United States District Court, E.D. Wisconsin
DECISION AND ORDER
William C. Griesbach, Chief Judge.
action for patent infringement, Plaintiff Acantha LLC accuses
Defendants DePuy Synthes Sales, Inc., DePuy Synthes Products
Inc., DePuy Synthes Inc., Johnson & Johnson Inc., Synthes
Inc., Synthes USA LLC, DePuy Orthopaedics Inc., and DePuy
Spine LLC of infringing its patent U.S. Reissued Patent No.
RE43, 008 (the ‘008 Patent). Currently pending before
the court are Acantha's motion for judgment on the
pleadings and motion to strike Defendants' invalidity
contentions as well as Defendants' motion to reduce the
number of Acantha's asserted claims and motion to compel.
The court will address each motion in turn.
Acantha's Motion for Judgment on the Pleadings
15, 2017, Defendants filed an amended answer and counterclaim
asserting numerous affirmative defenses and three
counterclaims. Among the affirmative defenses Defendants
asserted in their amended answer is an allegation that the
‘008 Patent is unenforceable because Acantha engaged in
inequitable conduct before the United States Patent and
Trademark Office (USPTO) in its application for re-issuance
of Patent No. 6, 261, 291 (the ‘291 Patent) that
preceded it. Am. Compl., Aff. Def. ¶ 11, ECF No. 84.
Count Three of Defendants' counterclaims against Acantha
seeks a declaration that the ‘008 Patent is invalid
based on the same allegations of inequitable conduct.
Id. at 19. Acantha has filed a motion seeking
partial judgment on the pleadings, or alternatively, a motion
to strike. ECF No. 91. Acantha contends that Defendants'
allegations regarding its inequitable conduct defense are
insufficient to support that defense and respective
counterclaim for declaratory relief as a matter of law.
12(c) of the Federal Rules of Civil Procedure permits a party
to seek judgment on the pleadings after the pleadings have
been closed. Buchanan-Moore v. Cnty. of Milwaukee,
570 F.3d 824, 827 (7th Cir. 2009). Courts apply the same
standard in deciding a motion for judgment on the pleadings
as they do in deciding a motion to dismiss. Landmark Am.
Ins. Co. v. Hilger, 838 F.3d 821, 824 (7th Cir. 2016).
The facts are viewed in the light most favorable to the
non-movant. Id. To survive a motion to dismiss or
for judgment on the pleadings, the challenged pleading must
“contain sufficient factual matter, accepted as true,
‘to state a claim to 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 (2009)).
conduct is an equitable defense to patent infringement that,
if proved, bars enforcement of a patent.”
Therasense, Inc. v. Becton, Dickinson & Co., 649
F.3d 1276, 1285 (Fed. Cir. 2011). To satisfy the elements of
inequitable conduct at the pleadings stage, a defendant must
allege that the patent applicant “(1) made an
affirmative misrepresentation of fact, submitted false
material information, or failed to disclose material
information; and (2) intended to deceive the PTO.”
CIVIX-DDI, LLC v. Hotels.com, L.P., 711 F.Supp.2d
839, 843 (N.D. Ill. 2010) (citing Rentrop v.
Spectranetics Corp., 550 F.3d 1112, 1119 (Fed. Cir.
2008); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306,
1314 (Fed. Cir. 2008)). That is, a patent applicant engages
in inequitable conduct if he “misrepresented or omitted
material information with the specific
intent to deceive the PTO.”
Therasense, 649 F.3d at 1287 (emphasis added).
of inequitable conduct must be pled with particularity in
accordance with Rule 9(b) of the Federal Rules of Civil
Procedure. See Exergen Corp. v. Wal-Mart Stores,
Inc., 575 F.3d 1312, 1326-27 (Fed. Cir. 2009) (noting
that 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)”); Cent. Admixture Pharm. Servs.,
Inc. v. Advanced Cardiac Solutions, P.C., 482 F.3d 1347,
1356 (Fed. Cir. 2007). In Exergen, the Federal
Circuit adopted the Seventh Circuit's position on what
sufficient pleadings in fraud cases are, as articulated in
DiLeo v. Ernst & Young, 901 F.2d 624, 627 (7th
Cir. 1990), and concluded that
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. Moreover, although
“knowledge” and “intent” may be
averred generally, a pleading 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 representation, and (2)
withheld or misrepresented this information with a specific
intent to deceive the PTO.
575 F.3d at 1328-29.
their amended answer and counterclaim, Defendants allege that
the named inventors of the ‘008 Patent sought reissue
of the ‘291 Patent based on knowingly false information
contained in the reissue declarations they submitted to the
Patent Office. In particular, Defendants assert that Talaber,
one of the named inventors, submitted a declaration to the
USPTO which stated that Acantha had initially claimed less
than it had a right to claim and that the new claims it
sought to reissue were broader than the original claims in
the ‘291 Patent. Specifically, the Declaration states:
Originally issued claims 1-20 of U.S. Patent No. 6, 261, 291
claimed less than patentees had a right to claim because
claims 1-20 are directed to an orthopedic implant assembly
that requires, inter alia, “a biased stopping
member”. New claim 63 is directed to an orthopedic
implant assembly that includes a stopping member but the
claim does not require the stopping member to be biased.
Am. Compl. at 13-14. Defendants allege that this statement is
false because Talaber testified at his deposition more than
five years later that the ‘008 Patent and the
‘291 Patent are identical in scope and that Acantha
never intended to broaden the scope of the original claims.
Instead, Defendants allege, Talaber testified repeatedly that
the purpose for the reissue application was only to clarify
the scope of the claims. Because it is clear the regulations
governing applications for reissue do not allow reissue
merely to clarify claims, Defendants contend that Talaber
lied to the USPTO when he stated in his declaration that the
application sought to broaden the claims to include
additional matter covered by the patent that had been
of Talaber's testimony five years later, however, it is
clear from the declaration and the action taken by the USPTO
that he did not engage in inequitable conduct. The plain fact
remains that claims 1-20 of the ‘291 Patent were
directed to an orthopedic implant assembly that required
“a biased stopping member”, whereas new claim 63,
which later became claim 44 of the ‘008 Patent, is
directed to an orthopedic implant assembly that includes a
stopping member, but the claim does not require the stopping
member to be biased. In other words, claim 44 removed a
limitation contained in the claims of the ‘291 Patent
and thereby broadened the scope of the patent. It necessarily
follows that Talaber's declaration is not false. The
change requested by Talaber, and granted by the USPTO, as a
matter of objective fact, broadened the scope of the
‘291 Patent. Because the declaration is objectively
true, Defendants' allegations of inequitable conduct
necessarily fail. Accordingly, Acantha's motion to
dismiss Count Three of Defendants' counterclaims and
their affirmative defense, paragraph 11, are granted.