MadGrip Holdings, LLC v. West Chester Holdings, Inc.

Filing 56

OPINION AND ORDER granting 13 Motion to Strike and 13 Motion to Dismiss; granting in part consistent with the Court's ruling on the initial motions and denying in part with respect to the issues involving Mr. Stephenson 32 Motion to Dismiss for Failure to State a Claim and 32 Motion to Strike; granting 23 Motion to Amend/Correct; granting 24 Motion for Protective Order. Signed by Judge William K. Sessions III on 9/27/2017. (jam)

UNITED STATES DISTRICT COURT
FOR THE
DISTRICT OF VERMONT
MADGRIP HOLDINGS, LLC,
Plaintiff,

)
)
)
)
)
)
)
)
)
)

v.
WEST CHESTER HOLDINGS,
INC.,
Defendant.

Case No. 16-cv-272

OPINION AND ORDER
Plaintiff MadGrip Holdings, LLC (“MadGrip”) brings this
action claiming that Defendant West Chester Holdings, Inc. (“West
Chester”) has infringed its patent relating to the manufacture of
utility gloves.

West Chester counters that the patent is invalid

because the technology in the patent is not new, and that
MadGrip’s inequitable conduct in proceedings before the United
States Patent and Trademark Office (“USPTO”) renders the patent
unenforceable.
Now pending before the Court is MadGrip’s motion to strike
West Chester’s affirmative defenses and to dismiss its
counterclaims.

After MadGrip filed its motion, West Chester

moved to amend its counterclaims and to add new allegations of
inequitable conduct.

Acknowledging the proposed amendments,

MadGrip has renewed its motions to strike and to dismiss.

For

the reasons set forth below, the motion for leave to amend is
granted in part and denied in part, MadGrip’s initial motions to
strike and to dismiss are granted, and its subsequent motions are

granted in part and denied in part.
Factual Background
I.

MadGrip’s Claims
MadGrip is a glove company located in Essex Junction,

Vermont.

In 2006 or 2007, David Gellis, one of the principals of

MadGrip, allegedly devised a process for manufacturing utility
gloves using injection molding technology.

MadGrip uses this

technology to produce a glove with a rubberized “concave palm,”
“pre-curved finger construction,” and a “breathable knit”
backside.

ECF No. 1 at 5.

The injection molded glove is

reportedly “contoured with the natural contours of the wearer’s
hand to allow for maximum motion while still providing cushion to
the wearer’s palm.”

Id. at 5.

On July 16, 2007, Mr. Gellis filed a provisional patent
application describing this manufacturing technique.

After

several iterations of the application, the USPTO ultimately
granted United States Patent No. 9,346,202 (the “‘202 Patent”) on
May 24, 2016.

MadGrip is the assignee of the ‘202 Patent.

Representative Claim 1 of the ‘202 Patent reads, in part, that
the patent covers “[a] method of manufacturing a utility glove”
including:
injecting an elastomeric material into the cavity to
form the molded portion . . . said molded portion
comprising greater than 50% of the circumference of
each of the fingers along the length of each finger
while leaving an area of fabric without elastomeric
material on each finger wherein the molded portion
2

comprises a palm having a middle and edges, the palm
edges comprising a heel, a front corresponding to
knuckles of the fingers, a thumb side and an outer
side, wherein the middle of the palm is set in from the
heel, the front, the thumb side and the outer side of
the palm to form a concave shape.
ECF No. 1-1 at 16.
Defendant West Chester sells a line of gloves known as Sumo
Grip.

Sumo Grip advertising uses the term “injection grip

technology,” and references the glove’s “injection-molded grip.”
ECF No. 1 at 10.

MadGrip claims that the Sumo Grip glove

infringes elements specific to Claim 1 of the ‘202 patent,
including that “the molded portion of the Sumo Grip glove is
greater than 50% of the circumference of each finger, and it
includes a palm with a middle and edges, a thumb side and an
outer side, and the middle of the palm is set in from the edges
of the palm to form a concave shape.”

Id. at 11.

MadGrip

further alleges, upon information and belief, that the Sumo Grip
glove infringes other Claims within the ‘202 Patent as well.

Id.

(“the Sumo Glove infringes at least Claims 1-5, 7-10 and 13 of
the ‘202 Patent”).
On May 18, 2016, counsel for MadGrip informed West Chester
that the ‘202 Patent would issue on May 24, 2016 and that West
Chester would likely be infringing.

