Goss v. MAN Roland, et a l . 03-CV-513-SM 08/14/07 UNITED STATES DISTRICT COURT
DISTRICT OF NEW HAMPSHIRE
Goss International Americas, I nc., Plaintiff
v. Civil No. 03-CV-513-SM Opinion No. 2007 DNH 096 MAN Roland, Inc. and MAN Roland Druckmaschinen A G , Defendants
MAN Roland, Inc. and MAN Roland Druckmaschinen A G , Counterclaim Plaintiffs
v.
Goss International Americas, Inc. and Heidelberqer Druckmaschinen AG, Counterclaim Defendants
O R D E R
On January 6, 2006, MAN Roland moved for summary judgment on
its third counterclaim, seeking a declaratory judgment of
unenforceability based upon a variety of alleged inequitable
conduct (document no. 173). On July 31, 2006, the court denied
MAN Roland's motion, finding that MAN Roland failed to provide
clear and convincing evidence of inequitable conduct (document
no. 418). Goss now moves for summary judgment that the '100,
'734, and '251 patents-in-suit are not unenforceable for
inequitable conduct (document no. 441), arguing that the alleged inequitable conduct, even if true, is not relevant to the
pa t ents- i n - s u i t .
The Applicable Law
"A patent may be rendered unenforceable for inequitable
conduct if an applicant, with intent to mislead or deceive the
examiner, fails to disclose material information or submits
materially false information to the PTO during prosecution."
Atofina v. Great Lakes Chem. C o r p . . 441 F.3d 991, 1001 (Fed. Cir.
2006) (quoting Digital Control. Inc. v. Charles Mach. W o r k s . 437
F.3d 1309, 1313 (Fed. Cir. 2006)). Both of these elements,
intent and materiality, must be proven by clear and convincing
evidence. M. Eagles Tool Warehouse. Inc. v. Fisher Tooling C o . .
439 F.3d 1335, 1340 (Fed. Cir. 2006) (citing J.P. Stevens & Co.
v . Lex Tex L t d ., 747 F.2d 1553, 1559 (Fed. Cir. 1984)).
The Federal Circuit has held that "a finding of inequitable
conduct in the acquisition of even a single claim of a patent
renders the remaining claims of that patent unenforceable, even
those without the taint of inequitable conduct." Pharmacia Corp.
v. Par P h a r m . . I nc.. 417 F.3d 1369, 1374-75 (Fed. Cir. 2005)
(citing Kingsdown Med. Consultants. Ltd. v. Hollister. I nc.. 863
F.2d 867, 877 (Fed. Cir. 1988)). But, "the court's inequitable
2 conduct cases do not extend inequitable conduct in one patent to
another patent that was not acquired through culpable c o n d u c t ."
Id.
Discussion
Goss asserts that even if it had engaged in inequitable
conduct related to the revival of the /587 application, such
conduct would be irrelevant to this case, because the prosecution
chain that led to the /100, /734, and /251 patents is wholly
separate from the revived /587 application.1
MAN Roland argues that the relevant inquiry is not whether
the ancestry of the patents-in-suit can be traced back to the
revival of the /587 application, but rather, whether any of the
claims in the patents-in-suit protect the same subject matter at
issue in the revived /587 application. The need to determine the
1 MAN Roland asserts throughout its objection that Goss has conceded, albeit for the purposes of this motion only, that Goss (through its then subsidiary, Heidelberg Harris) engaged in inequitable conduct when it revived the /587 application. Goss, however, makes no such concession. Goss argues that the alleged misconduct, even if true, is not relevant to the enforceability of the patents. Goss's motion asserts, quite clearly, that MAN Roland's "allegations of bad-faith patent prosecution are wrong, but because the three patents-in-suit are enforceable in any event, MAN Roland's inequitable-conduct [sic] defense should be d i s m i s s e d ."
3 similarity of the subject matter, says MAN Roland, raises genuine
disputes as to material facts which preclude summary judgment.
In an order dated March 3, 2007 (document no. 463) the court
considered the same operative facts in the context of
Heidel b e r g e r ''s motion for summary judgment on MAN Roland's
antitrust cross-claim. Specifically, Heidelberger moved for
summary judgment on MAN Roland's cross-claim asserting sham
litigation on the basis that Heidelberger knew or should have
known that the 'lOO and 'VSi patents were invalid and
unenforceable because of inequitable conduct related to the J581
application revival. Heidelberger argued in that motion, just as
Goss argues presently, that the patents-in-suit were unrelated to
the revival J581 application. MAN Roland objected, but ignored
the issue entirely, thereby conceding the point.2 A review of
the record also revealed that the 'lOO and 'ISA patents traced
their ancestry back through continuations that predated the
abandonment and subsequent revival of the J581 application.
