CR Bard et al v. Medical Components

Filing 264

MEMORANDUM DECISION granting 174 Motion to Dismiss for Failure to State a Claim ; denying 176 Motion to Bifurcate. Signed by Judge Ted Stewart on 4/18/19. (jlw)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH
C.R. BARD, INC., a New Jersey
corporation, BARD PERIPHERAL
VASCULAR, INC., an Arizona corporation,
and BARD ACCESS SYSTEMS, INC., a
Utah corporation,

MEMORANDUM DECISION AND
ORDER GRANTING MOTION TO
DISMISS AND DENYING MOTION TO
BIFURCATE

Plaintiffs,
v.

Case No. 2:17-CV-754 TS

MEDICAL COMPONENTS, INC., a
Pennsylvania corporation.

District Judge Ted Stewart

Defendant.

This matter is before the Court on Plaintiff/Counterclaim Defendant’s Motion to Dismiss
Defendant/Counterclaim Plaintiff’s Second, Fifth, and Sixth counterclaims, and to strike its Fifth
and Seventh Affirmative Defenses.
I.

BACKGROUND

Plaintiffs C.R. Bard, Inc., Bard Peripheral Vascular, Inc., and Bard Access Systems, Inc.
(collectively, “Bard” or “Counterclaim Defendant”) and Defendant Medical Components, Inc.
(“MedComp” or “Counterclaim Plaintiff”) are both producers of access ports. An access port is a
medical device that can be implanted into a patient to provide a convenient means of blood
sampling or infusing fluids into the blood stream without requiring further surgical procedures. 1
Bard alleges infringement on several of its access-port related patents, including the ’639, ’723,
’663, ’052, and ’186 patents. The ’639 patent relates to using power injection to push fluid into
an access port. The other patents relate to identifying an already implanted access port. The ’639

1

Docket No. 21, at 5.
1

patent was issued in 2011. The ’723, ’663, ’052 patents were issued in 2013. The ’186 patent was
issued in 2017. 2
On July 19, 2018, Defendant MedComp filed its Third Amended Answer and
Counterclaims (“TAAC”). Relevant to the Motion before the Court, MedComp alleges that: 1)
the patents in-suit are not enforceable due to inequitable conduct before the United States Patent
and Trademark Office (“PTO”); 2) Bard attempted to monopolize the power port market, and
succeeded in monopolizing the market; and 3) MedComp is not liable because of several
affirmative defenses, including laches, estoppel, unclean hands, fraudulent conduct, acquiescence
and/or waiver, and inequitable conduct.
Bard seeks dismissal of MedComp’s counterclaims under Rule 12(b)(6). Bard also asks
the Court to strike MedComp’s affirmative defenses under Rule 12(f), or, in the alternative, to
dismiss these claims as inadequately pleaded under Rule 12(b)(6). 3
In addition to the Motion to Dismiss, Bard also filed a Motion to Bifurcate. 4 Bard asks the
Court to bifurcate and stay MedComp’s antitrust claims, pending resolution of its inequitable
conduct claims. 5 The Court will grant the Motion to Dismiss and deny as moot the Motion to
Bifurcate.
II.

SECOND COUNTERCLAIM (inequitable conduct)

In Therasense, Inc. v. Becton, the Federal Circuit addressed how “the inequitable conduct
doctrine has plagued not only the courts but also the entire patent system.” 6 The Court noted that
alleging inequitable conduct has become “a common litigation tactic,” asserted in “almost every

2

Id. at 5–6.
Docket No. 174, at 1, 23, 25.
4
Docket No. 176.
5
Id.
6
649 F.3d 1276, 1289 (Fed. Cir. 2011).
3