The May 18 letter also

requested information about West Chester’s manufacturing process.
West Chester declined to provide MadGrip with manufacturing
information, and allegedly asked MadGrip’s attorney to first
3

detail the ways in which the Sumo Grip glove infringes the ‘202
Patent.

West Chester also reportedly noted features of the

claims in the ‘202 Patent that are not present in the Sumo Grip
glove, and requested contrary information.

West Chester alleges

that MadGrip has not responded to its requests.
MadGrip filed its Complaint in this case on October 14,
2016, asserting one count of patent infringement for “making,
using, importing, selling, and/or offering for sale Sumo Grip
gloves which are manufactured by a method disclosed and claimed
in the ‘202 Patent in violation of 35 U.S.C. § 271, et seq.”
at 13.

Id.

For relief, MadGrip seeks compensatory damages, including

reasonable royalties and/or lost profits; enhanced damages under
35 U.S.C. § 284; attorney’s fees; and pre-issuance damages in
light of the notice provided to West Chester on May 18, 2016.
II.

West Chester’s Affirmative Defenses and Counterclaims
West Chester contends that the ‘202 Patent is invalid and

unenforceable.

It first claims that Mr. Gellis and MadGrip did

not invent, and do not claim to have invented, injection molding
in rubberized fabric gloves.

West Chester notes that during

MadGrip’s patent prosecution, the examiner cited a patent granted
to J. M. Edwards in 1927 that showed a rubber-coated fabric
glove.

West Chester also claims that injection molding to make

rubberized gloves was known prior to the ‘202 Patent, and that
MadGrip did not disclose relevant prior art to the examiner.

4

In its allegations of inequitable conduct, West Chester
asserts that MadGrip and its agents, including the prosecuting
attorney for the patent, Kenneth Florek, violated their duty of
candor and good faith in dealing with the USPTO.

Their claim

begins with the rejection of an earlier patent effort:
application 13/500,483 (the “‘483 application”).

After the ‘483

application was rejected, Attorney Florek, acting on behalf of
MadGrip, submitted amended claims to the USPTO and asked for
further examination.

The examiner reportedly rejected many of

the amended claims on the basis of certain “prior art,” including
patents granted to the aforementioned J. M. Edwards showing a
rubber-coated glove, and to “Koliwer” showing injection molding
in clothing articles such as boots.

According to West Chester,

“the examiner found MadGrip’s purported invention in many of the
claims was obvious in light of the combination of the two (among
other references).”

Id. at 18.

The examiner also commented that certain claims would be
allowable if rewritten independently.

West Chester alleges that

according to the examiner, a glove would be new, and therefore
patentable, if the rubberized portion either extended 360 degrees
around the back of the hand or terminated on the palm.

“Put

differently, the examiner found that a glove with a rubberized
portion that goes around to the back of the hand a little bit,
but does not extend all the way around, would not be patentable

5

in light of Edwards and Koliwer.”

Id. at 19.

West Chester

contends that MadGrip revised its claims to conform with the
examiner’s statements, and that on March 24, 2016, those claims
were allowed and the ‘202 Patent issued.
West Chester alleges that the Sumo Grip glove has a molded
portion that extends to the back of the glove, but does not
extend 360 degrees around the body of the glove.

In other words,

according to West Chester, the Sumo Grip glove is similar to a
glove that the examiner concluded would not be patentable.
Nonetheless, Attorney Florek and MadGrip are allegedly asserting
that the ‘202 Patent “cover[s] a glove in which the molded
portion does not terminate on the palm, and does not extend 360
degrees around the main body of the glove.”

Id. at 21.

West Chester argues that, given the alleged inconsistency
between MadGrip’s infringement claim and the ‘202 Patent, the
examiner must have misunderstood MadGrip’s application and that
MadGrip failed to notify him of the error.

Hence, West Chester

claims that MadGrip and its counsel violated their duty of candor
by misleading the examiner into issuing the ‘202 Patent, and that
this inequitable conduct renders the patent unenforceable.
In a proposed amended pleading, West Chester seeks to
supplement its claim of inequitable conduct based upon newlydiscovered evidence.

West Chester submits that in the course of

early discovery, it learned that during the patent application

6

process Attorney Florek submitted a declaration to the examiner
from consultant James Stevenson.

Mr. Stevenson stated in his

declaration that he had been retained by a third party glove
manufacturer.

West Chester has recently learned that this third-

party was, in fact, an entity that was cooperating with MadGrip
to obtain the patent.

Attorney Florek allegedly offered Mr.

Stevenson’s opinions to the examiner without disclosing that
relationship.
West Chester also claims that Mr. Stevenson mentioned five
patents in his declaration, but did not provide copies of the
patents.