2 See L.R. 7 . 2 ( b ) (2) ("All properly supported material facts set forth in the moving party's factual statement shall be deemed admitted unless properly opposed by the adverse party").
4 Regarding the present motion, MAN Roland brings forward no
new evidence. The record still reflects that the /100 and /734
patents, as well as the /251 patent that was not at issue in the
court's March 12 order, trace their origins back through a chain
of continuations that predate the abandonment of the original
J581 application. Specifically, all of the patents-in-suit can
be traced back to the J668 application, a continuation of the
original J581 application. The J668 application was filed on May
14, 1991, but claims a priority date of October 5, 1989, based on
the original filing date of the J581 application. See 35 U.S.C.
§ 120 (articulating the conditions under which an inventor may
claim the benefit of an earlier filing date). The original J581
application was not abandoned until May 27, 1991, several days
after the J668 application was filed. The alleged inequitable
conduct occurred in connection with the revival of the J581
application, which did not take place until June 24, 1992.
In its opposition, MAN Roland, citing Fox Industries. Inc.
v. Structural Preservation Systems. I nc.. 922 F.2d 801, 804 (Fed.
Cir. 1990), correctly notes that "[i ]nequitable conduct occurring
early in the prosecution of a chain of patent applications may
render unenforceable all claims issuing from later-filed
applications." The record in this case, however, establishes two
5 separate and independent prosecution chains: one that derived
from the original /587 application, and one that derived from the
revived /587 application. Although inequitable conduct in the
revival of the /587 application might well taint the chain of
applications that arose out of the revived /587 application,3 it
cannot be said that such inequitable conduct could have tainted
the '668 application from which all of the relevant subsequent
applications, including those that matured into the patents-in-
suit, derived.
Simply put, the /668 application, from which the patents-in-
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Goss v. MAN Roland, et a l . 03-CV-513-SM 08/14/07 UNITED STATES DISTRICT COURT
DISTRICT OF NEW HAMPSHIRE
Goss International Americas, I nc., Plaintiff
v. Civil No. 03-CV-513-SM Opinion No. 2007 DNH 096 MAN Roland, Inc. and MAN Roland Druckmaschinen A G , Defendants
MAN Roland, Inc. and MAN Roland Druckmaschinen A G , Counterclaim Plaintiffs
v.
Goss International Americas, Inc. and Heidelberqer Druckmaschinen AG, Counterclaim Defendants
O R D E R
On January 6, 2006, MAN Roland moved for summary judgment on
its third counterclaim, seeking a declaratory judgment of
unenforceability based upon a variety of alleged inequitable
conduct (document no. 173). On July 31, 2006, the court denied
MAN Roland's motion, finding that MAN Roland failed to provide
clear and convincing evidence of inequitable conduct (document
no. 418). Goss now moves for summary judgment that the '100,
'734, and '251 patents-in-suit are not unenforceable for
inequitable conduct (document no. 441), arguing that the alleged inequitable conduct, even if true, is not relevant to the
pa t ents- i n - s u i t .
The Applicable Law
"A patent may be rendered unenforceable for inequitable
conduct if an applicant, with intent to mislead or deceive the
examiner, fails to disclose material information or submits
materially false information to the PTO during prosecution."
Atofina v. Great Lakes Chem. C o r p . . 441 F.3d 991, 1001 (Fed. Cir.
2006) (quoting Digital Control. Inc. v. Charles Mach. W o r k s . 437
F.3d 1309, 1313 (Fed. Cir. 2006)). Both of these elements,
intent and materiality, must be proven by clear and convincing
evidence. M. Eagles Tool Warehouse. Inc. v. Fisher Tooling C o . .
439 F.3d 1335, 1340 (Fed. Cir. 2006) (citing J.P. Stevens & Co.
v . Lex Tex L t d ., 747 F.2d 1553, 1559 (Fed. Cir. 1984)).
The Federal Circuit has held that "a finding of inequitable
conduct in the acquisition of even a single claim of a patent
renders the remaining claims of that patent unenforceable, even
those without the taint of inequitable conduct." Pharmacia Corp.
v. Par P h a r m . . I nc.. 417 F.3d 1369, 1374-75 (Fed. Cir. 2005)
(citing Kingsdown Med. Consultants. Ltd. v. Hollister. I nc.. 863
F.2d 867, 877 (Fed. Cir. 1988)). But, "the court's inequitable
2 conduct cases do not extend inequitable conduct in one patent to
another patent that was not acquired through culpable c o n d u c t ."
Id.