2

major patent case” on even the “slenderest grounds.” 7 The Federal Circuit also recognized many
costs of this “absolute plague,” 8 including “increased adjudication cost and complexity, reduced
likelihood of settlement, burdened courts, strained PTO resources, increased PTO backlog, and
impaired patent quality.” 9 To remedy this problem, the Court “tighten[ed] the standards for finding
both intent and materiality.” 10
The resulting standard for establishing a claim of inequitable conduct is rigorous. The
party bringing the claim must prove that the applicant “(1) made an affirmative misrepresentation
of material fact, failed to disclose material information, or submitted false material information,
and (2) intended to deceive the [PTO].”11 Both intent and materiality must be proven by clear and
convincing evidence. 12 A showing of specific intent is required; merely proving gross negligence
or meeting a “should have known” standard is inadequate. 13 “Because direct evidence of deceptive
intent is rare, a district court may infer intent from indirect and circumstantial evidence.”14
However, to meet the clear and convincing evidence standard, specific intent to deceive must be
“the single most reasonable inference able to be drawn from the evidence.” 15
The standards for adequately pleading inequitable conduct are accordingly exacting. Mere
notice pleading is not sufficient. Rather, the accused infringer must meet the strict pleading
standards of fraud contained in Federal Rule of Civil Procedure 9(b), including: “identification of
the specific who, what, when, where, and how of the material misrepresentation or omission

7

Id. (internal quotations and citations omitted).
Id.
9
Id. at 1290.
10
Id.
11
Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir. 2008).
12
Therasense, 649 F.3d at 1290.
13
Id.
14
Id.
15
Id. (quotation marks omitted).
8

3

committed before the PTO.” 16 “[K]nowledge and intent may be averred generally,” but the
pleadings must “allege sufficient underlying facts from which a court may reasonably infer that a
party acted with the requisite state of mind.” 17
a. Failure to disclose prior art
Counterclaim Plaintiff Medcomp alleges that Bard committed inequitable conduct by
failing to disclose three prior art publications, including the “Herts,” “Carlson,” and “Gebauer”
references. 18 Medcomp also alleges that Bard failed to disclose relevant information known to
Bard about existing access ports, including that commercially available ports were already being
used for power injection and were already identifiable based on radiographic features. 19
As stated above, the successful pleading must identify “the specific who, what, when,
where, and how of the material misrepresentation or omission committed before the PTO.” 20 To
plead “who,” a pleading must “name the specific individual associated with the filing or
prosecution of the application . . . who both knew of the material information and deliberately
withheld or misrepresented it.” 21 It is not enough to simply refer to “Bard” or Bard’s “agents
and/or attorneys.” 22
i. Herts Reference
With regard to the Herts Reference, to fulfill the “who” requirement, the TAAC alleges
that “Bard possessed multiple copies of the Herts Reference,” specifically that “Kelly Powers and

16

Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 (Fed. Cir. 2009).
Id.
18
Docket No. 168 at 91–95.
19
Id. at 95–105.
20
Exergen, 575 F.3d at 1327.
21
Id. at 1329.
22
See id.
17

4

Erik Ence were aware of and has [sic] possession” of the article. 23 The TAAC also asserts that a
number of other Bard employees either read or knew of the Herts Reference, including Kevin
Sheetz, David Cise, James Davis, Matt Draper, Jay Gerondale, John Evans, Dwight Hibdon, Susan
Scott, Kelly Christian, Annemarie Boswell, John Zawacki, Alex Lockovith, Peggy Keiffer, and
Kimberly Geisler. 24
In support of the assertion that these individuals were aware of the Herts Reference and its
materiality, the TAAC offers several facts, including that: 1) the Herts Reference was published
in a journal that is widely-circulated within the specialty field; 2) Bard provided the Herts
Reference in a 2011 FDA submission; 3) Bard cited the Hertz Reference in related patent
applications subsequent to the patents in-suit; and 4) an internal 2009 Bard document included a
reference to Herts. 25
At most, these facts would tend to show that Bard was negligent in not disclosing the Herts
Reference. MedComp’s allegations may lend support to the argument that Bard should have
known of the reference and its materiality—given that it was widely available and even cited by
Bard in other documents. However, such “should have known” allegations were expressly
disclaimed by the Federal Circuit Court in Therasense, as insufficient to show specific intent to
deceive the PTO. 26 Similarly, the Federal Circuit held in Exergen, that “[t]he mere fact that an
applicant disclosed a reference during prosecution of one application, but did not disclose it during

