JUNKER v. MEDICAL COMPONENTS, INC. et al

Filing 172

MEMORANDUM AND/OR OPINION. SIGNED BY HONORABLE MITCHELL S. GOLDBERG ON 12/21/16. 12/21/16 ENTERED AND COPIES E-MAILED.(mbh, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA
LARRY G. JUNKER,
Plaintiff,
v.
MEDICAL COMPONENTS, INC., et al.,
Defendants.

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CIVIL ACTION

No. 13-4606

Goldberg, J.

December 21, 2016
MEMORANDUM OPINION

Plaintiff, Larry Junker, has filed a one-count complaint for design patent infringement
against Defendants, Medical Components, Inc. and Martech Medical Products, Inc. (collectively,
“MedComp”). Plaintiff alleges that Defendants have violated 35 U.S.C. § 271, et seq. by selling
medical devices embodying Plaintiff’s patented invention registered with the United States
Patent and Trademark Office (“PTO”). Defendants raise various affirmative defenses in their
Third Amended Answer, and have included two counterclaims for invalidity (Count I) and noninfringement (Count II).
Before me is Plaintiff’s motion to dismiss Defendants’ third, ninth, and tenth affirmative
defenses, as well as Defendants’ first counterclaim for invalidity. For the reasons that follow,
Plaintiff’s motion will be granted in part and denied in part.

I.

FACTUAL AND PROCEDURAL BACKGROUND1
Plaintiff is the owner of U.S. Design Patent No. D450,839, entitled “Handle for

Introducer Sheath” (the “D’839 patent”). Plaintiff applied for this patent on February 7, 2000,
and the PTO issued the patent on November 20, 2001. Plaintiff applied for reissuance of the
D’839 patent on July 20, 2003. The PTO eventually re-examined the D’839 patent, and reissued
the patent to Plaintiff in 2008. (Defs.’ 3d Am. Answer, pp. 4–5.)
While not dispositive to the motion before me, the circumstances surrounding Plaintiff
initially obtaining the D‘839 patent were the subject of a prior lawsuit in the Northern District of
Texas, which reached the United States Court of Appeals for the Federal Circuit. See Junker v.
Eddings, 2004 WL 5552032 (N.D. Tex. Jan. 16, 2004); Junker v. Eddings, et al., 396 F.3d 1359
(Fed. Cir. 2005). In that case, Plaintiff sued Galt Medical Corp. (“Galt”); its President, James
Eddings (“Eddings”); and, Xentek Medical, Inc (“Xentek”) alleging, inter alia, design patent
infringement. The jury found that the D’839 patent was valid and willfully infringed by Galt, and
further found an absence of clear and convincing evidence to suggest that Junker was not the first
inventor of the design described in the D’839 patent. The Federal Circuit Court of Appeals
affirmed the jury’s verdict and the district court’s denial of Galt’s motion for judgment as a
matter of law. Junker, 396 F.3d at 1365.
Plaintiff filed the instant lawsuit on August 8, 2013. On February 26, 2015, toward the
end of discovery, Defendants filed a motion for leave to file a Third Amended Answer based on
newly discovered evidence. Defendants explained that evidence produced late in discovery
1

I will not consider any exhibits or outside information that would convert Plaintiff’s motion to dismiss into
one for summary judgment. See Fed. R. Civ. P. 12(d). Therefore, unless otherwise noted, the following facts
are derived from Defendants’ Third Amended Answer and Counterclaims. See PPG Indus., Inc. v. Generon
IGS, Inc., 760 F. Supp. 2d 520, 524 (W.D. Pa. 2011) (“Courts use the same standard in ruling on a motion to
dismiss a counterclaim under Federal Rule of Civil Procedure 12(b)(6) as they do for a complaint…. [Thus],
this Court must accept as true all of the allegations in the [Defendants’ counterclaims] and all reasonable
inferences that can be drawn therefrom, and view them in the light most favorable to the [Defendants].”)
(citations omitted).
2

