United States District Court, D. Delaware
E. Farnan and Michael J. Farnan, FARNAN LLP, Wilmington, DE
Edward R. Reines and Derek C. Walter, WEIL, GOTSHAL &
MANGES LLP, Redwood Shores, CA Attorneys for Plaintiff
B. Blumenfeld, MORRIS, NICHOLS, ARSHT & TUNNELL LLP,
Wilmington, DE Stephen M. Hash, Puneet Kohli, and Samoneh
Kadivar, BAKER BOTTS L.L.P., Austin, TX Attorneys for
U.S. District Judge.
Pacific Biosciences of California, Inc. ("PacBio")
filed two suits against Defendant Oxford Nanopore
Technologies, Inc. ("Oxford") on March 15, 2017
(C.A. No. 17-275 D.I. 1) and on September 25, 2017 (C.A. No.
17-1353 D.I. 1). Following significant motion practice in
C.A. No. 17-1353,  PacBio filed a Second Amended
Complaint ("SAC") on March 28, 2018. (D.I. 52) The
SAC asserts U.S. Patent Nos. 9, 678, 056 (the '"056
patent"), 9, 738, 929 (the '"929 patent"),
and 9, 772, 323 (the '"323 patent"). On April
25, Oxford filed an Answer to the SAC and Counterclaims
against PacBio. (D.I. 64) On June 15, PacBio filed a motion
to dismiss Oxford's Counterclaims for failure to state a
claim (D.I. 86, 87), which Oxford responded to on July 11
(D.I. 99), to which PacBio replied on July 27 (D.I. 105). The
parties submitted additional letters related to the motion to
dismiss on August 15, September 28, and October 5. (D.I. 110,
meantime, on June 18, PacBio filed a motion to bifurcate (90,
91), which Oxford responded to on July 11 (D.I. 100), to
which PacBio replied on July 27 (D.I. 104).
the Court's approval of PacBio's motion to amend its
SAC to add another defendant - Oxford Nanopore Technologies,
Ltd. ("ONT LTD") - on August 23, PacBio filed a
Third Amended Complaint ("TAC") (D.I. 113) and, on
September 6, Oxford filed an Answer and Counterclaims against
PacBio (D.I. 119). Also on September 6, Oxford filed
similar Counterclaims in the related action. (C.A. No. 17-275
D.I. 89) On September 25, PacBio and 'Docket citations in
this Opinion will be to the C.A. No. 17-1353 action, unless
specified otherwise. Oxford jointly notified the Court in
both cases that PacBio's motion to dismiss Oxford's
original counterclaims should be deemed to apply equally to
Oxford's current counterclaims in both cases. (D.I. 109)
reasons stated below, the Court will grant PacBio's
motion to dismiss and deny as moot PacBio's motion to
Evaluating a motion to dismiss under Federal Rule of Civil
Procedure 12(b)(6) requires the Court to accept as true all
material allegations of the complaint. See Spruill v.
Gillis, 372 F.3d 218, 223 (3d Cir. 2004). "The
issue is not whether a plaintiff will ultimately prevail but
whether the claimant is entitled to offer evidence to support
the claims." In re Burlington Coat Factory Sec.
Litig., 114 F.3d 1410, 1420 (3d Cir. 1997) (internal
quotation marks omitted). Thus, the Court may grant such a
motion to dismiss only if, after "accepting all
well-pleaded allegations in the complaint as true, and
viewing them in the light most favorable to plaintiff,
plaintiff is not entitled to relief." Maio v. Aetna,
Inc., 221 F.3d 472, 481-82 (3d Cir. 2000) (internal
quotation marks omitted).
well-pleaded complaint must contain more than mere labels and
conclusions. See Ashcroft v. Iqbal, 556 U.S. 662,
678 (2009); Bell Atl. Corp. v. Twombly, 550 U.S.
544, 555 (2007). A plaintiff must plead facts sufficient to
show that a claim has substantive plausibility. See
Johnson v. City of Shelby, 135 S.Ct. 346, 347 (2014). A
complaint may not be dismissed, however, for imperfect
statements of the legal theory supporting the claim asserted.
See Id. at 346.
survive a motion to dismiss, a civil plaintiff must allege
facts that 'raise a right to relief above the speculative
level on the assumption that the allegations in the complaint
are true (even if doubtful in fact).'" Victaulic
Co. v. Tieman, 499 F.3d 227, 234 (3d Cir. 2007) (quoting
Twombly, 550 U.S. at 555). A claim is facially
plausible "when the plaintiff pleads factual content
that allows the court to draw the reasonable inference that
the defendant is liable for the misconduct alleged."
Iqbal, 556 U.S. at 678. At bottom, "[t]he
complaint must state enough facts to raise a reasonable
expectation that discovery will reveal evidence of [each]
necessary element" of a plaintiff s claim. Wilkerson
v. New Media Tech. Charter Sch. Inc., 522 F.3d 315, 321
(3d Cir. 2008) (internal quotation marks omitted).
Court is not obligated to accept as true "bald
assertions," Morse v. Lower Merion Sch.
Dist., 132 F.3d 902, 906 (3d Cir. 1997) (internal
quotation marks omitted), "unsupported conclusions and
unwarranted inferences," Schuylkill Energy Res.,
Inc. v. Pa. Power & Light Co., 113 F.3d 405, 417 (3d
Cir. 1997), or allegations that are "self-evidently
false," Nami v. Fauver, 82 F.3d 63, 69 (3d Cir.
Inequitable Conduct (Counterclaims Seven ('056 Patent)