23

Docket No. 168, at 92.
Id. at 93.
25
Id.
26
Therasense, 649 F.3d at 1290 (“A finding that the misrepresentation or omission
amounts to gross negligence or negligence under a ‘should have known’ standard does
not satisfy this intent requirement.”).
24

5

prosecution of a related application, is insufficient to meet the threshold level of deceptive intent
required to support an allegation of inequitable conduct.” 27
Without further factual support, these allegations are insufficient to allow the Court to
reasonably infer that any specific individual knew of the Herts Reference, knew it was material,
and made a deliberate decision to withhold it from the PTO.
ii. Carlson Reference
With regard to the Carlson Reference, to meet the “who” requirement, the TAAC alleges
that a number of Bard employees were “familiar” with the Carlson Reference. 28 According to the
TAAC, these individuals were aware of this Reference and its materiality for several reasons,
including that: 1) the Carlson Reference was published in a journal that is widely-circulated within
the specialty; 29 2) it was cited in a Bard FDA submission (which John Evans and Kelly Powers
collaborated on); 30 and 3) it was cited during prosecution of the ’723 and ’052 patents, as well as
several related out-of-suit patents, but was not cited during prosecution of the ’639. 31
As discussed above, establishing inequitable conduct requires the identification of a
“specific individual associated with the filing or prosecution of the application . . . who both knew
of the material information and deliberately withheld or misrepresented it.” 32 Under the standard
established in Exergen, a successful pleading may be averred generally, but requires “sufficient
underlying facts from which a court may reasonably infer that a party acted with the requisite state
of mind.” 33 Allegations that Bard personnel “should have known” of the Reference and its

27

Exergen, 575 F.3d at 1331.
Docket No. 168, at 93–94.
29
Id. at 93.
30
Id.
31
Id.
32
Exergen, 575 F.3d at 1329.
33
Id. at 1327.
28

6

materiality—such as alleging that it was published in a widely circulated journal—are inadequate.
Also inadequate are mere allegations that “an applicant disclosed a reference during prosecution
of one application, but did not disclose it during prosecution of a related application.” 34
iii. Gebauer Reference
With regard to the Gebauer Reference, to fulfill the “who” requirement, the TAAC alleges
that Kelly Powers and “Members of Bard’s Port Team,” “possessed a copy” of the Gebauer
Reference. 35 The TAAC also asserts that, “evidencing specific intent,” although the Gebauer
Reference was not cited during prosecution of the ’639 patent, it was cited in the subsequent
prosecutions of the ’723, ’052 patents—and the out-of-suit ’460 patent. 36
These facts are inadequate to allow the court to infer that any specific individual “knew of
the reference, knew it was material, and made a deliberate decision to withhold it.” 37 The fact
that the Gebauer Reference was contained in the custodial files of Kelly Powers does not show his
knowledge of materiality or evidence his deceptive intent. Likewise, as stated above, “[t]he mere
fact that an applicant disclosed a reference during prosecution of one application, but did not
disclose it during prosecution of a related application, is insufficient to meet the threshold level of
deceptive intent required to support an allegation of inequitable conduct.” 38
iv. Knowledge of Prior Ports
The TAAC also accuses Bard of inequitable conduct stemming from its knowledge that
existing ports were already being used for power injection (relevant to the ’639 patent) and

34

Id. at 1331.
Docket No. 168 at 95.
36
Id. at 95.
37
Therasense, 649 F.3d at 1290.
38
Exergen, 575 F.3d at 1331.
35