contradicted Plaintiff’s assertion that he was the “sole inventor” of the D’839 patent, thus raising
issues that the patent was procured through fraud and/or inequitable conduct. Defendants sought
leave to include these allegations in a Third Amended Answer by way of both affirmative
defenses and an amended counterclaim for invalidity. (Defs.’ Mot. for Leave at 2, Ex. A.)
On May 20, 2015, the Honorable L. Felipe Restrepo granted in part Defendants’ motion
to amend. Judge Restrepo allowed Defendants to file a Third Amended Answer, which included
a ninth affirmative defense of inequitable conduct, and a tenth affirmative defense of fraud. (See
Doc. No. 137 ¶ 1(a) n.2.) Judge Restrepo also permitted Defendants to amend their first
counterclaim for invalidity, but only to the extent that Defendants sought to incorporate
allegations of fraud and inequitable conduct. Judge Restrepo expressly disallowed the inclusion
of any other allegations not pertaining to fraud or inequitable conduct.2 (Id. at ¶ 1(b) n.3.)
Judge Restrepo’s Order acknowledged that Plaintiff maintained the right to challenge the
legal sufficiency of Defendants’ newly-added allegations. (Id. at ¶ 1(e)). On June 15, 2015,
Plaintiff did just that—moving under Federal Rules of Civil Procedure 9 and 12 to dismiss
Defendants’ third, ninth, and tenth affirmative defenses, and first counterclaim for invalidity.
(Pl.’s Mot. to Dismiss 1). Plaintiff further requests dismissal of multiple footnotes added to
Defendants’ Third Amended Answer, which were not included in their proposed Third Amended
Answer attached to their motion for leave.
II.

LEGAL STANDARDS
Plaintiff does not specify which subsection of Rule 12 entitles him to dismissal of

Defendants’ affirmative defenses and first counterclaim. He asserts that the “only plausible
inference” that can be derived from Defendants’ allegations does not support a claim for either

2

For example, Judge Restrepo pointed out that Defendants sought to include allegations that Plaintiff had
admitted previously that certain elements of the invention were functional. (Doc. No. 137 ¶ 1(b) n.3.)
3

fraud or inequitable conduct. (Pl.’s Mot. to Dismiss 13). This phrasing suggests that he seeks
relief under Federal Rule of Civil Procedure 12(b)(6)—failure to state a claim upon which relief
can be granted. Nevertheless, with respect to their affirmative defenses, Defendants construe
Plaintiff’s filing as a motion to strike under Rule 12(f). (Defs.’ Resp. 4.)
A. Motion to Dismiss under Fed. R. Civ. P. 12(b)(6)
To survive a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6), a
complaint must “contain sufficient factual matter, accepted as true, to ‘state a claim for relief that
is plausible on its face.’” Iqbal, 129 S. Ct. at 1949 (quoting Twombly, 550 U.S. at 570). The
plausibility standard requires more than a “sheer possibility that a defendant has acted
unlawfully.” Id. While plausibility “does not impose a probability requirement at the pleading
stage,” it does require “enough facts to raise a reasonable expectation that discovery will reveal
evidence of” the necessary elements of a claim. Phillips v. Cty. of Allegheny, 515 F.3d 224, 234
(3d Cir. 2008).
To determine the sufficiency of a complaint under Twombly and Iqbal, the Court must
take the following three steps: (1) the Court must “tak[e] note of the elements a plaintiff must
plead to state a claim;” (2) the court should identify the allegations that, “because they are no
more than conclusions, are not entitled to the assumption of truth;” and (3) “where there are
well-pleaded factual allegations, a court should assume their veracity and then determine
whether they plausibly give rise to an entitlement for relief.” Burtch v. Milberg Factors, Inc., 662
F.3d 212, 221 (3d Cir. 2011) (citations omitted). In evaluating a motion to dismiss, courts
generally consider only the allegations contained in the counterclaim, the exhibits attached
thereto, matters of public record, and any “undisputedly authentic document” that a party
attaches as an exhibit, so long as the allegations in that counterclaim are based on that document.

