Junker v. Med. Components, Inc.
| Decision Date | 21 December 2016 |
| Docket Number | CIVIL ACTION No. 13-4606 |
| Parties | LARRY G. JUNKER, Plaintiff, v. MEDICAL COMPONENTS, INC., et al., Defendants. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
MEMORANDUM OPINION
Plaintiff, Larry Junker, has filed a one-count complaint for design patent infringement against Defendants, Medical Components, Inc. and Martech Medical Products, Inc. (collectively, "MedComp"). Plaintiff alleges that Defendants have violated 35 U.S.C. § 271, et seq. by selling medical devices embodying Plaintiff's patented invention registered with the United States Patent and Trademark Office ("PTO"). Defendants raise various affirmative defenses in their Third Amended Answer, and have included two counterclaims for invalidity (Count I) and non-infringement (Count II).
Before me is Plaintiff's motion to dismiss Defendants' third, ninth, and tenth affirmative defenses, as well as Defendants' first counterclaim for invalidity. For the reasons that follow, Plaintiff's motion will be granted in part and denied in part.
Plaintiff is the owner of U.S. Design Patent No. D450,839, entitled "Handle for Introducer Sheath" (the "D'839 patent"). Plaintiff applied for this patent on February 7, 2000, and the PTO issued the patent on November 20, 2001. Plaintiff applied for reissuance of the D'839 patent on July 20, 2003. The PTO eventually re-examined the D'839 patent, and reissued the patent to Plaintiff in 2008. (Defs.' 3d Am. Answer, pp. 4-5.)
While not dispositive to the motion before me, the circumstances surrounding Plaintiff initially obtaining the D'839 patent were the subject of a prior lawsuit in the Northern District of Texas, which reached the United States Court of Appeals for the Federal Circuit. See Junker v. Eddings, 2004 WL 5552032 (N.D. Tex. Jan. 16, 2004); Junker v. Eddings, et al., 396 F.3d 1359 (Fed. Cir. 2005). In that case, Plaintiff sued Galt Medical Corp. ("Galt"); its President, James Eddings ("Eddings"); and, Xentek Medical, Inc ("Xentek") alleging, inter alia, design patent infringement. The jury found that the D'839 patent was valid and willfully infringed by Galt, and further found an absence of clear and convincing evidence to suggest that Junker was not the first inventor of the design described in the D'839 patent. The Federal Circuit Court of Appeals affirmed the jury's verdict and the district court's denial of Galt's motion for judgment as a matter of law. Junker, 396 F.3d at 1365.
Plaintiff filed the instant lawsuit on August 8, 2013. On February 26, 2015, toward the end of discovery, Defendants filed a motion for leave to file a Third Amended Answer based on newly discovered evidence. Defendants explained that evidence produced late in discoverycontradicted Plaintiff's assertion that he was the "sole inventor" of the D'839 patent, thus raising issues that the patent was procured through fraud and/or inequitable conduct. Defendants sought leave to include these allegations in a Third Amended Answer by way of both affirmative defenses and an amended counterclaim for invalidity.
On May 20, 2015, the Honorable L. Felipe Restrepo granted in part Defendants' motion to amend. Judge Restrepo allowed Defendants to file a Third Amended Answer, which included a ninth affirmative defense of inequitable conduct, and a tenth affirmative defense of fraud. (See Doc. No. 137 ¶ 1(a) n.2.) Judge Restrepo also permitted Defendants to amend their first counterclaim for invalidity, but only to the extent that Defendants sought to incorporate allegations of fraud and inequitable conduct. Judge Restrepo expressly disallowed the inclusion of any other allegations not pertaining to fraud or inequitable conduct.2 (Id. at ¶ 1(b) n.3.)
Judge Restrepo's Order acknowledged that Plaintiff maintained the right to challenge the legal sufficiency of Defendants' newly-added allegations. (Id. at ¶ 1(e)). On June 15, 2015, Plaintiff did just that—moving under Federal Rules of Civil Procedure 9 and 12 to dismiss Defendants' third, ninth, and tenth affirmative defenses, and first counterclaim for invalidity. (Pl.'s Mot. to Dismiss 1). Plaintiff further requests dismissal of multiple footnotes added to Defendants' Third Amended Answer, which were not included in their proposed Third Amended Answer attached to their motion for leave.