7

identified using x-ray technology (relevant to the ’723, ’663, ’052, ’186, and ’160 patents). These
prior art ports include Bard’s own existing ports as well as ports of other competitors.
To demonstrate Bard’s knowledge of existing ports, MedComp points to a number of
Bard’s internal documents, as well as a handful of documents from other lawsuits and a previous
submission to the PTO. MedComp appears to assert that these documents should have been
disclosed as prior art, 39 or, alternatively, that the documents evidence Bard’s intent in withholding
the prior art discussed above, including the Herts, Carlson, and Gebauer references. 40
“[P]rior art references, by definition, must be publicly available.” 41 Therefore, Bard was
not under any duty to disclose its internal documents. Moreover, MedComp has not pled sufficient
facts to meet the “who” requirement by identifying a “specific individual associated with the filing
or prosecution of the application . . . who both knew of the material information and deliberately
withheld or misrepresented it.” 42
However, “[n]on-public documents, such as notes or internal communications with patent
prosecution counsel, may also shed light on the reasoning behind a decision to withhold a
reference.” 43 In support of its assertion that these documents evidence Bard’s intent to withhold
the Herts, Carlson and Gebauer references, MedComp cites In re ’639 Patent Litigation. In that
case, the court noted the “striking disparity” between what a company’s “employees and agents
were saying to each other and what they were saying to the PTO.” 44 For example, the court
identified a two-year delay between the time that a specific company agent internally

39

Docket No. 168, at 95–102.
Docket No. 189, at 8–9.
41
Micron Tech., Inc. v. Rambus Inc., 917 F. Supp. 2d 300, 319 (D. Del. 2013).
42
Exergen, 575 F.3d at 1329.
43
Micron Tech., Inc. v. Rambus Inc., 917 F. Supp. 2d 300, 323 (D. Del. 2013)
44
In re ‘639 Patent Litig., 154 F. Supp. 2d 157, 194 (D. Mass. 2001), aff’d sub nom.
SmithKline Beecham Corp. v. Copley Pharm., Inc., 45 F. App’x 915 (Fed. Cir. 2002).
40

8

acknowledged that a particular prior art article was material and the time that article was disclosed
to the PTO. 45
Unlike in In re ’639 Patent Litigation, MedComp does not allege any direct connection
between the identified Bard documents and the withheld prior art. MedComp alleges that there is
substantive overlap, but does not identify anything that discusses any of the three prior art articles,
identifies it as material, and evidences the intent of a specific individual to withhold the article.
Bard also argues that some of the documents cited by MedComp are not relevant because
they are dated well past the relevant time period. MedComp does not respond to this argument.
In summary, Bard’s internal documents cannot be considered prior art. Neither can
documents that did not exist during the relevant time period. In addition to not being prior art,
the documents MedComp cites also do not serve as compelling evidence of Bard’s specific intent
to withhold the Herts, Carlson and Gebauer References.

Therefore, MedComp’s claim of

inequitable conduct based on knowledge of prior art ports is not well pleaded.
b.

Inventorship

MedComp first asserts that all the patents in-suit, including the ’639, ’723, ’663, ’052, and
’186 patents, are unenforceable because they do not list the correct inventors.

However,

MedComp’s allegations are based on actions Bard allegedly took during the prosecution of several
out-of-suit patents, the ’302 and ’460 patents, and the ’518 provisional patent. 46

This is

problematic because, as explained below, MedComp is essentially asking the Court to find that
these out-of-suit patents are invalid, and, based on that finding, declare the in-suit patents invalid.

45

‘639 Patent, 154 F. Supp. 2d at 192.
The patents in-suit claim priority to these patents. The ’663, ’052, ’723, and ’186
patents claim priority to the ’518 provisional patent application. The out-of-suit ’302 patent does
as well. The ’639 patent claims priority to the ’460 patent. Docket No. 168, at 132, 143.
46