4

Pension Ben. Guar. Corp. v. White Consol. Indus., Inc., 998 F.2d 1192, 1196 (3d Cir. 1993);
Schmidt v. Skolas, 770 F.3d 241, 249 (3d Cir. 2014).
Additionally, Federal Rule of Civil Procedure 9(b) mandates that a party plead “with
particularity the circumstances constituting fraud.” Iqbal, 556 U.S. at 686 (citing Fed. R. Civ. P.
9(b)). To satisfy this heightened pleading standard, a party must plead or allege the date, time,
and place of the alleged fraud, or otherwise “inject precision or some measure of substantiation”
into the allegations. Frederico v. Home Depot, 507 F.3d 188, 200 (3d Cir. 2007); see also In re
BP Lubricants USA Inc., 637 F.3d 1307, 1311 (Fed. Cir. 2011) (“[A] pleading that simply avers
the substantive elements of a claim sounding in fraud … without setting forth the particularized
factual bases for the allegations, does not satisfy Rule 9(b).”).
B. Motion to Strike under Fed. R. Civ. P. 12(f)
Federal Rule of Civil Procedure 12(f) “provides the means to challenge the sufficiency of
affirmative defenses.” Mars Inc. v. JCM Am. Corp., 2006 WL 1704469, at *3 (D.N.J. Jun. 14,
2006). Rule 12(f) permits a court to “strike from a pleading an insufficient defense or any
redundant, immaterial, impertinent, or scandalous matter.” Fed. R. Civ. P. 12(f). A court may act
“on its own[,]” or “on motion made by a party[.]” Id. As such, although Plaintiff has moved to
“dismiss” Defendants’ affirmative defenses, I will construe his motion as it relates to
Defendants’ affirmative defenses as a motion to strike under Rule 12(f).
III.

ANALYSIS
A. Interplay between Inequitable Conduct, Affirmative Defenses, and Counterclaims
The parties devote a substantial portion of their briefs to whether Defendants’ affirmative

defenses are subject to the same “plausibility” standard of review as their counterclaims. Indeed,

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there is a split among the circuit courts regarding whether or not the “plausibility” standard
applies to affirmative defenses.3
The Federal Circuit Court of Appeals has held that in a patent infringement case, a
motion to dismiss is purely a procedural mechanism, and thus the law of the regional circuit
should ordinarily control. See K-Tech Telecommunications, Inc. v. Time Warner Cable, Inc.,
714 F.3d 1277, 1282 (Fed. Cir. 2013); McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1355–56
(Fed. Cir. 2007). However, because inequitable conduct is a claim unique to patent law, the
Federal Circuit has instructed that the sufficiency of its pleading is subject to the law of the
Federal Circuit. Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009)
(citing Cent. Admixture Pharmacy Servs., Inc. v. Advanced Cardiac Sols., P.C., 482 F.3d 1347,
1356 (Fed. Cir. 2007)). As such, I will apply the law of the Federal Circuit in evaluating
Defendants’ counterclaims and affirmative defenses involving inequitable conduct.
The Federal Circuit has stated that “inequitable conduct, while a broader concept than
fraud, must be pled with particularity” pursuant to Federal Rule of Civil Procedure 9(b). Exergen
Corp., 575 F.3d at 1326 (“[W]e hold that in pleading inequitable conduct in patent cases, Rule
9(b) requires identification of the specific who, what, when, where, and how of the material
misrepresentation or omission committed before the PTO.”)

