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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n 1 2 12 OCT 30 PM 3: 40 3 4 5 OEPUTY 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 Plaintiff, 12 13 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. 14 15 16 BECTON, DICKINSON AND COMPANY, [ECF No. 482] Defendant. 17 INTRODUCTION 18 On August 23, 2012, Defendant Becton Dickinson and Company ("BD") filed its First 19 Amended Answer and Counterclaims ("Countercl.") in its patent dispute with Plaintiff Gen-Probe 20 Incorporated. ECF Nos. 460, 461.1 Gen-Probe now moves to dismiss and strike BD's counterclaims 2] and affirmative defenses related to inequitable conduct. ECF No. 482. The Court heard oral argument 22 on October 15,2012. The thrust ofOen-Probe's motion is that BD failed to allege inequitable conduct 23 with particularity as required by Rule 9(b) of the Federal Rules of Civil Procedure. The Court 24 25 26 27 28 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. - 1- 09cv23 19 lOcv0602 1 disagrees. For the reasons stated below, Oen-Probe's motion is DENIED. 2 BACKGROUND 3 Oen-Probe brought a patent infringement action alleging that BD infringes its "Automation" 4 and "Cap" patents. The Automation Patents describe an automated method for nucleic acid-based 5 testing. Oen-Probe accuses BD of infringing on its patents through the use and sale of the VIPER 6 XTR and BD Max, BD's automated testing instruments. On September 28, 2012, the Court resolved 7 several pending motions. ECF No. 491. Among other things, the Court granted partial summary 8 judgment for Oen-Probe of direct literal infringement of sixteen Automation Patent claims. 9 In its First Amended Answers and Counterclaims, BD asserts that the Automation Patents are ~ 10 unenforceable due to Gen-Probe's inequitable conduct during prosecution. Countercl. 11 alleges that Mr. Mark Toukan, a contractor, contributed to the methods claimed in those patents, in 12 part, by designing a luminometer module. Id 13 learned of Mr. Toukan's contributions, and after failing to acquire his ownership rights, intentionally 14 hid his contributions from the United States Patent & Trademark Office ("PTa"). Id 15 153, 169, 185, 201. 16 misrepresenting in various "terminal disclaimers" that it was the sole owner ofthe patents to overcome 17 non-final PTa rejections on the ground obviousness-type double patenting. Id 18 68, 199-200,211. BD asserts that' the PTa would never have issued the patents had Oen-Probe 19 submitted accurate information regarding inventorship and ownership. Id ~~ 138-39, 154-55, 170-71. 20 Although BD names two of Gen-Probe's attorneys in its filing, it directs some accusations to simply 21 "Oen-Probe" and "Oen-Probe and its attorneys." 22 ~~ 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 ~~ 136, 151-52, 167­ DISCUSSION 23 "A motion to dismiss under Federal Rule ofCivil Procedure 12(b)(6) for failure to state a claim 24 upon which relief can be granted tests the legal sufficiency of a claim." Conservation Force v. 25 Salazar, 646 F.3d 1240, 1241-42 (9th Cir. 2011 ) (citation and quotation marks omitted). Dismissal 26 is appropriate if, taking all factual allegations as true, the complaint fails to state a plausible claim for 27 relief on its face. Bell Atl. Corp. v. Twombly, 550 U.S. 544,556-57 (2007); see also Ashcroft v. Iqbal, 28 556 U.S. 662, 678 (2009) (requiring plaintiff to plead factual content that provides "more than a sheer -2- 09cv2319 IOcv0602 1 possibility that a defendant has acted unlawfully"). Rule 12(f) permits a court to "strike from a 2 pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter." 3 The inequitable conduct defense to patent infringement has two elements: "(1) an individual 4 associated with the filing and prosecution of a patent application made an affirmative 5 misrepresentation ofa material fact, failed to disclose material information, or submitted false material 6 information; and (2) the individual did so with the specific intent to deceive the PTO." Exergen Corp. 7 v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 