 2011) ("The proper inventorship of a claimed

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invention is highly material to patentability, and misrepresentations regarding inventorship, if true,

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could easily render a patent unenforceable due to inequitable conduct."). Accordingly, BD's pleading

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is adequate at this stage of litigation. The Court need not decide whether Gen-Probe's alleged

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For the reasons stated above, the court DENIES Gen-Probe's motion to dismiss count eight

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ofBD's Amended Counterclaim in Case No. 09-cv-2319 and count five in Case No.1 0-cv-0602. The

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Court also DENIES Gen-Probe's motion to strike BD's thirteenth affirmative defense in Case No. 09­

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cv-2319 and its tenth affirmative defense in Case No. 10-cv-0602.

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IT IS SO ORDERED.
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DATED:

Octobe~2012

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