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See Tyco Fire Products LP v. Victaulic Co., 777 F. Supp. 2d 893, 902 (E.D. Pa. 2011) (discussing cases, and
acknowledging a split in authority). The United States Court of Appeals for the Third Circuit has yet to
expressly weigh in on this issue. See Vazquez v. Triad Media Sols., Inc., 2016 WL 155044, at *2 (D.N.J. Jan.
13, 2016). Nevertheless, multiple district courts within the Third Circuit have concluded that affirmative
defenses are not evaluated under the “plausibility” pleading requirement, but are rather subject to the “notice
pleading” standard. See e.g., Vazquez, 2016 WL 155044, at *2; Tyco Fire Products LP, 777 F. Supp. 2d at
903; Newborn Bros. Co. v. Albion Eng'g Co., 299 F.R.D. 90, 96 (D.N.J. 2014); Mifflinburg Tel., Inc. v.
Criswell, 80 F. Supp. 3d 566, 573 (M.D. Pa. 2015); Weed v. Ally Fin. Inc., 2012 WL 2469544, at *4 (E.D. Pa.
June 28, 2012). However, as will be discussed infra, it is the law of the Federal Circuit that controls my
analysis for purposes of Defendants’ inequitable conduct claim/defense, and Rule 9(b) dictates that an
affirmative defense of fraud must be pled with particularity.
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Multiple district courts within this circuit—applying Federal Circuit precedent—have
held that affirmative defenses and counterclaims for inequitable conduct “rise or fall together.”
See e.g., St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 2014 WL 2622240, at *1 n.1 (D.
Del. June 11, 2014) (“Because both an affirmative defense and a counterclaim asserting
inequitable conduct must meet the particularity requirements dictated by Rule 9(b), [the
defendant’s] counterclaim and affirmative defense for inequitable conduct rise or fall together.”)
(internal citations and quotations omitted); Wyeth Holdings Corp. v. Sandoz, Inc., 2012 WL
749378 at *4 (D. Del. Mar. 1, 2012); Senju Pharm. Co. v. Apotex, Inc., 921 F. Supp. 2d 297,
306-07 (D. Del. 2013).
The same is true for Defendants’ fraud allegations. See Tyco Fire Products LP, 777 F.
Supp. 2d at 901 n.7 (“[Fraud allegations] are subject to Rule 9(b)’s particularized requirements
regardless of whether they are made by way of an affirmative defense or a [counterclaim].”);
Senju Pharm. Co., 921 F. Supp. 2d at 306 (“[F]raud is a clear exception to the otherwise broad
notice-pleading standards.”).
With this legal framework in mind, I now address the legal sufficiency of Defendants’
Third Amended Answer.
B. Defendants’ Third Amended Answer
i.

Inequitable Conduct: Ninth Affirmative Defense and First Counterclaim

“A charge of inequitable conduct based on a failure to disclose will survive a motion to
dismiss only if the [counterclaim] recites facts from which the court may reasonably infer that a
specific individual both knew of invalidating information that was withheld from the PTO and
withheld that information with a specific intent to deceive the PTO.” Delano Farms Co. v.

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California Table Grape Comm'n, 655 F.3d 1337, 1350 (Fed. Cir. 2011) (citing Exergen Corp.,
575 F.3d at 1318, 1330).
As such, “the substantive elements of inequitable conduct are: (1) an individual
associated with the filing and prosecution of a patent application made an affirmative
misrepresentation of a material fact, failed to disclose material information, or submitted false
material information; and (2) the individual did so with a specific intent to deceive the PTO.”
Exergen Corp., 575 F.3d at 1327 n.3. These are independent factors, and deceit cannot be
inferred merely from materiality. Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276,
1287 (Fed. Cir. 2011) (en banc).
With respect to the first element, “as a general matter, the materiality required to establish
inequitable conduct is but-for materiality…. Hence, in assessing the materiality of a withheld
reference, the court must determine whether the PTO would have allowed the claim if it had
been aware of the undisclosed reference.” Therasense, Inc., 649 F.3d at 1291. And to 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 PTO.” Exergen Corp., 575 F.3d at 1328.
Regarding the second element, specific intent, the Federal Circuit has observed that:
The relevant “conditions of mind” for inequitable conduct include:
(1) knowledge of the withheld material information or of the falsity
of the material misrepresentation, and (2) specific intent to deceive
the PTO. Although “knowledge” and “intent” may be averred
generally, our precedent, like that of several regional circuits,
requires that the pleadings allege sufficient underlying facts from
which a court may reasonably infer that a party acted with the
requisite state of mind.

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Exergen Corp., 575 F.3d at 1327 (emphasis added).4 The Federal Circuit has defined a
reasonable inference as “one that is plausible and that flows logically from the facts alleged,
including any objective indications of candor and good faith.” Mycone Dental Supply Co. v.
Creative Nail Design, Inc., 2013 WL 3216145, at *5 (D.N.J. June 24, 2013) (quoting Exergen
Corp., 575 F.3d at 1329 n.5.)5
In sum, the inquiry becomes: whether Defendants have alleged sufficient facts (accepted
as true) from which I can reasonably infer that Plaintiff knew he was withholding material
information from the PTO at the time of his application for the D’839 patent (and at the time of
its reissue), and/or whether Plaintiff provided false information to the PTO about the true
inventorship. If so, I must also assess whether these factual allegations are independently
sufficient to lead a reasonable person to infer that Plaintiff had the specific intent to deceive the
PTO, taking into account any objective indications of good faith on the part of Plaintiff. See
Mycone Dental Supply Co., 2013 WL 3216145, at *6.
4

