Western Plastics, Inc. v. DuBose Strapping, Inc.

Filing 146

ORDER granting 141 Motion for Reconsideration. The parties shall conferand propose trial dates in July, September, and October 2019. The submission is due no later than March 15, 2019. The submission should include an estimate of the number of trial days needed. Signed by District Judge James C. Dever III on 2/28/2019. (Sellers, N.)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF NORIB CAROLINA
WESTERN DIVISION
No. S:15-CV-294-D
WESTERN PLASTICS, INC.,
Plaintiff,

v.

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DUBOSE STRAPPING, INC.,
Defendant

ORDER

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On October 9, 2018, Western. Plastics, Inc. ("WP") moved for reconsideration [D.E. 141]

concerning this court's order of September 25, 2018, and filed a memorandum in support [D.E. 142].
On November 13, 2018, DuBose Strapping, Inc. ("DuBose") responded in opposition in part [D.E.

144]. On November 16, 2018, WP replied [D.E. 145].
The court has considered WP's motion for reconsideration under the governing standard.
. See Am. Canoe Ass'n v. Murphy Farms, Inc., 326 F.3d SOS, 514--15 (4th Cir. 2003). As for WP's
argument concerning the best mode defense, DuBose's best mode defense is not available because
DuBose commenced this proceeding after the effective date of the America Invents Act concerning
the best mode defense. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, § 15, 125 Stat
284,328 (2011); ~ancy, Inc. v. Viatek Consumer Prods. Grj>., Inc., 138 F.. Supp. 3d 303,318
(S.D.N.Y. 2014). Accordingly, the court grants WP's motion for reconsideration concerning
DuBose's best mode defense.
As for WP's argument concerning inequitable conduct, "[t]o prevail on the defense of
inequitable conduct, the accused infringer must prove that the applicant misrepresented or omitted
material information with the specific intent to deceive the PTO." Therasense, Inc. v. Becton,

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Dickinson & Co.• 649 F.3d 1276, 1287 (Fed. Cir. 2011) (en bane). ''The accused infringer must
prove both elements-intent and materiality-by clear and convincing evidence." Id. "[T]o meet
the clear and convincing evidence standard; the specific intent to deceive must be the single most
reasonable inference able to be drawn from the evidence." Id. at 1290 (quotation omitted); see
Precision Fabrics (hp., Inc. v. Tietexlnt'l, Ltd., No. l:13-cv-645, l:14-cv-650, 2016 WL 6839394,
at *10 (M.D.N.C. Nov.21.2016) (unpublished). "[W]hen there are multiple reasonable inferences
that may be drawn, intent to deceive cannot be found." Therasense, Inc., 649 F.3d at 1290-91.
Viewing the evidence in the light most favorable to DuBose, DuBose has not shown that WP
acted with the specific intent to deceive by clear and convincing evidence. Cf. id. at 1289
(discussing the ''plague" of inequitable conduct defenses raised in patent infringement litigation).
DuBose has failed to show that the most reasonable inference that may be drawn from WP's conduct
is that WP intended to deceive the PTO. Even ifthe information that WP misrepresented or omitted
was material, without a showing by clear and convincing evidence that WP specifically intended to
deceive the PTO, there remains no genuine issue of material fact for trial. Accordingly. the court
grants WP's motion for reconsideration concerning inequitable conduct.
To the extent that DuBose rai,es new issues for reconsideration in its response brief, the court
declines to address such issues. DuBose has failed to show a clear error oflaw or manifest injustice
in this court's order. See Zinkand v. Brown, 478 F.3d 634,637 (4th Cir. 2007); Pac Ins. Co. v. Am.
Nat'l Fire Ins. Co.• 148 F.3d 396,403 (4th Cir. 1998).
In sum. WP's motion for reconsideration [D.E. 141] is GRANTED. The parties shall confer
and propose trial dates in July. September, and October 2019. The submission is due no later than
March 15, 2019. The submission should include an estimate of the number of trial days needed.

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SO ORDERED. This~ day of February 2019.

JSC.DEVERID

United States District Judge

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