United States District Court, N.D. California
ORDER GRANTING PLAINTIFF'S MOTIONS TO DISMISS
DEFENDANT MIPOX CORPORATION'S SEVENTH COUNTERCLAIM AND
STRIKE ITS THIRD AFFIRMATIVE DEFENSE
RICHARD SEEBORG, United States District Judge
Amended Answer and Counterclaims, defendant Mipox Corporation
(“Mipox”) alleges plaintiff International Test
Solutions, Inc. (“ITS”) committed inequitable
conduct during the prosecution of the asserted U.S. Patent
No. 7, 202, 683 (“‘683 patent”). ITS moves
to dismiss Mipox's seventh counterclaim of
unenforceability under Federal Rule of Civil Procedure
12(b)(6) and to strike the associated third affirmative
defense of unenforceability under Rule 12(f). Mipox's
allegations fail to satisfy the standard for pleading
inequitable conduct set out in Therasense, Inc. v.
Becton, Dickinson & Co., 649 F.3d 1276, 1285 (Fed.
Cir. 2011). ITS's motions are thus granted. This matter
was submitted without oral argument, pursuant to Civil Local
January 1, 2017, ITS filed a Second Amended Complaint
(“SAC”) adding Mipox as an additional defendant
in this patent infringement lawsuit. In response, Mipox filed
an Answer and Counterclaims. Therein, Mipox alleged that ITS
engaged in inequitable conduct before the Patent and
Trademark Office (“PTO). ITS moved to dismiss
Mipox's counterclaim of inequitable conduct and to strike
the related affirmative defense. Rather than respond to that
motion, Mipox opted to file an Amended Answer and
Counterclaims. ITS now moves again to dismiss the
counterclaim of inequitable conduct and to strike the related
Amended Counterclaims, Mipox alleges the named inventors of
the ‘683 patent, Gene Humphrey, Jerry Broz, and Joyce
Adams, committed inequitable conduct during the prosecution
of the ‘683 patent. Asserted claim 1 of the ‘683
patent describes a method for forming a cleaning device for
integrated circuit test probes. The cleaning device is formed
from four elements: a cleaning pad attached to an adhesive
layer, and two release liner layers protecting the exposed
cleaning and adhesive surfaces. Once the top release liner
layer is removed, the cleaning surface of the device has a
matte finish, distinguishing it from the near mirror finishes
of the surrounding integrated circuits, so the test machine
may automatically detect the cleaning device when the probe
is in need of cleaning. The bottom release liner layer is
removed to expose the adhesive layer, so the cleaning device
may be attached to a substrate which allows it to be placed
into the testing machine.
avers Humphrey, Broz, and Adams failed to disclose two data
sheets available to the public on ITS's website, one for
Probe PolishTM and the other for Probe
CleanTM. The ITS data sheets both disclose
cleaning devices for integrated circuit test probes composed
of a cleaning pad layer attached to a polyester substrate
which is in turn attached to an adhesive layer. The exposed
surfaces of the cleaning layer and the adhesive layer are
each protected by a liner layer.
alleges inequitable conduct two ways. First, it claims
Humphrey, Broz, and Adams, being familiar with ITS products
and materials, knew of the ITS data sheets when they applied
for the ‘683 patent. Mipox avers that, given the
overlap in device elements (i.e., two liner layers, a
cleaning layer, and an adhesive layer), Humphrey, Broz, and
Adams knew the ITS data sheets were material to the
prosecution of the ‘683 patent, but withheld that
information from the PTO. Thus, claim 1 of the ‘683
patent was permitted even though Humphrey, Broz, and Adams
knew of prior art which anticipated the claim.
Mipox alleges that Humphrey, Broz, and Adams, as named
inventors, were each involved in the prosecution of
‘683 patent. An office action dated July 8, 2005
rejected numerous claims in the patent application, but
allowed claim 9 on the grounds that it distinguished itself
from the prior art by disclosing two release liner layers and
an adhesive layer. Mipox claims Humphrey, Broz, and Adams
were informed of this office action and, due to their
knowledge of the ITS data sheets, knew of prior art directly
contradicting the examiner's stated belief, but failed to
correct the examiner. Thus, claim 9, which ultimately was
issued as claim 1 of the ‘683 patent, was permitted
even though Humphrey, Broz, and Adams knew of prior art
combinations which would render the claim obvious.
Motion to Dismiss
motion to dismiss for failure to state a claim shall be
granted where the pleading party fails “to state a
claim upon which relief can be granted.” Fed.R.Civ.P.
