Goss v . MAN Roland 03-CV-513-SM 03/12/07 UNITED STATES DISTRICT COURT DISTRICT OF NEW HAMPSHIRE
Goss International Americas, Inc., Plaintiff
v.
MAN Roland, Inc. and MAN Roland Druckmaschinen AG, Defendants Civil N o . 03-cv-513-SM Opinion N o . 2007 DNH 029 MAN Roland, Inc. and MAN Roland Druckmaschinen AG Counterclaim Plaintiffs
v. Goss International Americas, Inc. and Heidelberger Druckmaschinen AG, Counterclaim Defendants
O R D E R
In a prior order (document n o . 1 0 1 ) , the court dismissed
Count 5 of MAN Roland’s counterclaim against Heidelberger, to the
extent it relates to the ‘251 patent. A subsequent order
(document n o . 410) granted summary judgment in Heidelberger’s
favor on the Walker Process claims in Count 5 , as they relate to
the ‘734 and ‘100 patents. All that remains of Count 5 is the
sham litigation and Walker Process claim to the extent they
relate to the ‘587 application. Heidelberger has filed a motion for summary judgment,
arguing that both the sham litigation and Walker Process claims
fail because revival of the ‘587 application was immaterial to
prosecution of the ‘100 and ‘734 patents. MAN Roland objects by
what it terms a “preliminary objection,”1 that does not address
the materiality issue, and instead focuses on whether the ‘587
patent was improperly revived and who, within Heidelberger, was
authorized to make the decisions to abandon and later revive the
application.
The Legal Standard
Section 2 of the Sherman Antitrust Act makes it unlawful for
any person to “monopolize, or attempt to monopolize . . . any
part of the trade or commerce among the several States.”
15 U.S.C. § 2 ; see also 15 U.S.C. § 15(a) (granting a private
right of action to “any person who shall be injured in his
business or property by reason of anything forbidden in the
antitrust laws”). A successful monopolization claim under
section 2 requires actual monopoly power and a wrongful act
designed to enhance that power. Town of Norwood v . N.E. Power
1 MAN Roland has also asked the court for additional time to more fully respond to Heidelberger’s motion (document n o . 4 3 4 ) , asserting that it needs additional discovery on the issue of the ‘587 application. Because the court resolves the instant motion on independent grounds, however, the motion for additional time is moot.
2 Co., 202 F.3d 4 0 8 , 420-21 (1st Cir. 2000) (citing Otter Tail
Power C o . v . United States, 410 U.S. 366, 377 (1973); United
States v . Grinnell Corp., 384 U.S. 563, 570-71 (1966)). A
successful attempted monopolization claim under section 2
requires anticompetitive conduct, a specific intent to
monopolize, and a dangerous probability of success. Spectrum
Sports, Inc. v . McQuillan, 506 U.S. 4 4 7 , 454-56 (1993).
Walker Process claims form a subset of section 2 claims in
which the allegedly anticompetitive conduct is the enforcement of
a fraudulently procured patent. Walker Process Equip., Inc. v .
Food Mach. & Chem. Corp., 382 U.S. 1 7 2 , 177 (1965). To establish
a claim for Walker Process fraud, the antitrust plaintiff must
prove, inter alia, that the patentee “obtained the patent by
knowingly and willfully misrepresenting facts to the [PTO],” id.,
and that the party enforcing the patent was aware of the fraud at
the time of enforcement. Nobelpharma AB v . Implant Innovations,
Inc., 141 F.3d 1059, 1069 (Fed. Cir. 1998) (citation omitted).
Moreover,
a finding of Walker Process fraud . . . must be based on independent and clear evidence of deceptive intent together with a clear showing of reliance, i.e., that the patent would not have issued but for the misrepresentation or omission.
Id. at 1071.
3 Sham litigation claims form another subset of section 2
claims, in which the allegedly anticompetitive conduct is the
enforcement of a patent through litigation, with knowledge that
the patent is invalid or not infringed. C.R. Bard, Inc. v . M3
Sys., Inc., 157 F.3d 1340, 1368 (Fed. Cir. 1998). To establish a
claim for sham litigation, the antitrust plaintiff must prove,
inter alia, that the challenged lawsuit is objectively baseless
and subjectively motivated “to interfere directly with the
business relationships of a competitor.” Prof’l Real Estate
Investors v . Columbia Pictures Indus., Inc., 508 U.S. 4 9 , 60-61
(1993) (quoting E . R.R. Presidents Conf. v . Noerr Motor Freight,
Inc., 365 U.S. 1 2 7 , 144 (1961)) (emphasis added in P R E ) . A
lawsuit is objectively baseless if “no reasonable litigant could
realistically expect success on the merits.” PRE, 508 U.S. at
60. A patent infringement suit is objectively baseless when the
infringement plaintiff knows that the patent is invalid or not
infringed. See C.R. Bard, 157 F.3d at 1368.
