United States District Court, D. Delaware
EASTON TECHNICAL PRODUCTS, INC. a Utah corporation, Plaintiff,
FERADYNE OUTDOORS, LLC, a Delaware corporation, Defendant.
REPORT AND RECOMMENDATION
R. Fallon, United States Magistrate Judge
before the court in this patent infringement action are a
motion for judgment on the pleadings seeking dismissal of the
inequitable conduct counterclaim and a motion to strike
defendant FeraDyne Outdoors, LLC's ("FeraDyne")
inequitable conduct affirmative defense, pursuant to Federal
Rules of Civil Procedure 12(c) and 12(f) filed by plaintiff
Easton Technical Products, Inc. ("Easton"). (D.I.
16) For the reasons that follow, I recommend that the court
grant Easton's motions.
August 9, 2018, Easton originally filed this patent
infringement action against FeraDyne, alleging infringement
of United States Patent Numbers 7, 004, 859 ("the
'859 patent"), 7, 270, 618 ("the '618
patent"), 7, 374, 504 ("the '504 patent"),
and 7, 608, 001 ("the '001 patent")
(collectively, the "Patents-in-Suit"), which relate
to small diameter hunting arrows. (D.I. 1 at ¶¶
8-12) Eastonis the owner by assignment of the
Patents-in-Suit. (Id. at ¶¶ 9-12)
October 29, 2018, FeraDyne filed its answer to Easton's
complaint, and asserted an inequitable conduct counterclaim
(the "Third Counterclaim") and related affirmative
defense (the "Ninth Affirmative Defense"). (D.I. 8
at ¶¶ 25-40, 58-64) In its counterclaim, FeraDyne
asserted that on August 23, 2006, Mr. Teddy D. Palomaki
("Mr. Palomaki"), Vice President of Product
Development for Easton,  submitted a declaration to the United
States Patent and Trademark Office ("USPTO")
pursuant to 37 C.F.R. § 1.132, representing that
"Figure 12 of the above-referenced patent application
illustrates that the arrow shaft of this invention is new and
unique in its combination of spine and outside
diameter." (D.I. 8 at ¶ 26) FeraDyne contends that,
based on this statement, Mr. Palomaki did not disclose five
prior art references, including: (1) U.S. Patent No. 4, 234,
190 ("the '190 patent"), (2) U.S. Patent No. 6,
554, 725 ("the '725 patent"), (3) Eastman's
Medallion carbon arrow shafts ("Eastman Medallion arrow
shafts"), (4) AFC arrow shafts,  and (5) the 1991 Lancaster
Archery Supply Catalog (the "Supply Catalog"). (D.I. 8
at ¶¶ 25-40) FeraDyne argues that Mr. Palomaki and
Easton engaged in inequitable conduct in failing to disclose
this prior art. (D.I. 8 at ¶¶ 25-40; D.I. 21 at 6)
November 19, 2018, Easton filed an answer to FeraDyne's
counterclaims. (D.I. 12) On December 20, 2018, Easton filed
the present motion for judgment on the pleadings and motion
to strike FeraDyne's inequitable conduct counterclaims
and defense. (D.I. 16)
Motion for Judgment on the Pleadings
moves for judgment on the pleadings pursuant to Federal Rule
of Civil Procedure 12(c). Under Federal Rule of Civil
Procedure 12(c), "[a]fter the pleadings are closed - but
early enough not to delay trial - a party may move for
judgment on the pleadings." Fed.R.Civ.P. 12(c). When
deciding a Rule 12(c) motion for judgment on the pleadings
based on an allegation that the plaintiff has failed to state
a claim, the motion "is analyzed under the same
standards that apply to a Rule 12(b)(6) motion."
Revell v. PortAuth., 598 F.3d 128, 134 (3d Cir.
2010), cert, denied, 131 S.Ct. 995, 178 L.Ed.2d 825
(Jan. 18, 2011).
state a claim upon which relief can be granted pursuant to
Rule 12(b)(6), a complaint must contain a "short and
plain statement of the claim showing that the pleader is
entitled to relief." Fed.R.Civ.P. 8(a)(2). Although
detailed factual allegations are not required, the complaint
must set forth sufficient factual matter, accepted as true,
to "state a claim to relief that is plausible on its
face." Bell Atlantic Corp. v. Twombly, 550 U.S.