Further, those patents were not included in MadGrip’s

Information Disclosure Statement (“IDS”).

One of those patents

reportedly disclosed a method of using elastomer to mold a glove
into the shape of a hand or part of a hand, while the other
allegedly described injection molding in boots that could be
applied to gloves as well.

ECF No. 31 at 31.

West Chester

claims that the duty of candor required disclosure of material
patent references, and that the failure to include those five
patents in the IDS meant that they were not considered by the
examiner.
Finally, West Chester asserts that the Sumo Grip glove has
many aspects that are not subject to the claims in the ‘202
Patent.

For example, West Chester notes that the molded portion

of the Sumo Grip glove has no palm with edges, and no middle set

7

to form a concave shape.

These plain differences, West Chester

claims, are further evidence of bad faith and deceptive intent.
Echoing its affirmative defenses, West Chester’s
counterclaims contend that MadGrip’s patent claims include the
limitation of a palm having a middle and edges, “‘wherein the
middle of the palm is set in front from the heel, the front, the
thumb side and the outer side of the palm to form a concave
shape.’” Id. at 27.

West Chester submits that the Sumo Grip, in

its resting state, has a convex palm with a middle that is higher
than the rest of the surrounding palm, and thus cannot be
infringing.
infringement.

Count I of West Chester’s counterclaims alleges nonCount II asserts invalidity.

Count III alleges

unenforceability due to inequitable conduct.
Discussion
I.

MadGrip’s Motions to Strike and to Dismiss
MadGrip contends that West Chester has failed to assert

facts that, even if true, would support a claim of inequitable
conduct.

MadGrip therefore moves to strike West Chester’s

affirmative defenses and to dismiss its counterclaims.
A.

Pleading Standards

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
8

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).
With respect to West Chester’s counterclaims, “[a] motion to
dismiss a counterclaim is evaluated under the same standard as a
motion to dismiss a complaint.”

Radiancy, Inc. v. Viatek

Consumer Prods. Grp., Inc., 138 F. Supp. 3d 303, 313 (S.D.N.Y.
2014).

To survive a motion to dismiss under Rule 12(b)(6), a

counterclaim must allege facts that, accepted as true, “state a
claim for relief that is plausible on its face.”

Ashcroft v.

Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 570 (2007)).

This standard “require[s]

enough facts to ‘nudge [the] claims across the line from
conceivable to plausible.’”
557).

Id. (quoting Twombly, 550 U.S. at

“Threadbare recitals of the elements of a cause of action,

supported by mere conclusory statements, do not suffice.”
556 U.S. at 678.

Courts have held that this same pleading
9

Iqbal,

standard applies to a motion to strike an affirmative defense.
Optigen, LLC v. Int’l Genetics, Inc., 777 F. Supp. 2d 390, 399
(N.D.N.Y. 2011); Aspex Eyewear, Inc. v. Clariti Eyewear, Inc.,
531 F. Supp. 2d 620, 622 (S.D.N.Y. 2008).
When a case involves a patent claim, Federal Circuit law
determines the applicable pleading standard.

Exergen Corp. v.

Wal–Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009).

The

Federal Circuit has held that a claim of patent unenforceability
premised upon inequitable conduct sounds in fraud, and must
therefore be pled with particularity as required by Federal Rule
of Civil Procedure 9(b).

Id. at 1331 (citing Ferguson

Beauregard/Logic Controls, Div. of Dover Res. v. Mega Systems,
LLC, 350 F.3d 1327, 1344 (Fed. Cir. 2003)).

To plead 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.”

Id. at 1328.

“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.”

Id. at 1327 n.3; see also

Delano Farms Co. v. California Table Grape Comm’n, 655 F.3d 1337,
10

1350 (Fed. Cir. 2011), cert. denied, 133 S.Ct. 644 (2012).

While

intent “may be averred generally” under Rule 9(b), a pleading of
inequitable conduct “must include sufficient allegations of
underlying facts from which a court may reasonably infer that a
specific individual” acted with the requisite state of mind.
Exergen, 575 F.3d at 1328.

The Federal Circuit has noted that

“[b]ecause direct evidence of deceptive intent is rare, a
district court may infer intent from indirect and circumstantial
evidence.”

Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d

1276, 1290 (Fed. Cir. 2011).
B.

MadGrip’s Conduct after the Examiner’s Comments

As discussed above, West Chester contends that Attorney
Florek and MadGrip clearly believed that the ‘202 Patent was
broader than what was described by the examiner, and had a duty
to communicate that belief.