n.3 (Fed. Cir. 2009). The defense must be pled with 8 particularity under Rule 9(b). Id. at 1326. That means a pleading must identify "the specific who, 9 what, when, where, and how of the material misrepresentation or omission committed before the 10 PTO." Id at 1328. In addition, it must include "sufficient allegations ofunderlying facts from which 11 a court may reasonably infer that a specific individual (1) knew ofthe withheld material information 12 or ofthe falsity ofthe material misrepresentation, and (2) withheld or misrepresented this information 13 with a specific intent to deceive the PTO." Id at 1328-29. 14 Materiality in this context typically means "but for" materiality, although the Federal Circuit 15 has carved out an exception for "affirmative egregious misconduct," such as the filing of an 16 "unmistakably false affidavit." Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1291-92 17 (Fed. Cir. 2011). Under the "but for" standard, "[m]ere claims that the PTO would not have granted 18 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. 20 9,2011). "Instead, the accused infringer must identify some fact that would make it plausible that the 21 PTO would not have granted the patent but-for the misrepresentation." Id 22 Gen-Probe argues that BD's pleading falls short in two respects: (1) it fails to specifically 23 identify who engaged in the inequitable conduct, and (2) it fails to adequately plead that any omissions 24 or misstatements were material. With respect to the "who" requirement, Gen-Probe asserts that 25 allegations against entities such as "Gen-Probe" and "Gen-Probe and its attorneys," rather than specific 26 people, lack the requisite particularity. The Court accepts BD's representation at the October 15,2012 27 hearing that all of its allegations are directed at the two attorneys named in the pleading and that 28 additional references to "Gen-Probe" are mere shorthand for those individuals. Subject to that -3- 09cv2319 IOcv0602 1 limitation, BD's pleading is sufficient. 2 BD has adequately pled "materiality" as well. In Therasense, the Federal Circuit held that 3 "[w]hen an applicant fails to disclose prior art to the PTO, that prior art is but-for material ifthe PTO 4 would not have allowed the claim had it been aware ofthe undisclosed prior art," 649 F.3d at 1291. 5 BD has alleged inequitable conduct of a slightly different sort, one in which there is less ambiguity 6 about the omission's effect on patent issuance. Ultimately, non-disclosure of a reference may have 7 no effect on an examiner's decision whether to allow a claim, but "[e]xaminers are required to reject 8 applications under 35 U.S.C. § 102(f) on the basis of improper inventorship," PerSeptive Biosystems, 9 Inc. v. PharmaciaBiotech, Inc., 225 F.3d 1315,1321 (Fed. CiT. 2000)(emphasisadded). Giventhis 10 statutory constraint and BD's factual allegations of Mr. Toukan' s contributions, it is plausible that the 11 PTO would not have granted the patents absent Gen-Probe's misrepresentations. That is because 12 inventorship is "a critical requirement for obtaining a patent." Id. at 1321; TecSec, Inc. v. Int'l Bus. 13 Mach. Grp., 763 F. Supp. 2d 800, 811 (B.D. Va. 2011) ("The proper inventorship of a claimed 14 invention is highly material to patentability, and misrepresentations regarding inventorship, if true, 15 could easily render a patent unenforceable due to inequitable conduct."). Accordingly, BD's pleading 16 is adequate at this stage of litigation. The Court need not decide whether Gen-Probe's alleged 17 misconduct also constituted "affirmative egregious misconduct." 18 For the reasons stated above, the court DENIES Gen-Probe's motion to dismiss count eight 19 ofBD's Amended Counterclaim in Case No. 09-cv-2319 and count five in Case No.1 0-cv-0602. The 20 Court also DENIES Gen-Probe's motion to strike BD's thirteenth affirmative defense in Case No. 09­ 21 cv-2319 and its tenth affirmative defense in Case No. 10-cv-0602. 22 IT IS SO ORDERED. ~ 23 DATED: Octobe~2012 24 25 26 27 28 -4- 09cv2319 lOcv0602

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