Some confusion has arisen regarding the proper requirements for pleading specific intent. As noted, pleadings
must allege sufficient underlying facts to reasonably infer that a party acted with the specific intent to deceive
the PTO. However, in Therasense, the Federal Circuit stated that, “to 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.… [W]hen there are multiple reasonable inferences that may be drawn, intent to deceive cannot be
found. 649 F.3d at 1290–91 (internal citations and quotations omitted). Multiple district courts within the Third
Circuit have recognized that the language set forth in Therasense reflects an evidentiary standard, whereas
Exergen applies to pleadings. See e.g., Bayer Cropscience AG v. Dow Agrosciences LLC, 2012 WL 1253047,
at *4 (D. Del. Apr. 12, 2012) (“[T]he Court will examine whether [plaintiff] pled sufficient facts from which a
reasonable inference can be drawn that material information was not given to the PTO because it specifically
intended to deceive the PTO. The Court will not determine whether this is the single most reasonable inference
to be drawn from the … facts.”); see also Cot'n Wash, Inc. v. Henkel Corp., 56 F. Supp. 3d 613, 625 (D. Del.
2014) (same). Accordingly, I will rely on Exergen at this stage, and assess whether Defendants have alleged
facts sufficient to raise the reasonable inference that Plaintiff acted with the requisite state of mind.
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Thus, a court is not free to disregard the patentee's objective indications of candor and good faith when it
assesses whether the pleadings create a reasonable inference of specific intent to deceive the PTO. However, at
the Rule 12(b)(6) stage, any such objective indications of candor and good faith must derive only from the
pleadings and those materials referenced in and/or attached to the pleadings that may be considered on a Rule
12(b)(6) motion. Mycone Dental Supply Co., 2013 WL 3216145, at *5. Plaintiff argues that he specifically
disclosed certain documents related to the “first” inventorship issue when pursuing his application for reissue.
However, those records are not presently before me, nor are they discussed or attached to Defendants’ Third
Amended Answer. I will consider such documents, if necessary, at the summary judgment stage.
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The essence of Defendants’ allegations with respect to Plaintiff’s fraud and inequitable
conduct is that Plaintiff stole a third party’s drawings in 1999, filed those stolen drawings with
the PTO as if they were his own, and knowingly deceived the PTO by filing a declaration that he
was the sole inventor of the claimed design. Defendants maintain that but for the omission of this
material information, and the accompanying deception, the patent would neither have been
originally issued nor subsequently reissued. (Defs.’ 3d Am. Answer, pp. 4–6.)
More specifically, Defendants claim that Plaintiff requested certain drawings from
Richard Gillespie in 1999 to assist with Plaintiff’s sales and marketing efforts—with the
understanding that these drawings were confidential and the exclusive property of Xentek
Medical, Inc. Defendants allege that Plaintiff took those drawings and filed them, as if he had
created them, with his patent application submitted to the PTO on February 7, 2000. Defendants
maintain that Plaintiff used the drawings to obtain the patent without Gillespie, Eddings, or
Xentek’s permission, and that Plaintiff ultimately obtained the D’839 patent as a result of this
alleged plagiarism. Defendants highlight that Plaintiff submitted a signed declaration to the PTO
which stated, “I believe I am the original, first and sole inventor of the subject matter which is
claimed and for which a design patent is sought on the above entitled invention.” (Defs.’ 3d Am.
Answer, pp. 4–6.) (emphasis added.)
Defendants contend that Plaintiff further perpetuated his misconduct by filing a second
certification with the reissue application in which he again certified: “I believe I am the original,
first and sole inventor of the subject matter which is described and claimed in the above
identified United States design patent and in the foregoing specification and for which invention
I solicit a Reissue patent.” (Id. at 5) (emphasis added).