12(b)(6). To withstand such motion, “a complaint 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)
(internal quotation omitted). “A claim has facial
plausibility when the plaintiff pleads factual content that
allows the court to draw the reasonable inference that the
defendant is liable for the misconduct alleged.”
Id. Conclusions “are not entitled to the
assumption of truth.” Id. at 679. “A
pleading that offers labels and conclusions or a formulaic
recitation of the elements of a cause of action will not
do.” Id. at 678 (internal quotation omitted).
Pleading on “information and belief is permitted . . .
only if the pleadings set forth the specific facts upon which
the belief is reasonably based.” Exergen Corp. v.
Wal-Mart Stores, Inc., 575 F.3d 1312, 1330 (Fed. Cir.
Rule of Civil Procedure 9(b) governs the pleading of
inequitable conduct. See Exergen, 575 F.3d at 1326.
The circumstances of fraud must be pleaded “with
particularity, ” though conditions of the mind may be
alleged generally. Fed.R.Civ.P. 9(b). Federal Circuit law
defines the sufficiency of inequitable conduct pleading under
Rule 9(b). See Exergen, 575 F.3d 1326. The Federal
Circuit “requires identification of the specific who,
what, when, where, and how of the material misrepresentation
or omission committed before the PTO.” Id. at
1327. The pleading must also explain “why” the
withheld information is material and not cumulative.
Id. at 1329. Facts must be alleged to give rise to a
reasonable inference that “the applicant knew of the
reference, knew that it was material, and made a deliberate
decision to withhold it.” Therasense, 649 F.3d
at 1290. “A reasonable inference is one that is
plausible and that flows logically from the facts alleged,
including any objective indications of candor and good
faith.” Exergen, 575 F.3d at 1329 n. 5.
Motion to Strike
12(f) allows a court to “strike from a pleading an
insufficient defense.” Fed. R. C. P. 12(f). The
function of a motion to strike under Rule 12(f) is to
“avoid the expenditure of time and money that must
arise from litigating spurious issues by dispensing with
those issues prior to trial.” Whittlestone, Inc. v.
Handi-Craft Co., 618 F.3d 970, 973 (9th Cir. 2010)
(quotation and citation omitted). “Motions to strike
are regarded with disfavor  because of the limited
importance of pleadings in federal practice and because they
are often used solely to delay proceedings.”
Capella Photonics, Inc. v. Cisco Systems, Inc., 77
F.Supp.3d 850 (N.D. Cal. 2014) (citing Zep Solar Inc. v.
Westinghouse Solar Inc., 2012 WL 1293873, at *1 (N.D.
Cal. April 16, 2012)). “Nonetheless, the Court may
properly grant motions to strike when a defense or a claim is
insufficient as a matter of law.” Zep Solar,
2012 WL 1293873, at *1 (citing Kaiser Aluminum &
Chem. Sales, Inc. v. Avondale Shipyards, Inc., 677 F.2d
1045, 1057 (5th Cir. 1982)). “[A] court shall view the
pleadings in the light most favorable to the pleader.”
Zep Solar, 2012 WL 1293873, at *1. “[A] court
should not grant a motion to strike a defense unless the
insufficiency of the defense is clearly apparent.”
Int'l Bus. Machines Corp. v. Priceline Grp.
Inc., 2017 WL 1349175, at *4 (D. Del. Apr. 10, 2017).
conduct is a powerful “equitable defense to patent
infringement that, if proven, bars enforcement of a
patent.” Therasense, 649 F.3d at 1285. The
doctrine enforces a patent applicant's duty of candor.
Patent prosecution requires an individual to “disclose
to the [PTO] all information known to that individual to be
material” to the application. MPEP § 2001 (9th ed.
Rev. 7.2015, Nov. 2015), 37 C.F.R. §1.56 (2012).
Inequitable conduct addresses “egregious misconduct,
including perjury, the manufacture of false evidence, and the
suppression of evidence” during patent prosecution
before the PTO. Therasense, 649 F.3d at 1287.
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 the specific intent to deceive the PTO.”
Exergen, 575 F.3d at 1327 n. 3. Materiality requires
proof by a preponderance of the evidence of but-for
materiality-i.e., the fact the PTO would not have allowed a
patent claim “had it been aware of the undisclosed
prior art”- or “affirmative acts of egregious
misconduct” by the patentee. Therasense, 649
F.3d at 1291-93. Specific intent requires clear and
convincing evidence that the patent applicant: (a)
“knew of the reference;” (b) “knew that it
was material;” and (c) “made a deliberate
decision to withhold it.” Id. at 1290. The
doctrine applies only “where the ...