9

“A patent is invalid if more or fewer than the true inventors are named.” 47 To be properly
named an “inventor,” a person must have “contribut[ed] in some significant manner to the
conception of the invention.” 48 Federal law allows for correction of patent inventors. 49 However,
changing patent inventors with deceptive intent may cause a patent to be invalidated. 50
MedComp claims that with deceptive intent and “for litigation purposes,” Bard engaged in
a program to remove the proper inventors from the patents in-suit, as well as the ’302 and ’460
patents, and the ’518 provisional patent. 51 MedComp claims that because inventors have a duty
to disclose information to the PTO, Bard endeavored to change the listed inventors in order “to
reduce Bard’s exposure that its inventors on the Bard patents violated their duty of candor and
good faith.” 52 MedComp alleges that Bard “attempted to try and hide the fact that its Port Team
personnel were well aware that the features of the claims of these patents were in the prior art and
were utilized in medical procedures that occurred prior to 2005 in the U.S.” 53
Regarding the patents in suit, MedComp alleges that because the in-suit ’052, ’723, ’663,
and ’184 patents (which relate to port identification) claim priority to the ’302 patent, they should
also be invalidated. 54 Likewise, MedComp alleges that because the in-suit ’639 patent (which
relates to power injection) claims priority to the ’460 patent, it should also be invalidated.55

47

Gemstar-TV Guide Int’l, Inc. v. Int’l Trade Comm’n, 383 F.3d 1352, 1381 (Fed. Cir.

2004).
48

Id. (quotation marks omitted).
35 U.S.C § 256(a) (“Whenever through error a person is named in an issued patent as
the inventor, or through error an inventor is not named in an issued patent, the Director may, on
application of all the parties and assignees, with proof of the facts and such other requirements as
may be imposed, issue a certificate correcting such error.”).
50
MCV, Inc. v. King-Seeley Thermos Co., 870 F.2d 1568, 1571 (Fed. Cir. 1989).
51
Docket No. 168, at 141.
52
Id.
53
Id. at 141.
54
Id. at 131–143.
49

55

Id. at 143.

10

Although MedComp also asserts that the in-suit patents name incorrect inventors, it does not offer
sufficient facts to support that allegation beyond its discussion of why the inventors for the out-ofsuit patents are incorrect. 56
It is a well-established that under the doctrine of infectious unenforceability, inequitable
conduct committed during the prosecution of one patent can, in certain circumstances, taint another
patent. 57 However, it is not well established that this doctrine enables a court to hold out-of-suit
patents unenforceable. The district court in Hoffman-La Roche, Inc. v. Promega Corp, considered
this issue, reasoning that although a party urged the court to hold multiple patents unenforceable
that were not at issue in the litigation, the party provided no legal support for such an expansive
exercise of the court’s equitable powers. 58 The court concluded that “the court’s equitable powers
do not extend to patents that are not at issue in this litigation.” 59 Similarly, in Global Tech Led,
LLC v. Hilumz International Corp., the district court reasoned that:
In essence, Defendants seek to obtain an unofficial declaration of unenforceability
as to a patent not otherwise before the Court, and then use that declaration as the
predicate for having the in-suit ‘424 Patent Defendants are accused of infringing
declared legally unenforceable. The Court’s research has revealed no case in which
an in-suit patent was declared unenforceable based on inequitable conduct relating
to the procurement of a different patent that is out-of-suit. 60
MedComp does not address this issue directly. Rather, it argues broadly that “[i]nequitable
conduct during the prosecution of parent patent can undermine the enforceability of a descendant
patent”; 61 however, MedComp does not offer any examples of a district court taking the type of

56

Id. at 131–144.

57

Nilssen v. Osram Sylvania, Inc., 504 F.3d 1223, 1230 (Fed. Cir. 2007).
Hoffman-La Roche, Inc. v. Promega Corp., 319 F. Supp. 2d 1011, 1016 (N.D. Cal.
2004).
59
Id.
60
No. 2:15-CV-553-FTM-29CM, 2017 WL 588669, at *11 (M.D. Fla. Feb. 14, 2017).
61
Docket No. 189, at 14.
58

11

action contemplated here. The Court’s independent research also has not identified any instances
of a court finding in-suit patents unenforceable based on the court’s finding that out-of-suit patents
are invalid. 62 The Court will decline to exercise its equitable powers over out-of-suit patents.
III.

