Transtex Composite, Inc. v. Laydon Composites, LTD
Filing
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MEMORANDUM OPINION AND ORDER denying 25 Motion for Judgment on the Pleadings; denying 25 Motion to Strike. Signed by Judge Jennifer B. Coffman on 12/3/12. cc:counsel (JBM)
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF KENTUCKY
LOUISVILLE DIVISION
CIVIL ACTION NO. 12-150-C
TRANSTEX COMPOSITE, INC.,
V.
PLAINTIFF,
MEMORANDUM OPINION AND ORDER
LAYDON COMPOSITES, LTD,
DEFENDANT.
**********
This matter is before the court on the motion of Transtex Composite, Inc.,
for judgment on the pleadings and motion to strike (R. 25). Transtex moves for
judgment on the pleadings with regard to Laydon’s inequitable conduct claims, on
the ground that Laydon’s assertions are insufficient to support a claim of
inequitable conduct as a matter of law. Transtex also moves the court to strike
Laydon’s first affirmative defense, that Transtex’s complaint fails to set forth a
claim upon which relief can be granted, on the ground that it is a conclusory
statement. Because Laydon’s inequitable conduct claims and first affirmative
defense are properly pled pursuant to the Federal Rules of Civil Procedure and the
applicable standards, the court will deny Transtex’s motions.
Laydon’s inequitable conduct claim is pled with sufficient particularity to
survive Transtex’s motion for judgment on the pleadings. The court considers a
Rule 12(c) motion under the same standards as a motion under FED. R. CIV. P.
12(b)(6): Laydon must include in its pleading “factual content that allows the court
to draw the reasonable inference that [Transtex] is liable for the misconduct
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alleged.” HDC, LLC v. City of Ann Arbor, 675 F.3d 608, 611 (6th Cir. 2012).
Furthermore, a claim of inequitable conduct must be pled with particularity
pursuant to FED. R. CIV. P. 9(b):
[T]o plead the “circumstances” of inequitable conduct with the
requisite “particularity” under Rule 9(b), the pleading must identify the
specific who, what, when, where, and how of the material
misrepresentation or omission committed before the [Patent &
Trademark Office (“PTO”)]. Moreover, although “knowledge” and
“intent” may be avowed generally, a pleading of inequitable conduct
under Rule 9(b) 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 . . ., and (2) withheld . . .
this information with a specific intent to deceive the PTO.
Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1328-1329.
In its answer and counterclaim, Laydon sufficiently asserts a claim of
inequitable conduct against Transtex. It asserts that Mathieu Boivin, the named
inventor on Transtex’s ‘475 and ‘468 patents, was aware of Laydon’s Classic
trailer skirt prior to filing his applications, and that so knowing he intentionally
failed to disclose to the PTO that the Classic trailer skirt utilizes a resilient strut.
Laydon further asserts that but for that omission, the PTO would not have granted
the ‘475 and ‘468 patents that are grounded on Transtex’s resilient struts. The
court accepts these well-pleaded material allegations of the non-movant as true for
purposes of the present motion, and under these facts, Transtex is not clearly
entitled to judgment, see Tucker v. Middleburg-Legacy Place, 539 F.3d 545, 549
(6th Cir. 2008), and is sufficiently notified of the grounds for Laydon’s claims.
In considering a judgment on the pleadings, even under this highly specific
and heightened pleading standard, the court determines only whether Transtex is
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given sufficient notice of the basis for Laydon’s inequitable conduct claims, and
may not weigh the merits of those claims. See Somanetics Corp. v. CAS Med.
Sys. Inc., No. 09-131110, 2010 WL 2178836, *4 (E.D. Mich. May 26, 2010);
Bayer Cropsciences AG v. Dow Agrosciences LLC, No. 10-1045, 2012 WL
1253047, *3 (D. Del. Apr. 12, 2012). For instance, the court does not determine,
for purposes of the present motion, whether Laydon’s Classic trailer skirt features a
resilient strut, or whether the Classic trailer skirt was material to Transtex’s patent
applications. That the court has determined, in the context of denying Transtex’s
motion for preliminary injunction, that Laydon’s Classic skirt is not resilient does
not control, see Transonic Sys., Inc., v. Non-Invasive Med. Tech. Corp., 75 Fed
App’x 765, 774 (Fed. Cir. 2003), nor does it even factor into the analysis required
in this context. Transtex’s argument that the court should hold Laydon’s pleadings
to the merits standard announced in Therasense, Inc. v. Becton, Dickinson & Co.,
649 F.3d 1276, 1291 (Fed. Cir. 2011)(en banc) would require the court to
inappropriately apply a summary judgment standard – the court cannot determine
at this stage, without reaching the merits of the claims, whether Transtex’s patents
would not have been allowed but for its alleged withholding of Laydon’s Classic
skirt from the PTO. Accordingly, utilizing the proper standard, Laydon has pled
sufficient “factual content that allows the court to draw the reasonable inference
that the defendant is liable for the misconduct alleged,” HDC, LLC at 611, and
those allegations are pled with sufficient particularity to meet the heightened
pleading standards of Rule 9(b) pursuant to Exergen. Thus, the court will deny
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Transtex’s motion for judgment on the pleadings as to Laydon’s inequitable
conduct claims.
With regard to Transtex’s second motion, the court will not strike Laydon’s
affirmative defense that Transtex’s complaint fails to state a claim upon which
relief can be granted. Fed. R. Civ. P. 12(h)(2) expressly authorizes a party to
include such a defense in a pleading. See Dynasty Apparel Indus. Inc. v. Rentz,
206 F.R.D. 603, 607 (S.D. Ohio 2002). That statement in Laydon’s answer gives
Transtex fair notice of Laydon’s affirmative defense, and Transtex has not argued,
other than in a conclusory manner, that it will suffer prejudice if the defense is
allowed to stand. The court will therefore not strike the defense.
Accordingly,
IT IS ORDERED that Transtex’s motions (R. 25) are DENIED.
Signed on December 3, 2012
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