Lumos Technology Co., Ltd. v. Jedmed Instrument Company

Filing 58

MEMORANDUM OPINION AND ORDER.....Lumoss January 11, 2017 motion to strike JEDMEDs sixth affirmative defense of inequitable conduct is denied. (Signed by Judge Denise L. Cote on 4/10/2017) (gr)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-------------------------------------- X
:
LUMOS TECHNOLOGY CO., LTD.,
:
:
Plaintiff,
:
:
-v:
:
JEDMED INSTRUMENT COMPANY,
:
:
Defendant.
:
:
-------------------------------------- X
APPEARANCES

16cv6939(DLC)
MEMORANDUM OPINION
AND ORDER

For Lumos Technology Co., LTD.:
Grace L. Pan
Holland & Knight LLP
31 West 52nd Street
New York, New York 10019
For JEDMED Instrument Company:
Darren M. Geliebter
Eric J. Huang
Lombard & Geliebter LLP
305 Broadway, 7th Floor
New York, New York 10007
DENISE COTE, District Judge:
Plaintiff Lumos Technology Co., LTD. (“Lumos”) brings this
action alleging that the defendant JEDMED Instrument Company
(“JEDMED”) infringed one of its patents -- United States Patent
No. 8,746,906 (“the ‘906 Patent”) -- in violation of the Patent
Act, 35 § U.S.C. 1 et seq.

The ‘906 Patent, entitled “Light

Source Module for Macro Photography,” describes a selfilluminating digital imaging device with a barrel, a contact
unit, and a lighting unit for macro photography.

Lumos has

moved to strike JEDMED’s sixth affirmative defense of
inequitable conduct.

For the following reasons, Lumos’s motion

is denied.
DISCUSSION
Under Fed. R. Civ. P. 12(f), courts “may strike from a
pleading an insufficient defense or any redundant, immaterial,
impertinent, or scandalous matter.”

Fed. R. Civ. P. 12.

Rule

12(f) motions to strike are disfavored, as the Second Circuit
has explained:
A motion to strike an affirmative defense under Rule
12(f), Fed. R. Civ. P. for legal insufficiency is not
favored and will not be granted unless it appears to a
certainty that plaintiffs would succeed despite any
state of the facts which could be proved in support of
the defense. Moreover, even when the facts are not
disputed, several courts have noted that a motion to
strike for insufficiency was never intended to furnish
an opportunity for the determination of disputed and
substantial questions of law. This is particularly so
when . . . there has been no significant discovery.
William Z. Salcer, Panfeld, Edelman v. Envicon Equities Corp.,
744 F.2d 935, 939 (2d Cir. 1984) (citation omitted), vacated on
other grounds, 478 U.S. 1015 (1986).
To prove inequitable conduct, “the accused infringer must
prove that the applicant misrepresented or omitted material
information with the specific intent to deceive” the United
States Patent and Trademark Office (“PTO”).

Therasense, Inc. v.

Becton, Dickinson & Co., 649 F.3d 1276, 1287 (Fed. Cir. 2011).
In cases involving the nondisclosure of reference material, “the
2

accused infringer must prove by clear and convincing evidence
that the applicant knew of the reference, knew that it was
material, and made a deliberate decision to withhold it.”
at 1290.

Id.

Because direct evidence of deceptive intent is rare,

courts may infer a specific intent to deceive from indirect and
circumstantial evidence.

Id.

Because claims of inequitable conduct sound in fraud, they
must satisfy the heightened pleading requirements of Fed. R.
Civ. P. 9(b).

Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d

1312, 1326 (Fed. Cir. 2009).

“A pleading that simply avers the

substantive elements of inequitable conduct, without setting
forth the particularized factual bases for the allegation, does
not satisfy Rule 9(b).”

Id. at 1326-27.

Rather, the pleading

must identify “the specific who, what, when, where, and how of
the material misrepresentation or omission committed before the
PTO.”

Id. at 1327.

Although knowledge and intent may be

averred generally, pleadings 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 or of
the falsity of the material misrepresentation, and (2) withheld
or misrepresented this information with a specific intent to
deceive the PTO.”

Id. at 1328-29.

3

Lumos fails to meet the stringent standard to prevail on a
motion to strike.

JEDMED alleges that Lumos employees including

the inventor of the ‘906 Patent, Chih-Yi Yang, knowingly failed
to disclose information material to the prosecution of the ‘906
Patent, intending to deceive the PTO.

Lumos asserts that Yang

disclosed the relevant information during the prosecution of a
related Lumos patent on which he is also the named inventor,
United States Patent No. 8,594,495 (“the ‘495 Patent”), but
failed to disclose the information during the prosecution of the
‘906 Patent.

Yang also failed to disclose information relied

upon by the examiner of the ‘495 Patent in rejecting certain
claims in Lumos’s application for the ‘495 Patent even though
those claims were substantially similar to its claims in the
‘906 Patent.

In its almost six page assertion of inequitable

conduct, JEDMED pleads the elements of the defense and states
the “who, what, when, where, and how” of the allegedly
inequitable conduct with particularity.
Lumos argues that JEDMED’s assertion of a specific intent
to deceive “on information and belief” is inadequate under Rule
9(b).

JEDMED adequately pleads intent, which can be inferred

through the particularized pleadings described above.
Lumos relies on Exergen, in which the Federal Circuit
struck an inequitable conduct defense pleading that was
deficient not only in its allegations of scienter but also in
4

regard to the requirement that it plead with particularity the
other elements of its claim.

Exergen, 575 F.3d at 1329.

Here,

JEDMED alleges a number of facts, which taken together, support
a reasonable inference that Yang specifically intended to
deceive the PTO.
Lumos also argues that JEDMED cannot plead materiality
because the omitted information appears in the file history for
the ‘906 Patent.

The parties debate the significance of the

references in the file history to the inequitable conduct claim.
Given this debate, it is premature to strike JEDMED’s
inequitable conduct defense on this ground.
CONCLUSION
Lumos’s January 11, 2017 motion to strike JEDMED’s sixth
affirmative defense of inequitable conduct is denied.
Dated:

New York, New York
April 10, 2017
________________________________
DENISE COTE
United States District Judge

5