FIFTH and SIXTH COUNTERCLAIMS (attempted monopolization and
monopolization)

MedComp asserts antitrust counterclaims based on Bard’s alleged misconduct in procuring
the ’639 patent. So-called “Walker Process” claims allow a party to bring an antitrust action for a
fraudulently obtained and enforced patent.
In order to prevail on a Walker Process claim, the antitrust-plaintiff must show two
things: first, that the antitrust-defendant obtained the patent by knowing and willful
fraud on the patent office and maintained and enforced the patent with knowledge
of the fraudulent procurement; and second, all the other elements necessary to
establish a Sherman Act monopolization claim.63
The required showing of “knowing and willful fraud on the patent office” for a Walker Process
claim is essentially the same as for proving inequitable conduct independently. 64 As discussed
above, MedComp’s allegations of inequitable conduct are not sufficiently pled. Therefore, its
Walker Process claims must fail.

62

One narrow but notable exception to this is the Federal Circuit’s holding in Nilssen v.
Osram Sylvania, Inc, 504 F.3d 1223, 1229–1230 (Fed. Cir. 2007). In that case, the court did
exercise its power over out-of-suit patents where the patents had been withdrawn from the case
on the eve of trial. Independent research has not identified any extension of this doctrine to
include patents that were never in-suit.
63
TransWeb, LLC v. 3M Innovative Props. Co., 812 F.3d 1295, 1306 (Fed. Cir. 2016).
64
Id. at 1307 (“After Therasense, the showing required for proving inequitable conduct
and the showing required for proving the fraud component of Walker Process liability may be
nearly identical.”).
12

IV.

FIFTH AFFIRMATIVE DEFENSE (laches, estoppel, unclean hands, fraudulent
conduct, and acquiescence and/or waiver)
a. Laches

“Laches is a doctrine that bars a plaintiff’s claim when there has been unreasonable,
prejudicial delay in commencing suit.” 65 “To prevail on a defense of laches, a defendant must
establish that (1) the plaintiff’s delay in filing a suit was ‘unreasonable and inexcusable,’ and (2)
the defendant suffered ‘material prejudice attributable to the delay.’” 66
Counterclaim Defendant MedComp does not plead any facts to show delay on the part of
Bard in filing suit. Nor does MedComp allege any facts to show “material prejudice attributable
to the delay.” Therefore, this allegation is not adequately pled.
b. Estoppel
To prove estoppel, a party must plead three elements. First, “that the patentee, through
misleading conduct, leads the alleged infringer to reasonably infer that he does not intend to
enforce the patent against the alleged infringer.” 67 Second, “that the alleged infringer relies on the
patentee’s conduct.” 68 Third, “that due to the reliance, the alleged infringer will be materially
prejudiced if the patentee is permitted to proceed with its infringement suit.” 69
Counterclaim Defendant MedComp does not plead any facts to establish any of these
elements. Therefore, this allegation is not adequately pled.

65

SCA Hygiene Prod. Aktiebolag v. First Quality Baby Prod., LLC, 137 S. Ct. 954, 967
(2017) (Breyer, J., dissenting) (citing 1 D. Dobbs, Law of Remedies § 2.3(5), p. 89 (2d ed.
1993)).
66
Pei-Herng Hor v. Ching-Wu Chu, 699 F.3d 1331, 1334 (Fed. Cir. 2012) (internal
citation omitted).
67
ABB Robotics, Inc. v. GMFanuc Robotics Corp., 52 F.3d 1062, 1063 (Fed. Cir. 1995).
68
Id.
69
Id.
13