Discussion
Goss asserts that even if it had engaged in inequitable
conduct related to the revival of the /587 application, such
conduct would be irrelevant to this case, because the prosecution
chain that led to the /100, /734, and /251 patents is wholly
separate from the revived /587 application.1
MAN Roland argues that the relevant inquiry is not whether
the ancestry of the patents-in-suit can be traced back to the
revival of the /587 application, but rather, whether any of the
claims in the patents-in-suit protect the same subject matter at
issue in the revived /587 application. The need to determine the
1 MAN Roland asserts throughout its objection that Goss has conceded, albeit for the purposes of this motion only, that Goss (through its then subsidiary, Heidelberg Harris) engaged in inequitable conduct when it revived the /587 application. Goss, however, makes no such concession. Goss argues that the alleged misconduct, even if true, is not relevant to the enforceability of the patents. Goss's motion asserts, quite clearly, that MAN Roland's "allegations of bad-faith patent prosecution are wrong, but because the three patents-in-suit are enforceable in any event, MAN Roland's inequitable-conduct [sic] defense should be d i s m i s s e d ."
3 similarity of the subject matter, says MAN Roland, raises genuine
disputes as to material facts which preclude summary judgment.
In an order dated March 3, 2007 (document no. 463) the court
considered the same operative facts in the context of
Heidel b e r g e r ''s motion for summary judgment on MAN Roland's
antitrust cross-claim. Specifically, Heidelberger moved for
summary judgment on MAN Roland's cross-claim asserting sham
litigation on the basis that Heidelberger knew or should have
known that the 'lOO and 'VSi patents were invalid and
unenforceable because of inequitable conduct related to the J581
application revival. Heidelberger argued in that motion, just as
Goss argues presently, that the patents-in-suit were unrelated to
the revival J581 application. MAN Roland objected, but ignored
the issue entirely, thereby conceding the point.2 A review of
the record also revealed that the 'lOO and 'ISA patents traced
their ancestry back through continuations that predated the
abandonment and subsequent revival of the J581 application.
2 See L.R. 7 . 2 ( b ) (2) ("All properly supported material facts set forth in the moving party's factual statement shall be deemed admitted unless properly opposed by the adverse party").
4 Regarding the present motion, MAN Roland brings forward no
new evidence. The record still reflects that the /100 and /734
patents, as well as the /251 patent that was not at issue in the
court's March 12 order, trace their origins back through a chain
of continuations that predate the abandonment of the original
J581 application. Specifically, all of the patents-in-suit can
be traced back to the J668 application, a continuation of the
original J581 application. The J668 application was filed on May
14, 1991, but claims a priority date of October 5, 1989, based on
the original filing date of the J581 application. See 35 U.S.C.
§ 120 (articulating the conditions under which an inventor may
claim the benefit of an earlier filing date). The original J581
application was not abandoned until May 27, 1991, several days
after the J668 application was filed. The alleged inequitable
conduct occurred in connection with the revival of the J581
application, which did not take place until June 24, 1992.
In its opposition, MAN Roland, citing Fox Industries. Inc.
v. Structural Preservation Systems. I nc.. 922 F.2d 801, 804 (Fed.
Cir. 1990), correctly notes that "[i ]nequitable conduct occurring
early in the prosecution of a chain of patent applications may
render unenforceable all claims issuing from later-filed
applications." The record in this case, however, establishes two
5 separate and independent prosecution chains: one that derived
from the original /587 application, and one that derived from the
revived /587 application. Although inequitable conduct in the
revival of the /587 application might well taint the chain of
applications that arose out of the revived /587 application,3 it
cannot be said that such inequitable conduct could have tainted
the '668 application from which all of the relevant subsequent
applications, including those that matured into the patents-in-
suit, derived.
Simply put, the /668 application, from which the patents-in-
suit ultimately derive, predates the alleged inequitable conduct.
Accordingly, the inequitable conduct could not have tainted the
chain of applications that ultimately gave rise to the patents-
in-suit.
Conclusion
For the reasons given, the motion for summary judgment
(document no. 441) is granted.
3 Namely, the /152 application, filed on October 16, 1992, the /710 application filed on April 27, 1995, and the ''581 application filed on January 5, 1996, none of which matured into an issued patent.
6 SO ORDERED.
Steven J./McAuliffe Chief Judge
August 14, 2 00 7
cc: Daniel E. Will, Esq. Hugh T. Lee, Esq. Richard S. Gresalfi, Esq. Georg C. Reitboeck, Esq. Mark A. Hannemann, Esq. Michael J. Lennon, Esq. T. Gy Walker, Esq. Jonathan M. Shirley, Esq. Alfred H. Hemingway, Jr., Esq. Irvin D. Gordon, Esq. Martin B. Pavane, Esq. Michael J. Songer, Esq. Shari R. Lahlou, Esq. Sidney R. Bresnick, Esq. Teodor J. Holmberg, Esq. Richard D. Margiano, Esq. Russell Beck, Esq. John F. Sweeney, Esq. Tony V. Pezzano, Esq. Bruce W. Felmly, Esq. Seth J. Atlas, Esq. Steven F. Meyer, Esq. Anthony S. Augeri, Esq.