544, 570 (2007); see also Ashcroft v. Iqbal, 556
U.S. 662, 663 (2009). Under this standard, the court must
accept all well-pleaded factual allegations as true, and must
draw all reasonable inferences in favor of the non-moving
party. See Turbe v. Gov't of Virgin Islands, 938
F.2d 427, 428 (3d Cir. 1991). This determination is a
context-specific task requiring the court "to draw on
its judicial experience and common sense."
Iqbal, 556 U.S. at 679.
Motion to Strike
12(f) permits "[t]he court [to] strike from a pleading
an insufficient defense or any redundant, immaterial,
impertinent, or scandalous matter." Fed.R.Civ.P. 12(f).
"When ruling on a motion to strike, the [c]ourt must
construe all facts in favor of the nonmoving party and deny
the motion if the defense is sufficient under the law.
Further, a court should not grant a motion to strike a
defense unless the insufficiency of the defense is clearly
apparent." Symbol Techs., Inc. v. Aruba Networks,
Inc., 609 F.Supp.2d 353, 356 (D. Del. 2009) (internal
citations and quotation marks omitted). "As a general
matter, motions to strike under Rule 12(f) are
disfavored." Fesnak & Assocs., LLP v. U.S. Bank
Nat 7 Ass'n, 722 F.Supp.2d 496, 502 (D.
Motion for Judgment on the Pleadings
court recommends granting Easton's motion for judgment on
the pleadings because FeraDyne's counterclaim for
inequitable conduct fails to adequately plead the factual
basis with the requisite particularity under Rule 9(b). Rule
9(b) requires a party, when "alleging fraud or mistake .
. . [to] state with particularity the circumstances
constituting fraud or mistake." Fed.R.Civ.P. 9(b). When
a party claims a patent is unenforceable, and the claim is
"premised upon inequitable conduct, [it] is a claim
sounding in fraud." Senju Pharm. Co. v. Apotex,
Inc., 921 F.Supp.2d 297, 305 (D. Del. 2013).
'"[I]nequitable conduct, while a broader concept
than fraud, must be pled with particularity' under Rule
9(b)." Exergen Corp. v. Wal-Mart Stores, Inc.,
575 F.3d 1312, 1326 (Fed. Cir. 2009) (quoting Ferguson
Beauregard/Logic Controls, Div. of Dover Resources, Inc. v.
Mega Sys., LLC, 350 F.3d 1327, 1344 (Fed. Cir. 2003)).
To plead inequitable conduct "with the requisite
particularity under Rule 9(b), the pleading must identify the
specific who, what, when, where, and how of the material
misrepresentation or omission committed before the
[USPTO]." Senju Pharm. Co., 921 F.Supp.2d at
306 (quoting Exergen Corp., 575 F.3d at 1328);
see Int'l Bus. Mack Corp. v. Priceline Grp.
Inc., C.A. No. 15-137-LPS-CJB, 2017 WL 1349175, at *4-5
(D. Del. Apr. 10, 2017). In addition,
although "knowledge" and "intent" may be
averred generally, a pleading of inequitable conduct under
Rule 9(b) must include sufficient allegations of underlying
facts from which a court may reasonably infer that a specific
individual (1) knew of the withheld material information or
of the falsity of the material misrepresentation, and (2)
withheld or misrepresented this information with a specific
intent to deceive the PTO.
Exergen Corp., 575 F.3d at 1328-29.
argues the court should grant the motion for judgment on the
pleadings and motion to strike because FeraDyne has not met
the heightened pleading requirements of Rule 9(b) by
identifying the "who, what, when, where and how,"
and has not pleaded any facts to support a finding of but-for
materiality or to support an intent to deceive the USPTO.
(D.I. 17 at 6-16) In response, FeraDyne argues that it has
appropriately pleaded the "who, what, when, where, and
how" of Mr. Palomaki's inequitable conduct. (D.I. 21
at 6) Furthermore, FeraDyne contends that it has met the
but-for requirement by alleging upon information and belief
that the patent ...