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Plaintiff argues in his motion to dismiss that Defendants’ ninth affirmative defense and
first counterclaim do not adequately plead inequitable conduct because they fail to allege the
“high degree of materiality and intent required to support an inequitable conduct claim.” (Pl.’s
Mot. to Dismiss at 4.) Plaintiff asserts that merely because Defendants claim other inventors (i.e.,
Eddings and Gillespie) contributed prior art features to the final design, nowhere do Defendants
allege that Plaintiff was aware of these contributions, thought they were relevant to patentability,
and that Plaintiff specifically intended to defraud the PTO. (Id. at 5–6.)
In their response in opposition to Plaintiff’s motion to dismiss, Defendants argue that:
[I]t is quite clear who [Junker], what [plagiarized drawings], when
[at the time of filing of the patent application and the reissue
application], where [at the USPTO] and how [submitting a sworn
declaration that he was the sole inventor of the drawings he
submitted].” [Hence,] the material omission of inventorship was
made to the [PTO], and the Court can reasonably infer [Plaintiff]
knew he was not the sole inventor and willfully withheld this
information to deceive the [PTO] into granting the D’839 patent[.]
(Defs.’ Resp. at 13) (brackets in original).
The Federal Circuit has held that “when named inventors deliberately conceal a true
inventor’s involvement, the applicants have committed inequitable conduct and the patent is
unenforceable[.]” Advanced Magnetic Closures, Inc. v. Rome Fastener Corp., 607 F.3d 817, 828
(Fed. Cir. 2010) (citing Frank's Casing Crew & Rental Tools, Inc. v. PMR Techs., Ltd., 292 F.3d
1363, 1376 (Fed. Cir. 2002)); PerSeptive Biosystems, Inc. v. Pharmacia Biotech, Inc., 225 F.3d
1315, 1321 (Fed. Cir. 2000) (“As a critical requirement for obtaining a patent, inventorship is
material.”); Intermec Techs. Corp. v. Palm Inc., 738 F. Supp. 2d 522, 560 (D. Del. 2010), aff'd,
466 F. App’x 881 (Fed. Cir. 2012) (“The duty of candor, good faith, and honesty includes the
duty to submit truthful information and the duty to disclose to the PTO information known to the
patent applicants … which is material to the examination of the patent application.”).
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In reviewing Defendants’ allegations, and assuming their veracity, as I am required to do
at this stage, I conclude that Defendants have adequately pled inequitable conduct. Plaintiff’s
plagiarizing another’s drawings, filing them as his own, and submitting a sworn certification to
the PTO indicating the same, plausibly suggests that he provided materially false information to
the PTO (i.e., he was not the sole inventor, and there were in actuality other inventors).
Additionally, based on the facts alleged, it is reasonable to infer that he did so with the specific
intent to deceive the PTO. Accordingly, Plaintiff’s motion will be denied as to Defendants’ ninth
affirmative defense and first counterclaim premised on inequitable conduct.
ii.

Fraud: Tenth Affirmative Defense and First Counterclaim

“Applied to patent prosecution, fraud requires (1) a false representation or deliberate
omission of a fact material to patentability, (2) made with the intent to deceive the patent
examiner, (3) on which the examiner justifiably relied in granting the patent, and (4) but for
which misrepresentation or deliberate omission the patent would not have been granted.” C.R.
Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1364 (Fed. Cir. 1998).
Plaintiff points out in his motion to dismiss that Defendants’ tenth affirmative defense for
fraud is “subject to the same standards of inequitable conduct[.]” (Pl.’s Mot. to Dismiss at 12.) I
have previously ruled that “… the language of Therasense describing inequitable conduct
amounts to fraud.” F.T.C. v. Cephalon, Inc., 36 F. Supp. 3d 527, 533 (E.D. Pa. 2014). As such,
my discussion above with respect to inequitable conduct applies with equal force to Defendants’
fraud defense, which is rooted in the same alleged misconduct. Therefore, Plaintiff’s motion will
be denied insofar as it seeks dismissal of Defendants’ tenth affirmative defense and first
amended counterclaim for failure to adequately plead fraud in obtaining the D’839 patent.

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iii.

