Elm 3DS Innovations LLC v. Micron Technology Inc. et al

Filing 37

MEMORANDUM ORDER re 27 MOTION to Strike Micron's Ninth Affirmative Defense filed by Elm 3DS Innovations LLC is GRANTED. Signed by Judge Leonard P. Stark on 8/10/15. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
.ELM JDS INNOVATIONS, LLC,
Plaintiff,
v.

MICRON TECHNOLOGY, INC.,
MICRON SEMICONDUCTOR
PRODUCTS, INC, and MICRON .
CONSUMER PRODUCTS GROUP,
INC.,

C.A. No. 14-1431-LPS

Defendants.
MEMORANDUM ORDER

At Wilmington this 10th day of August, 2015:
Having reviewed the parties' letter briefs (D.,L 28, 29, 32) and associated materials filed
with respect to Elm 3DS Innovations, LLC's ("Plaintiff') Motion to Strike Micron's Ninth
Affirmative Defense (D.I. 27) ("Motion"), IT IS HEREBY ORDERED that Plaintiffs Motion
is GRANTED, for the reasons stated below.
1.

On May 21, 2015, Plaintiff moved to strike Micron Technology, Inc., Micron

Semiconductor Products, Inc., and Micron Consumer Products Group, Inc.' s ("Defendants")
Ninth Affirmative Defense in their Answer (D.I. 24), which alleges that U.S. Patent No.
8,791,581 (the "'581 patent") is "unenforceable due to Plaintiff's inequitable conduct ...." (D.I.
24 at 25) Specifically, Defendants argue that the claims of the '581 patent would not have been
granted but for the failure of the '581 patent's inventor and prosecuting attorney to disclose
information related to Interference No. 105,859. (the "Interference"), which involved U.S. Patent

1

Application No. 10/143,200 (the "'200 application") and U.S. Patent No. 6,236,602. (Id. at 27)
2.

Accepting as true all factual allegations in Defendants' inequitable conduct

pleading, the Court nevertheless agrees with Plaintiff that "the interference proceeding at issue
was not material to the patentability of the '5 81 patent" and, therefore, that Defendants'
inequitable conduct defense is not plausible, since it is based solely on Plaintiff's alleged failure
to disclose information related to the Interference. (See D.I. 28 at 1)
3.

The '581 patent claims priority to an application that in tum claims priority to the

-' 200 application; Defendants argue that certain claims of the '5 81 patent recite the -same or
similar subject matter covered by the count of the Interference. (D .I. 24 at 2 7, 31-32)
Defendants further argue that the Interference concluded with a determination by the Board of
Patent Appeals and Interferences ("BP AI") that the subject matter of the '200 application was
invented "by another" - from which it follows, allegedly, that the subject matter of the '581
patent was also invented by another. (Id. at 32) Additionally, Defendants contend that this
determination was material and purposefully withheld from the Patent Office .. (Id. at 32, 35)
4.

However, Defendants' characterization of what the BPAI determined is

inaccurate. (See D.I. 28-1) The BPAI terminated the Interference without making any
determination of priority. (Id. at 13) The BP AI instead determined that the Interference was
''barred under 35 U.S.C. § 135(b)(1 ),"which is a "statute ofrepose" requiring interference claims
to be brought within one year of issuance of the claims that an inventor wishes to claim as his or
her own. (Id. at 13; D.I. 28 at 3). More specifically, the Interference was terminated because the
claims at issue from the '200 application were materially altered after expiration of the one-year
window during which an interference could have been declared. (D .I. 28-1 at 10-11) Thus, the

2

BP AI terminated the Interference before making any determination of whether the subject matter
of the '581 patent was invented by another. Therefore, the Interference had no relevance to the
patentability of the '581 patent. 1

IT IS FURTHER ORDERED that the parties' joint request for a teleconference (D.I.
33) regarding Plaintiffs Motion is DENIED as moot in light of the Court's foregoing Order.

r~~,~

HON. L~ONARD P. STARK
U.S. DISTRICT COURT JUDGE

1

Documents relating to the Interference are in the record, Defendants' inequitable conduct
defense is predicated on the BPAI' s determination, and the import of that determination does not
appear to present a disputed question of fact. It is likely for one or more of these reasons that no
party has objected to the Court considering the Interference materials as part of its evaluation of
the motion to strike.
3