c. Unclean hands and fraudulent conduct
Courts of equity “apply the maxim requiring clean hands only where some unconscionable
act of one coming for relief has immediate and necessary relation to the equity that he seeks in
respect of the matter in litigation.” 70
[W]henever a party who, as actor, seeks to set the judicial machinery in motion and
obtain some remedy, has violated conscience, or good faith, or other equitable
principle, in his prior conduct, then the doors of the court will be shut against him
in limine; the court will refuse to interfere on his behalf, to acknowledge his right,
or to award him any remedy. 71
Unclean hands is “not bound by formula or restrained by any limitation that tends to trammel the
free and just exercise of discretion.” 72 In applying the doctrine of unclean hands, courts are not
primarily concerned with the interests of the parties, but with protecting the integrity of the court
itself from improper action. 73 None of the alleged actions in this case rise to the level of such an
“unconscionable act,” and the Court will decline to exercise its discretionary power to refuse Bard
access to the Court based on unclean hands.
d. Acquiescence and/or waiver
In its pleading regarding “acquiescence,” MedComp again asks the Court to evaluate
Bard’s actions in prosecuting out-of-suit patents. MedComp asserts that during prosecution of the
’660 patent, which occurred after the ’639 patent was issued, the PTO rejected a claim related to
port pressure. Bard allegedly failed to disclose to the PTO that a related claim had been approved

70

Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240, 245 (1933).
Aptix Corp. v. Quickturn Design Sys., Inc., 269 F.3d 1369, 1379 (Fed. Cir. 2001)
(quoting Keystone, 290 U.S. at 245–46).
72
Consol. Aluminum Corp. v. Foseco Int’l Ltd., 910 F.2d 804, 812 (Fed. Cir. 1990)
(quoting Keystone Driller, 290 U.S. at 245).
73
See, e.g., Priestley v. Astrue, 651 F.3d 410, 430–31 (4th Cir. 2011); Hall v. Wright, 240
F.2d 787, 795 (9th Cir. 1957); Frank Adam Elec. Co. v. Westinghouse Elec. & Mfg. Co.,
146 F.2d 165, 167–68 (8th Cir. 1945).
71

14

as part of the ’639 patent. MedComp claims that acquiescence in the later ’660 patent should be
retroactively applied to the ’639 patent. 74 MedComp also asserts that because Bard claims were
rejected in a foreign patent application and Bard acquiesced, the subject matter of the ’639 claims
should be held invalid. 75
In addition to the allegations regarding out-of-suit patents, MedComp also asserts that
because several claims of the ’186 patent were rejected and Bard acquiesced, “the Bard Attorneys
acknowledged that the subject matter of these claims are not allowable and are invalid subject
matter.” 76
MedComp offers no legal support for any of these assertions; however, construing the
pleading liberally, the Court has attempted through independent research to identify relevant case
law.
The Federal Circuit has defined a doctrine of acquiescence that deals with the resulting
scope of a patent after a claim is rejected. Specifically, the doctrine concerns the patent holders
rights in defending the validity of patents in future litigation.
[I]n ascertaining the scope of an issued patent, the public is entitled to equate an
inventor’s acquiescence to the examiner’s narrow view of patentable subject matter
with abandonment of the rest. Such acquiescence may be found where the patentee
narrows his or her claims by amendment, or lets stand an examiner’s restrictive
interpretation of a claim. But these principles do not suggest that a patentee may
advance during litigation only those arguments in support of patentability that were
made before the Patent Office, nor that the negation of an argument advanced
during prosecution necessarily negates patentability as well. 77

74

Docket No. 168, at 130-131.
Id. at 73.
76
Id. at 128.
77
TorPharm, Inc. v. Ranbaxy Pharm., Inc., 336 F.3d 1322, 1330 (Fed. Cir. 2003)
(internal citations omitted).
75

15

This doctrine clearly does not deal with the limitations imposed on other patent applications when
an applicant acquiesces to a claim rejection. Because this affirmative defense is not well pled, it
will be dismissed.
V.

SEVENTH AFFIRMATIVE DEFENSE (inequitable conduct)

In its Seventh Affirmative Defense, MedComp asserts inequitable conduct. This claim is
duplicative of the inequitable conduct claims addressed above and will also be dismissed.
VI.

CONCLUSION

It is therefore
ORDERED that Counterclaim Defendants’ Motion to Dismiss (Docket No. 174) is
GRANTED. It is further
ORDERED that Counterclaim Defendants’ Motion to Bifurcate (Docket No. 176) is
DENIED as moot.
DATED this 18th day of April 2019.
BY THE COURT:

Ted Stewart
United States District Judge

16