Other Allegations within Defendants’ First Amended Counterclaim

Plaintiff further argues that Paragraphs 8, 9, and 10 of Defendants’ first amended
counterclaim attempt to include general statutory invalidity arguments, and that Judge Restrepo
did not grant leave to file these allegations. However, Paragraphs 8 and 9 state—verbatim—what
was included in Defendants’ previous Answer. (See Doc. No. 11.) In other words, these
paragraphs have not been amended, and Plaintiff does not appear to have previously challenged
the legal sufficiency of these paragraphs. Thus, I will deny Plaintiff’s motion to strike and/or
dismiss these two paragraphs—with one exception.
Despite Judge Restrepo’s unambiguous ruling that Defendants were only permitted to
incorporate allegations of fraud and/or inequitable conduct into their Third Amended Answer,
Defendants included an additional footnote within Paragraph 8 that relates to Plaintiff’s patent
being invalid due to an “on sale” bar. (3d Am. Answer ¶ 8 n.3.) Defendants never sought leave
to add this footnote, and Judge Restrepo did not grant them leave to incorporate this footnote. To
the contrary, he expressly forbade it. Accordingly, this footnote will be stricken.
Plaintiff further asks that the first bulleted sub-paragraph within Paragraph 10 be stricken
because it includes “incorrect inventorship” invalidity allegations that were not contemplated by
Judge Restrepo’s Order granting leave to file a Third Amended Answer. I agree with Plaintiff
that this paragraph does not pertain to fraud or inequitable conduct. As such, this sub-paragraph
will be stricken. However, the second and third bulleted paragraphs within Paragraph 10 will not
be stricken because they pertain to inequitable conduct and fraud, and Judge Restrepo granted
Defendants leave to include these allegations.

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Defendants’ Third Affirmative Defense

iv.

Plaintiff correctly points out that Defendants added a footnote to their current third
affirmative defense, which was not included in their proposed Third Amended Answer attached
to their motion for leave. (See Doc. No. 119-A; Defs.’ 3d Am. Answer, n.1.) As noted, in
granting Defendants’ motion for leave, Judge Restrepo expressly disallowed those portions of
Defendants’ proposed Third Amended Answer that did not pertain to fraud or inequitable
conduct. This footnote does not pertain to fraud or inequitable conduct, and thus I agree with
Plaintiff that the addition of this footnote contradicts Judge Restrepo’s May 20, 2015 Order.
v.

Defendants’ Second Amended Counterclaim: Non-Infringement

Plaintiff correctly points out that “one cannot infringe an invalid patent.” (Pl.’s Mot. to
Dismiss at 18.) To the extent Defendants allege in Paragraph 14 of their second amended
counterclaim that they have not infringed the D’839 patent because it is invalid due to Plaintiff’s
fraud and/or inequitable conduct, this paragraph will be stricken because it is redundant of those
allegations already set forth in the ninth and tenth affirmative defenses, and first amended
counterclaim for invalidity. See Fed. R. Civ. P. 12(f).
IV.

CONCLUSION
Plaintiff’s motion to dismiss will be granted in part and denied in part. The motion will

be granted such that: footnote “1” within Defendants’ Third Affirmative Defense will be
stricken; footnote “3” within Defendants’ First Amended Counterclaim will be stricken; the first
bulleted sub-paragraph within Paragraph 10 of Defendants’ First Amended Counterclaim will be
stricken; and, the allegations pertaining to fraud and/or inequitable conduct in Paragraph 14 of
Defendants’ Second Amended Counterclaim will be stricken. The Motion will be denied in all
other respects.

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An appropriate Order follows.6

6

I have great appreciation for the complexities of patent litigation. That said, I note that the thoughts of The
Honorable Richard Linn might be applicable here:
It is evident … that counsel [have] sought to zealously represent their clients’
interests [in] this case. However, at times, counsel's actions [have shown] an
excessive emphasis on their roles as zealous advocates. Counsel must remember
that they are not only advocates for their clients; they are also officers of the court
and are expected to assist the court in the administration of justice, particularly in
difficult cases involving complex issues of law and technology…. [At times],
counsel appear to have sought to cloud rather than clarify the central legal issues
and to draw the court’s attention to peripheral matters. Counsel’s overlooking of
their respective roles as officers of the court has contributed, at least in part, to
these protracted proceedings.
Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1356 (Fed. Cir. 2002). After this case was reassigned
to my docket, it took a substantial amount of time to become familiar with the issues involved, in part because
of the significant number of filings. As we proceed with the remaining adjudication of this case, counsel are
asked to keep the above principles in mind.
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