MARICAL INC et al v. COOKE AQUACULTURE INC et al
Filing
399
ORDER denying 360 Motion for Reconsideration. By MAGISTRATE JUDGE JOHN C. NIVISON. (MFS)
UNITED STATES DISTRICT COURT
DISTRICT OF MAINE
MARICAL, INC., et al.,
)
)
Plaintiffs
)
)
v.
)
)
COOKE AQUACULTURE, INC., et al., )
)
Defendants
)
1:14-cv-00366-JDL
DECISION AND ORDER ON DEFENDANTS’
MOTION FOR RECONSIDERATION
On July 31, 2017, the Court granted Defendants’ Motion for Leave to Amend Their
Answer (Motion, ECF No. 214), to permit Defendants to add an affirmative defense and
supplement their counterclaim to allege that the four patents-in-suit are unenforceable
under the doctrines of inequitable conduct and infectious unenforceability. (Decision and
Order, ECF No. 282; Order [Overruling Objection], ECF No. 329.) Specifically, the Court
permitted Defendants to assert a claim of inequitable conduct related to the tryptophan
content in prior art fish feed, but not related to the sodium chloride content in prior art feed.
The matter is before the Court on Defendants’ Motion for Reconsideration. (ECF
No. 360.) The Court denies Defendants’ motion.
BACKGROUND1
On March 24, 2002, a patent examiner with the United States Patent Office (PTO)
rejected all pending claims under the judicially created doctrine of nonstatutory double
patenting, citing prior patent number 6,337,391, and explained that “the claims if allowed,
would improperly extend the ‘right to exclude’ already granted in the [‘391] patent.”
(Proposed Am. Ans. ¶ 16; see also ECF No. 214-2.) Subsequently, Plaintiffs overcame the
office action, and secured the patents-in-suit, by explaining that the patents differed from
the ‘391 Patent because the newly claimed methods involved a “specially made feed”
containing NaCl and “at least one PolyValent Cation Sensing Receptor (PVCR) Modulator
(e.g., an amino acid),” which were teachings not disclosed in the ‘391 Patent. (ECF No.
214-4.)
Defendants sought leave to amend their answer to assert counterclaims of
inequitable conduct and infectious unenforceability, based on their contention that
Plaintiffs’ representation concerning the “specially made” nature of their feed was not
accurate. (Motion to Amend Answer, ECF No. 214.)
In its Decision and Order, the Court explained that it granted Defendants’ request
to amend to assert the inequitable conduct counterclaim based on tryptophan content
because of the potential finding that the failure to disclose nutritional “requirements”
related to the tryptophan content of salmon feed was a material nondisclosure, given that
the reference may have permitted the patent examiner to conclude that the “requirements”
1
The following background is a relatively brief summary of the issue. A more extensive overview is set
forth in the following Orders: Decision and Order on Defendants’ Motion to Amend Answer, ECF No. 282;
Decision and Order of Plaintiffs’ Motion for Reconsideration and Request for Clarification, ECF No. 309;
Order [Overruling Objection], ECF No. 329.
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of prior art salmon feed come within the amino acid limitation stated in the patent
applications.
The Court did not permit Defendants to amend the answer to assert the inequitable
conduct counterclaim based on sodium chloride content, however, because one of the
references disclosed by Plaintiffs was sufficient to inform the examiner of prior art teaching
sodium chloride additions to salmon feed within the sodium chloride limitation stated in
the patent applications.
In their amended answer and counterclaim, Defendants asserted:
“With respect to the patents-in-suit, all prior art feeds contained sodium
chloride.”
(Am. Compl., Defenses ¶ 32, Ninth Counterclaim ¶ 120, Tenth Counterclaim ¶ 140, ECF
No. 349.) In their response to the counterclaim, Plaintiffs stated:
“Plaintiffs are without knowledge or information sufficient to form a belief
as to the truth of the allegations in paragraph 32, and therefore deny the same.
…”
(Answer, ECF No. 350.)
According to Defendants, Plaintiffs’ response constitutes “new evidence” and thus
good cause to petition the Court to reconsider the decision to deny Defendants’ request to
assert an inequitable conduct claim based on the sodium chloride content of prior art feed.
Defendants’ contend reconsideration is warranted because Dr. William Harris, the lead
inventor of the patents-in-suit, testified that “all” prior art feeds contain some amount of
sodium chloride, and Plaintiffs did not admit that fact in response to Defendants’ allegation
in the counterclaim.
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DISCUSSION
To prevail on their motion for reconsideration, Defendants must demonstrate (1) the
existence of new evidence not previously available, (2) an intervening change in
controlling law, or (3) the need to correct a clear error of law or to prevent manifest
injustice. Int’l Ass’n of Machinists & Aerospace Workers v. Verso Corp., 121 F. Supp. 3d
201, 217 (D. Me. 2015). Even if Defendants cannot meet this standard, interlocutory orders
remain open pending final judgment and the Court therefore has “wide discretion” to revisit
prior interlocutory rulings. Mumme v. U.S. Dep’t of Labor, 150 F. Supp. 2d 162, 165 (D.
Me. 2001); see also Geffon v. Micrion Corp., 249 F.3d 29, 38 (1st Cir. 2001).
Defendants’ argument for reconsideration is unpersuasive. While Plaintiffs’
response to the counterclaim might generate questions as to whether Plaintiffs intend to
assert a different position than they asserted previously, the response does not constitute
new evidence regarding the substantive representation made during the patent process.
Plaintiffs’ answer regarding “all prior art feeds” thus is not new evidence. Furthermore,
while a Court may revisit a prior order based on a showing of changed circumstances,
David C. v. Leavitt, 242 F.3d 1206, 1210 (10th Cir. 2001), Plaintiff’s response does not
constitute a change that warrants reconsideration of the Court’s prior order. Instead, to the
extent Plaintiffs assert a position in motion practice or at trial that is inconsistent with
Plaintiffs’ prior position during the litigation, a prior order of the Court, or the premise of
any order of the Court, the Court can adequately address the issue (e.g., preclude Plaintiffs
from asserting the positon) if it arises. In short, Plaintiffs’ response does not warrant
reconsideration of the Court’s order on Defendants’ motion to amend.
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CONCLUSION
Based on the foregoing analysis, the Court denies Defendants’ Motion for
Reconsideration. (ECF No. 360.)
NOTICE
Any objections to this Decision and Order shall be filed in accordance with
Federal Rule of Civil Procedure 72.
/s/ John C. Nivison
U.S. Magistrate Judge
Dated this 6th day of November, 2018.
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