MadGrip asserts that it had no duty

to communicate any disagreement with the examiner, and that even
assuming particularity, West Chester has failed to state a
plausible claim of inequitable conduct.

See, e.g., Capella

Photogenics, Inc. v. Cisco Sys., 77 F. Supp. 3d 850, 859-60 (N.D.
Cal. 2014) (striking affirmative defense because “the behavior
alleged simply cannot constitute inequitable conduct”).
The duty of good faith, candor, and honesty is an
affirmative duty to disclose information and documents that may
affect whether the USPTO grants a patent to the invention.
11

Honeywell Int’l, Inc. v. Universal Avionics Sys. Corp., 488 F.3d
982, 999 (Fed. Cir. 2007).

As one district court has explained:

The process of obtaining and maintaining a patent from
The United States Patent and Trademark Office (USPTO),
called patent prosecution, is essentially an ex parte
process between the patent applicant and the USPTO.
See generally Atlas Powder Co. v. Ireco Chemicals, 773
F.2d 1230, 1234 (Fed. Cir. 1985). Because of the ex
parte nature of patent prosecution, the USPTO and case
law require persons involved in patent prosecution,
including the patent attorney and inventors, to deal
honestly and in good faith with the USPTO during patent
prosecution.
Dura Operating Corp. v. Magna Int’l, 2011 WL 869372, at *1 (E.D.
Mich. Mar. 10, 2011).

This duty is reflected in a federal

regulation, 37 C.F.R. § 1.56, which requires those associated
with procuring a patent, including the patent attorney and
inventor, to affirmatively disclose material information that is
relevant to patentability.

The regulation also provides that

“[t]here is no duty to submit information which is not material
to the patentability of any existing claim.”
1.56(a).

37 C.F.R. §

Information is material if: “(1) It establishes, by

itself or in combination with other information, a prima facie
case of unpatentability of a claim; or (2) It refutes, or is
inconsistent with, a position the applicant takes in: (i)
Opposing an argument of unpatentability relied on by the Office,
or (ii) Asserting an argument of patentability.”

Id.; see

Bruno Indep. Living Aids, Inc. v. Acorn Mobility Servs., Ltd.,
394 F.3d 1348, 1352 (Fed. Cir. 2005) (“In evaluating materiality,

12

we have consistently referred to the definition provided in 37
C.F.R. § 1.56 . . . .”).
MadGrip argues that the information allegedly withheld,
which was essentially the patent applicant’s personal beliefs
about the scope of his patent, was not material.

For support,

MadGrip cites case law pertaining to claim construction.
32 at 11.

ECF No.

It is well established that claim construction is

distinct from an analysis of claims under Rule 12(b).

See, e.g.,

Deston Therapeutics LLC v. Trigen Labs. Inc., 723 F. Supp. 2d
665, 670 (D. Del. 2010) (“the process for properly construing a
patent claim is unsuited for a motion to dismiss”).

Nonetheless,

under the test for materiality set forth in the regulations,
MadGrip and its attorney did not withhold any material
information.

First, MadGrip’s silence did not, standing alone,

establish a prima facie case of unpatentability.

Nor did MadGrip

act in a way that was inconsistent with (a) a position it had
taken in opposing an argument of unpatentability relied upon by
the USPTO, or (b) a position it took while asserting an argument
of patentability.

The claim here is that MadGrip’s understanding

was inconsistent with the examiner’s view, not with its own prior
positions or arguments.
Furthermore, MadGrip did not implicitly accept the
examiner’s viewpoint.

MadGrip cites the Manual of Patent

Examining Procedure (“MPEP”), which states that “[t]he failure of

13

the applicant to comment on the examiner’s statement of reasons
for allowance should not be treated as acquiescence to the
examiner’s statement.

See Salazar v. Procter & Gamble Co., 414

F.3d 1342 (Fed. Cir. 2005).”

MPEP 1302.14(V).1

The MPEP also

provides that “[t]he examiner’s statement should not create an
estoppel.
Id.

Only applicant’s statement should create an estoppel.”

MadGrip made no affirmative statement with respect to the

examiner’s commentary that would now bar it from asserting its
view of the patent.

See, e.g., Salazar, 414 F.3d at 1345 (“an

applicant’s silence regarding statements made by the examiner
during prosecution, without more, cannot amount to a clear and
unmistakable disavowal of claim scope”) (internal quotation marks
omitted).

West Chester’s claim of inequitable conduct based on

MadGrip’s alleged failure to state its disagreement with the
examiner therefore fails as a matter of law, and the motions to
strike and dismiss on that point are granted.
C.