Discussion
Heidelberger argues that because the ‘587 application was
immaterial to the validity of the ‘100 and ‘734 patents, MAN
Roland’s claims of Walker Process fraud and sham litigation must
4 fail.2 In essence, Heidelberger asserts that even if it had
engaged in inequitable conduct related to the ‘587 application,
such conduct would be irrelevant to this case, because the ‘587
application is unrelated to the ‘100 and ‘734 patents.3
MAN Roland does not address the materiality issue in its
objection, thereby conceding the point.4 Indeed, the record
reveals that both the ‘100 and ‘734 patents can trace their
ancestry back through continuations dated prior to the
abandonment and subsequent revival of the ‘587 application. So,
it cannot be said that Heidelberger knew or should have known
that the ‘100 and ‘734 patents were invalid based upon alleged
inequitable conduct related to the ‘587 application, thereby
2 As discussed above, sham litigation claims may be based upon any objectively baseless action, including situations where the patent infringement plaintiff knows that the patent it seeks to enforce is invalid or not infringed. Here, as Heidelberger notes, MAN Roland has limited its sham litigation claim to allegations of inequitable conduct in the prosecution of the ‘587 patent, a premise to which MAN Roland does not object. See Countercl. Def.’s Mot. Summ. J. (document n o . 425) 24 n . 2 0 . 3 Heidelberger also argues, alternatively, that even if the ‘587 application is germane to the patents in suit, it is liable on neither the Walker Process nor sham litigation claims because its revival of the ‘587 application was proper. Because the motion can be resolved on the materiality issue alone, the court need not consider the alleged inequitable conduct in prosecuting the ‘587 application. 4 See L.R.
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Goss v . MAN Roland 03-CV-513-SM 03/12/07 UNITED STATES DISTRICT COURT DISTRICT OF NEW HAMPSHIRE
Goss International Americas, Inc., Plaintiff
v.
MAN Roland, Inc. and MAN Roland Druckmaschinen AG, Defendants Civil N o . 03-cv-513-SM Opinion N o . 2007 DNH 029 MAN Roland, Inc. and MAN Roland Druckmaschinen AG Counterclaim Plaintiffs
v. Goss International Americas, Inc. and Heidelberger Druckmaschinen AG, Counterclaim Defendants
O R D E R
In a prior order (document n o . 1 0 1 ) , the court dismissed
Count 5 of MAN Roland’s counterclaim against Heidelberger, to the
extent it relates to the ‘251 patent. A subsequent order
(document n o . 410) granted summary judgment in Heidelberger’s
favor on the Walker Process claims in Count 5 , as they relate to
the ‘734 and ‘100 patents. All that remains of Count 5 is the
sham litigation and Walker Process claim to the extent they
relate to the ‘587 application. Heidelberger has filed a motion for summary judgment,
arguing that both the sham litigation and Walker Process claims
fail because revival of the ‘587 application was immaterial to
prosecution of the ‘100 and ‘734 patents. MAN Roland objects by
what it terms a “preliminary objection,”1 that does not address
the materiality issue, and instead focuses on whether the ‘587
patent was improperly revived and who, within Heidelberger, was
authorized to make the decisions to abandon and later revive the
application.
The Legal Standard
Section 2 of the Sherman Antitrust Act makes it unlawful for
any person to “monopolize, or attempt to monopolize . . . any
part of the trade or commerce among the several States.”
15 U.S.C. § 2 ; see also 15 U.S.C. § 15(a) (granting a private
right of action to “any person who shall be injured in his
business or property by reason of anything forbidden in the
antitrust laws”). A successful monopolization claim under
section 2 requires actual monopoly power and a wrongful act
designed to enhance that power. Town of Norwood v . N.E. Power
1 MAN Roland has also asked the court for additional time to more fully respond to Heidelberger’s motion (document n o . 4 3 4 ) , asserting that it needs additional discovery on the issue of the ‘587 application. Because the court resolves the instant motion on independent grounds, however, the motion for additional time is moot.
2 Co., 202 F.3d 4 0 8 , 420-21 (1st Cir. 2000) (citing Otter Tail
Power C o . v . United States, 410 U.S. 366, 377 (1973); United
States v . Grinnell Corp., 384 U.S. 563, 570-71 (1966)). A
successful attempted monopolization claim under section 2
requires anticompetitive conduct, a specific intent to
monopolize, and a dangerous probability of success. Spectrum
Sports, Inc. v . McQuillan, 506 U.S. 4 4 7 , 454-56 (1993).
