Stowe Woodward, L.L.C. v. Sensor Products, Inc.

230 F.R.D. 463, 62 Fed. R. Serv. 3d 988, 2005 U.S. Dist. LEXIS 19313, 2005 WL 2160036
CourtDistrict Court, W.D. Virginia
DecidedSeptember 7, 2005
DocketNo. CIV.A.5:04 CV 00001
StatusPublished
Cited by7 cases

This text of 230 F.R.D. 463 (Stowe Woodward, L.L.C. v. Sensor Products, Inc.) is published on Counsel Stack Legal Research, covering District Court, W.D. Virginia primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Stowe Woodward, L.L.C. v. Sensor Products, Inc., 230 F.R.D. 463, 62 Fed. R. Serv. 3d 988, 2005 U.S. Dist. LEXIS 19313, 2005 WL 2160036 (W.D. Va. 2005).

Opinion

MEMORANDUM OPINION

CONRAD, District Judge.

This case is presently before the court on the plaintiffs motion to dismiss the defendant’s defense of inequitable conduct. For the reasons that follow, the court will grant the plaintiffs motion. However, the defendant may seek leave to amend its answers pursuant to Federal Rule of Civil Procedure 15(a).

Facts and Procedural Background

In the first of two patent infringement cases brought by plaintiff Stowe Woodward, L.L.C. (“Stowe”), against defendant Sensor Products, Inc. (“SPI”), the defendant filed an answer stating three defenses: (1) failure to state a claim; (2) invalidity, voidness, and unenforceability of the patent; and (3) non-infringement. Plaintiff Stowe brought this first case with respect to United States Patent No. 6,568,285 (“the ’285 patent”), which was issued to Stowe on May 23, 2003 for its Nip Width Sensing System and Method. The ease was docketed as civil action 5:04CV00001 on January 8, 2004.

[465]*465On August 3, 2004, United States Patent No. 6,769,314 (“the ’314 patent”) was issued to Stowe, and Stowe then instituted a second suit for infringement of the ’314 patent, which was docketed as civil action 5:04CV00079 on September 14, 2004. The two cases were consolidated on November 8, 2004. In its answer to the plaintiffs complaint for infringement of the ’314 patent, defendant SPI asserted identical defenses to those asserted in the case of the ’285 patent, and added a defense of inequitable conduct. This defense stated that:

The patent asserted by plaintiff is unenforceable in that the patentee, inventors, and/or other individuals responsible for and/or associated with the prosecution of the patent application committed inequitable conduct during the prosecution of the patent asserted and related patents by failing to disclose known material prior art to the United States Patent and Trademark Office including, at least, U.S. Patent No. 5,583,303, actions taken by foreign patent offices, and/or industry publications or products, including at least those of Interlink, and, upon information and belief, by doing so with intent to deceive.

This defense, asserted for the first time on October 28, 2004, forms the basis of the court’s present inquiry.

In Interrogatory 16, Stowe requested that SPI:

describe in detail the factual and legal bases for the belief or contention of unen-forceability, including: each act contended to constitute inequitable conduct; the identity of each person who took such action or failed to take such action; the date on which said person took such action or failed to take such action; the basis upon and all reasons which SPI contends that such action taken with an intent to mislead the United States Patent and Trademark Office or such action was not performed with the intention of misleading the United States Patent and Trademark Office; and the identity of all documents relating thereto and all individuals having knowledge thereof.

SPI responded by identifying its filed answers as well as “all undisclosed prior art supplied by Stowe” in thousands of pages of discovery materials. SPI also repeated the assertions made in its answer that the actions comprising inequitable conduct taken by Stowe included “at least, U.S. Patent No. 5,583,303, actions taken by foreign patent offices, and/or industry publications or products, including at least those of Interlink, and, upon information and belief, by doing so with intent to deceive.” SPI identified Robert Moore, James Cannon, William Kennedy, and William Butterfield as individuals who may have been responsible for inequitable conduct before the Patent Office. On the basis of these responses, Stowe requests that the court dismiss SPI’s inequitable conduct defense in regard to both the ’285 patent and the ’314 patent, pursuant to Federal Rule of Civil Procedure 12(b)(6), claiming that SPI’s answer failed to plead the inequitable conduct defense with adequate particularity.

