United States District Court, D. Delaware
Thomas C. Grimm, Esquire and Jeremy A. Tigan, Esquire of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, Delaware. Counsel for Plaintiff. Of Counsel: Douglas A. Grady, Esquire, John R. Nelson, Esquire, Richard T. Black, Esquire, Emily R. Kelly, Esquire, and Benjamin Hodges, Esquire of Foster Pepper, PLLC.
Kelly E. Farnan, Esquire and Selena E. Molina, Esquire of Richards, Layton & Finger, P.A., Wilmington, Delaware. Counsel for Defendant Clean Harbors Industrial Services, Inc. Of Counsel: Michael J. Turgeon, Esquire and Robert S. Rigg, Esquire of Vedder Price, PC.
Richard L. Horwitz, Esquire, David E. Moore, Esquire, and Bindu A. Palapura, Esquire of Potter Anderson & Corroon LLP, Wilmington, Delaware, Counsel for Defendant Cokebusters USA Inc. Of Counsel: Thomas M. Fulkerson, Esquire, and Wesley G. Lotz, Esquire of Fulkerson Lotz LLP, and Michael Hudgins, Esquire and Steven Hudgins, Esquire of The Hudgins Law Firm.
SUE L. ROBINSON, District Judge.
Plaintiff Quest Integrity USA, LLC ("Quest") initiated two lawsuits on December 15, 2014, by filing complaints against Cokebusters USA lnc. ("Cokebusters") and Clean Harbors Industrial Services, lnc. ("Clean Harbors") (collectively, "defendants") individually,  asserting infringement of U.S. Patent No. 7, 542, 874 ("the 874 patent"), titled "2D and 3D Display System and Method for Furnace Tube Inspection." (D.I. 1, ex. A)
Defendants filed answers and counter claims on January 30, 2015. (D.I. 32; Civ. No. 14-1482, D.I. 28) Cokebusters asserted a counter claim and an affirmative defense based on allegations of inequitable conduct. (D.I. 32) Clean Harbors also asserted an inequitable conduct affirmative defense. (Civ. No. 14-1482, D.I. 28) Quest then filed a motion to dismiss and strike defendants' inequitable conduct allegations. (D.I. 43; Civ. No. 14-1482, D.I. 41) In response, Cokebusters filed an amended answer, providing further allegations in support of its inequitable conduct counter claim and affirmative defense. (D.I. 50) Clean Harbors filed an amended answer as well, pleading inequitable conduct as a counterclaim and providing additional allegations in support of the counterclaim and previously asserted defense of inequitable conduct. (Civ. No. 14-1482, D.I. 45) Quest's motions for preliminary injunctions against defendants, filed concurrently with the complaint, were denied. (D.I. 116) Cokebusters' subsequent motion to transfer venue, which was joined by Clean Harbors, was also denied. (D.I. 117)
Presently before the court is Quest's renewed motion to dismiss the counter claims and strike the affirmative defenses of inequitable conduct pied by defendants. (D.I. 78) Clean Harbors did not oppose Quest's motion to dismiss and strike. Therefore, the motion is granted with respect to Clean Harbors. This opinion concerns Quest's motion with respect to Cokebusters.
The court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a). Venue is proper in the District of Delaware pursuant to 28 U.S.C. §§ 1391 (b)-(c) and 1400(b).
Quest is a limited liability company organized and existing under the laws of the State of Texas and having its principal place of business in Seattle, Washington. (D.I. 34 at 3) Cokebusters is a corporation organized and existing under the laws of the State of Delaware and having its principal place of business in Houston, Texas. (D.I. 26 at 3)
Ill. STANDARD OF REVIEW
A. Motion to Dismiss
A motion filed under Federal Rule of Civil Procedure 12(b)(6) tests the sufficiency of a complaint's factual allegations. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007); Kost v. Kozakiewicz, 1 F.3d 176, 183 (3d Cir. 1993). A complaint must contain "a short and plain statement of the claim showing that the pleader is entitled to relief, in order to give the defendant fair notice of what the... claim is and the grounds upon which it rests." Twombly, 550 U.S. at 545 (internal quotation marks omitted) (interpreting Fed.R.Civ.P. 8(a)). Consistent with the Supreme Court's rulings in Twombly and Ashcroft v. Iqbal, 556 U.S. 662 (2009), the Third Circuit requires a two-part analysis when reviewing a Rule 12(b)(6) motion. Edwards v. A.H. Cornell & Son, Inc., 610 F.3d 217, 219 (3d Cir. 2010); Fowlerv. UPMC Shadyside, 578 F.3d 203, 210 (3d Cir. 2009). First, a court should separate the factual and legal elements of a claim, accepting the facts and disregarding the legal conclusions. Fowler, 578 F.3d. at 210-11. Second, a court should determine whether the remaining well-pied facts sufficiently show that the plaintiff "has a plausible claim for relief.'" Id. at 211 (quoting Iqbal, 556 U.S. at 679). As part of the analysis, a court must accept all well-pleaded factual allegations in the complaint as true, and view them in the light most favorable to the plaintiff. See Erickson v. Pardus, 551 U.S. 89, 94 (2007); Christopher v. Harbury, 536 U.S. 403, 406 (2002); Phillips v. Cnty. of ...