Walker Process claims form a subset of section 2 claims in
which the allegedly anticompetitive conduct is the enforcement of
a fraudulently procured patent. Walker Process Equip., Inc. v .
Food Mach. & Chem. Corp., 382 U.S. 1 7 2 , 177 (1965). To establish
a claim for Walker Process fraud, the antitrust plaintiff must
prove, inter alia, that the patentee “obtained the patent by
knowingly and willfully misrepresenting facts to the [PTO],” id.,
and that the party enforcing the patent was aware of the fraud at
the time of enforcement. Nobelpharma AB v . Implant Innovations,
Inc., 141 F.3d 1059, 1069 (Fed. Cir. 1998) (citation omitted).
Moreover,
a finding of Walker Process fraud . . . must be based on independent and clear evidence of deceptive intent together with a clear showing of reliance, i.e., that the patent would not have issued but for the misrepresentation or omission.
Id. at 1071.
3 Sham litigation claims form another subset of section 2
claims, in which the allegedly anticompetitive conduct is the
enforcement of a patent through litigation, with knowledge that
the patent is invalid or not infringed. C.R. Bard, Inc. v . M3
Sys., Inc., 157 F.3d 1340, 1368 (Fed. Cir. 1998). To establish a
claim for sham litigation, the antitrust plaintiff must prove,
inter alia, that the challenged lawsuit is objectively baseless
and subjectively motivated “to interfere directly with the
business relationships of a competitor.” Prof’l Real Estate
Investors v . Columbia Pictures Indus., Inc., 508 U.S. 4 9 , 60-61
(1993) (quoting E . R.R. Presidents Conf. v . Noerr Motor Freight,
Inc., 365 U.S. 1 2 7 , 144 (1961)) (emphasis added in P R E ) . A
lawsuit is objectively baseless if “no reasonable litigant could
realistically expect success on the merits.” PRE, 508 U.S. at
60. A patent infringement suit is objectively baseless when the
infringement plaintiff knows that the patent is invalid or not
infringed. See C.R. Bard, 157 F.3d at 1368.
Discussion
Heidelberger argues that because the ‘587 application was
immaterial to the validity of the ‘100 and ‘734 patents, MAN
Roland’s claims of Walker Process fraud and sham litigation must
4 fail.2 In essence, Heidelberger asserts that even if it had
engaged in inequitable conduct related to the ‘587 application,
such conduct would be irrelevant to this case, because the ‘587
application is unrelated to the ‘100 and ‘734 patents.3
MAN Roland does not address the materiality issue in its
objection, thereby conceding the point.4 Indeed, the record
reveals that both the ‘100 and ‘734 patents can trace their
ancestry back through continuations dated prior to the
abandonment and subsequent revival of the ‘587 application. So,
it cannot be said that Heidelberger knew or should have known
that the ‘100 and ‘734 patents were invalid based upon alleged
inequitable conduct related to the ‘587 application, thereby
2 As discussed above, sham litigation claims may be based upon any objectively baseless action, including situations where the patent infringement plaintiff knows that the patent it seeks to enforce is invalid or not infringed. Here, as Heidelberger notes, MAN Roland has limited its sham litigation claim to allegations of inequitable conduct in the prosecution of the ‘587 patent, a premise to which MAN Roland does not object. See Countercl. Def.’s Mot. Summ. J. (document n o . 425) 24 n . 2 0 . 3 Heidelberger also argues, alternatively, that even if the ‘587 application is germane to the patents in suit, it is liable on neither the Walker Process nor sham litigation claims because its revival of the ‘587 application was proper. Because the motion can be resolved on the materiality issue alone, the court need not consider the alleged inequitable conduct in prosecuting the ‘587 application. 4 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”).
5 precluding the sham litigation claim. Similarly, the record does
not show that the ‘100 and ‘734 patents would not have been
issued but for the alleged fraud in reviving the ‘587
application, thereby precluding the Walker Process claim.
Conclusion
For the reasons given, the motion for summary judgment
(document n o . 425) is granted, which resolves all claims against
Heidelberger. MAN Roland’s motion to continue (document n o . 434)
is denied as moot.
SO ORDERED.
Steven J./McAuliffe :hief Judge
March 1 2 , 2007
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 . Cy 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.
6 Teodor J. Holmberg, Esq. Richard D. Margiano, Esq. John F. Sweeney, Esq. Steven F. Meyer, Esq. Tony V . Pezzano, Esq. Bruce W . Felmly, Esq. Seth J. Atlas, Esq. Anthony S . Augeri, Esq.