Other Allegations of Inequitable Conduct

West Chester’s amended claims further assert inequitable
conduct with respect to the Stevenson declaration.

1

West Chester

The Federal Circuit has noted that the MPEP is not binding and
does not have the force of law, but “is well known to those registered
to practice in the PTO and reflects the presumptions under which the
PTO operates.” In re Beigel, 7 F. App’x 959, 965 (Fed. Cir. 2001)
(quoting Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120
F.3d 1253, 1257 (Fed. Cir. 1997)).

14

alleges that although Mr. Stevenson mentioned several relevant
prior patents in his declaration, he failed to “submit a copy of
any of these patents or any of the language or figures from
them.”

ECF No. 31 at 29.

Those patents were allegedly not a

part of the IDS, and were not listed as having been reviewed as
part of either the ‘483 application or the ‘202 Patent.

West

Chester also claims that Attorney Florek and MadGrip listed these
prior patents in the IDS for other, related applications, thus
suggesting that the patents are material to the ‘202 Patent as
well.
The Court finds that West Chester’s affirmative defenses and
counterclaims on this point have been adequately pled.

In

addition to setting forth, in significant detail, the relevant
actors, subjects, locations, dates, and modes of the alleged
misconduct, West Chester’s allegations also allow for reasonable
inferences of both materiality and intent.

Specifically, The

“who” in the allegations is Attorney Florek as the person in
direct contact with the USPTO during patent prosecution.

The

“what” and “how” are the acts of withholding the relationship
between MadGrip and the third party entity that retained Mr.
Stevenson, as well as withholding allegedly-material patent
information in its IDS.

As to “when” and “where,” West Chester

alleges that Attorney Florek submitted the Stevenson declaration
on December 17, 2013.

15

The standard for pleading inequitable conduct in a patent
proceeding requires not only materiality and a failure to
disclose, but also the intent to deceive.
F.3d at 1327 n.3.

Exergen Corp., 575

As noted above, direct evidence of intent is

rarely revealed, and circumstantial evidence may support for such
a claim.

Therasense, Inc., 649 F.3d at 1290.

Here, the alleged

conduct offers a plausible claim that the duty of candor was
violated, as material information about patentability, as well as
a conflict of interest, was allegedly withheld in order to
ultimately obtain a patent.

The alleged omissions also present a

pattern of conduct that permits a reasonable inference of intent.
See, e.g., Synventive Molding Sols., Inc. v. Husky Injection
Molding Sys., Inc., 2009 WL 3172740, at *3 (D. Vt. Oct. 1, 2009)
(submitting “a drawing to the PTO that omitted the features that
allegedly rendered the pending claims unpatentable could give
rise to an inference that they did so knowingly and with
deceptive intent”).

Accordingly, at the pleadings stage, the

Court will allow West Chester to proceed with its affirmative
defenses and counterclaims related to Mr. Stevenson.

MadGrip’s

motion to strike those defenses and dismiss those counterclaims
is denied.
II.

West Chester’s Motion to Amend
Under the Federal Rules of Civil Procedure, courts “should

freely give leave [to amend] when justice so requires.” Fed. R.
16

Civ. P. 15(a)(2).

“A district court has broad discretion in

determining whether to grant leave to amend. . . .”
Winehouse, 235 F.3d 792, 801 (2d Cir. 2000).

Gurary v.

Leave to amend

“should not be denied unless there is evidence of undue delay,
bad faith, undue prejudice to the non-movant, or futility.”
Milanese v. Rust-Oleum Corp., 244 F.3d 104, 110 (2d Cir. 2001)
(citing Foman v. Davis, 371 U.S. 178, 182 (1962)).
West Chester seeks leave to amend its pleadings to add the
claims related to the Stevenson declaration and the alleged
omissions in the IDS.

Because the Court finds that West Chester

has satisfied the relevant pleadings standards and has offered
plausible claims, the motion to amend is granted.
Conclusion
For the reasons set forth above, MadGrip’s initial motion to
dismiss and motion to strike are granted.

MadGrip’s subsequent

motions to dismiss and to strike are granted in part, consistent
with the Court’s ruling on their initial motions, and denied with
respect to the issues involving Mr. Stephenson.

West Chester’s

motion to amend is granted, and the parties’ joint motion for a
protective order is also granted.
DATED at Burlington, in the District of Vermont, this 27th
day of September, 2017.
/s/ William K. Sessions III
William K. Sessions III
District Court Judge
17