Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Zadro Products, Inc. v. SDI Technologies, Inc.

United States District Court, D. Delaware

March 8, 2019

ZADRO PRODUCTS, INC., Plaintiff,
v.
SDI TECHNOLOGIES, INC. d/b/a iHOME, Defendant.

          MEMORANDUM OPINION AND ORDER

          WILLIAM C. BRYSON UNITED STATES CIRCUIT JUDGE.

         This is a patent infringement action brought by plaintiff Zadro Products, Inc. (“Zadro”) against defendant SDI Technologies, Inc. d/b/a iHome (“SDI”). Before the Court is Zadro's motion to dismiss SDI's third and sixth counterclaims and to strike SDI's tenth affirmative defense. Dkt. No. 57. The Court DENIES the motion.

         BACKGROUND

         Zadro owns U.S. Patent No. 8, 162, 502 (“the '502 patent”), entitled “Illuminated Continuously Rotatable Dual Magnification Mirror, ” and U.S. Patent No. 8, 356, 908 (“the '908 patent”), entitled “Rotatable Dual Magnification Mirror with Internal Hoop Illuminator and Movable Reflector Ring.” Dkt. No. 1, at 1. Zadro alleges that SDI has infringed, and continues to infringe, at least claims 1-15, 17-18, and 22-23 of the '502 patent and at least claims 9-11 and 28-32 of the '908 patent. Id. at 3, 5.

         In its First Amended Answer, SDI denies infringement of the '502 patent and the '908 patent. Dkt. No. 55, at 1-5. SDI raises six counterclaims, including two regarding inequitable conduct, which are at issue here. Specifically, the third counterclaim argues that “[t]he '502 patent is unenforceable and void because at least one individual associated with the prosecution of the '502 patent violated his or her duty of candor and good faith in dealing with the United States Patent and Trademark Office (the ‘PTO' or ‘Patent Office') by intentionally and deceptively failing to disclose material information to the PTO during prosecution.” Id. at 8. And the sixth counterclaim similarly argues that “[t]he '908 patent is unenforceable and void because one or more individuals associated with the prosecution of the '502 and '908 patents violated their duty of candor and good faith in dealing with the [PTO] by intentionally and deceptively failing to disclose material information to the PTO during prosecution.” Id. at 35. Additionally, SDI raises ten affirmative defenses, including that “[t]he Patents-in-Suit are unenforceable by reason of inequitable conduct, as detailed in the Third and Sixth Counterclaims.” Id. at 5.

         Zadro moves to dismiss with prejudice SDI's third and sixth counterclaims under Federal Rule of Civil Procedure 12(b)(6), and it moves to strike with prejudice SDI's tenth affirmative defense under Federal Rule of Civil Procedure 12(f). Dkt. No. 57.

         DISCUSSION

         I. Standard of Review

         A. Pleading Inequitable Conduct

         “Courts use the same standard in ruling on a motion to dismiss a counterclaim under Rule 12(b)(6) as they do in assessing a claim in a complaint.” Princeton Digital Image Corp. v. Konami Digital Entm't Inc., No. CV 12-1461-LPS-CJB, 2017 WL 239326, at *3 (D. Del. Jan. 19, 2017). In considering whether a complaint should be dismissed for failure to state a claim upon which relief can be granted, courts “accept all factual allegations as true, construe the complaint in the light most favorable to the plaintiff, and determine whether, under any reasonable reading of the complaint, the plaintiff may be entitled to relief.” Pinker v. Roche Holdings Ltd., 292 F.3d 361, 374 n.7 (3d Cir. 2002). Nonetheless, as the Supreme Court has made clear, the complaint must contain “enough facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). “Determining whether a complaint states a plausible claim for relief will . . . be a context-specific task that requires the reviewing court to draw on its judicial experience and common sense.” Ashcroft v. Iqbal, 556 U.S. 662, 679 (2009).

         Above and beyond the Iqbal/Twombly pleading standard, any allegations of inequitable conduct must satisfy Rule 9(b), which requires that “a party must state with particularity the circumstances constituting fraud or mistake.” Fed.R.Civ.P. 9(b); see Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009) (“‘[I]nequitable conduct, while a broader concept than fraud, must be pled with particularity' under Rule 9(b)” (quoting Ferguson Beauregard/Logic Controls, Div. of Dover Resources, Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1344 (Fed. Cir. 2003))); Wyeth Holdings Corp. v. Sandoz, Inc., No. CIV.A. 09-955-LPS, 2012 WL 600715, at *5 (D. Del. Feb. 3, 2012). “[I]n pleading inequitable conduct in patent cases, Rule 9(b) requires identification of the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO.” Exergen, 575 F.3d at 1327.

         Rule 9(b) also states that “[m]alice, intent, knowledge, and other conditions of a person's mind may be alleged generally.” Fed.R.Civ.P. 9(b). “The relevant ‘conditions of mind' for inequitable conduct include: (1) knowledge of the withheld material information or of the falsity of the material misrepresentation, and (2) specific intent to deceive the PTO.” Exergen, 575 F.3d at 1327. Although “knowledge” and “intent” may be asserted generally, a sufficient pleading of inequitable conduct must “recite[] facts from which the court may reasonably infer that a specific individual both knew of invalidating information that was withheld from the PTO and withheld that information with a specific intent to deceive the PTO.” Delano Farms Co. v. California Table Grape Comm'n, 655 F.3d 1337, 1350 (Fed. Cir. 2011) (citing Exergen, 575 F.3d at 1318, 1330).

         B. Motion to Strike Under Rule 12(f)

         “Rule 12(b)(6) does not offer a mechanism for dismissing an affirmative defense.” Wyeth, 2012 WL 600715, at *4. Instead, “pursuant to Rule 12(f), the Court ‘may strike from a pleading any insufficient defense.'” Id. (quoting Fed.R.Civ.P. 12(f)). Generally, motions to strike under Rule 12(f) are disfavored and “[a] court should not strike a defense unless the insufficiency is ‘clearly apparent.'” Fesnak & Assocs., LLP v. U.S. Bank Nat'l Ass'n, 722 F.Supp.2d 496, 502 (D. Del. 2010) (quoting Cipollone v. Liggett Grp., Inc., 789 F.2d 181, 188 (3d Cir. 1986)). “However, ‘a court is not required to accept affirmative defenses that are mere bare bones conclusory ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.