Discussion

A. The Standard of Pleading for Inequitable Conduct

The preliminary issue for consideration is whether the defense of inequitable conduct must be pled with a higher degree of particularity than other defenses. Federal Rule of Civil Procedure 9(b) applies to all allegations of fraud and requires that such allegations be stated with particularity. Some minor disagreement exists among district courts as to whether inequitable conduct must be pled with the heightened pleading requirements applicable to allegations of fraud. However, the majority of district courts have held that the heightened pleading requirements of Rule 9(b) do apply to claims of inequitable conduct.1

[466]*466_ Although the Federal Circuit has not specifically addressed whether Rule 9(b) applies to the inequitable conduct defense, in upholding the decision of a district court in the Fifth Circuit, the Federal Circuit noted in dicta that while inequitable conduct is a broader concept than fraud, it must nevertheless be “pled with particularity.” Ferguson Beauregard/Logic Controls, Div. of Dover Resources, Inc., v. Mega Systs., LLC, 350 F.3d 1327, 1344 (Fed.Cir.2003). The Court upheld the district court’s decision to decline to address the alleged inequitable conduct defense on the grounds that it was not properly pled. Id.

The heightened pleading requirements of Rule 9(b) are meant to “deter the filing of charges of fraud as a pretext for discovery of unknown wrongs.” Solarex Corp. v. Arco Solar, Inc., 121 F.R.D. 163,178 (E.D.N.Y.1988). This deterrent purpose is commensurate with the Federal Circuit’s demonstrated antipathy towards the defense of inequitable conduct, which was enunciated in rather telling terms in Burlington Indus., Inc. v. Dayco Corp., 849 F.2d 1418 (Fed.Cir. 1988).2 Mindful of this purpose and the precedent established by our sister courts, this court concludes that the heightened pleading requirements of Rule 9(b) apply to defenses of inequitable conduct.

Thus, SPI should have pled with particularity the circumstances constituting the alleged inequitable conduct, including “the time, place, and contents of the inequitable conduct, as well as the identity of the parties responsible for the inequitable conduct.” MedImmune, Inc. v. Centocor, Inc., 271 F.Supp.2d 762, 772 (D.Md.2003) (citing Harrison v. Westinghouse Savannah River Co., 176 F.3d 776, 784 (4th Cir.1999)). Utilization of Fourth Circuit law regarding what constitutes particularity in pleading fraud is appropriate. The Federal Circuit “review[s] procedural matters, that are not unique to patent issues, under the law of the particular regional circuit court where appeals from the district court would normally lie.” Panduit Corp. v.

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Barnes & Noble, Inc. v. LSI Corp.
849 F. Supp. 2d 925 (N.D. California, 2012)
Eurand, Inc. v. Mylan Pharmaceuticals, Inc.
266 F.R.D. 79 (D. Delaware, 2010)
Robert Bosch LLC v. Pylon Manufacturing Corp.
263 F.R.D. 142 (D. Delaware, 2009)
Cordance Corp. v. Amazon.Com, Inc.
255 F.R.D. 366 (D. Delaware, 2009)
Avocent Huntsville Corp. v. Clearcube Technology, Inc.
443 F. Supp. 2d 1284 (N.D. Alabama, 2006)

Cite This Page — Counsel Stack

Bluebook (online)
230 F.R.D. 463, 62 Fed. R. Serv. 3d 988, 2005 U.S. Dist. LEXIS 19313, 2005 WL 2160036, Counsel Stack Legal Research, https://law.counselstack.com/opinion/stowe-woodward-llc-v-sensor-products-inc-vawd-2005.