Plaintiff does not specify which subsection of Rule 12 entitles him to dismissal of Defendants' affirmative defenses and first counterclaim. He asserts that the "only plausible inference" that can be derived from Defendants' allegations does not support a claim for eitherfraud or inequitable conduct. (Pl.'s Mot. to Dismiss 13). This phrasing suggests that he seeks relief under Federal Rule of Civil Procedure 12(b)(6)—failure to state a claim upon which relief can be granted. Nevertheless, with respect to their affirmative defenses, Defendants construe Plaintiff's filing as a motion to strike under Rule 12(f). (Defs.' Resp. 4.)
To survive a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6), a complaint must "contain sufficient factual matter, accepted as true, to 'state a claim for relief that is plausible on its face.'" Iqbal, 129 S. Ct. at 1949 (quoting Twombly, 550 U.S. at 570). The plausibility standard requires more than a "sheer possibility that a defendant has acted unlawfully." Id. While plausibility "does not impose a probability requirement at the pleading stage," it does require "enough facts to raise a reasonable expectation that discovery will reveal evidence of" the necessary elements of a claim. Phillips v. Cty. of Allegheny, 515 F.3d 224, 234 (3d Cir. 2008).
To determine the sufficiency of a complaint under Twombly and Iqbal, the Court must take the following three steps: (1) the Court must "tak[e] note of the elements a plaintiff must plead to state a claim;" (2) the court should identify the allegations that, "because they are no more than conclusions, are not entitled to the assumption of truth;" and (3) "where there are well-pleaded factual allegations, a court should assume their veracity and then determine whether they plausibly give rise to an entitlement for relief." Burtch v. Milberg Factors, Inc., 662 F.3d 212, 221 (3d Cir. 2011) (citations omitted). In evaluating a motion to dismiss, courts generally consider only the allegations contained in the counterclaim, the exhibits attached thereto, matters of public record, and any "undisputedly authentic document" that a party attaches as an exhibit, so long as the allegations in that counterclaim are based on that document.Pension Ben. Guar. Corp. v. White Consol. Indus., Inc., 998 F.2d 1192, 1196 (3d Cir. 1993); Schmidt v. Skolas, 770 F.3d 241, 249 (3d Cir. 2014).
Additionally, Federal Rule of Civil Procedure 9(b) mandates that a party plead "with particularity the circumstances constituting fraud." Iqbal, 556 U.S. at 686 (citing Fed. R. Civ. P. 9(b)). To satisfy this heightened pleading standard, a party must plead or allege the date, time, and place of the alleged fraud, or otherwise "inject precision or some measure of substantiation" into the allegations. Frederico v. Home Depot, 507 F.3d 188, 200 (3d Cir. 2007); see also In re BP Lubricants USA Inc., 637 F.3d 1307, 1311 (Fed. Cir. 2011) ().
Federal Rule of Civil Procedure 12(f) "provides the means to challenge the sufficiency of affirmative defenses." Mars Inc. v. JCM Am. Corp., 2006 WL 1704469, at *3 (D.N.J. Jun. 14, 2006). Rule 12(f) permits a court to "strike from a pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter." Fed. R. Civ. P. 12(f). A court may act "on its own[,]" or "on motion made by a party[.]" Id. As such, although Plaintiff has moved to "dismiss" Defendants' affirmative defenses, I will construe his motion as it relates to Defendants' affirmative defenses as a motion to strike under Rule 12(f).
The parties devote a substantial portion of their briefs to whether Defendants' affirmative defenses are subject to the same "plausibility" standard of review as their counterclaims. Indeed,there is a split among the circuit courts regarding whether or not the "plausibility" standard applies to affirmative defenses.3
The Federal Circuit Court of Appeals has held that in a patent infringement case, a motion to dismiss is purely a procedural mechanism, and thus the law of the regional circuit should ordinarily control. See K-Tech Telecommunications, Inc. v. Time Warner Cable, Inc., 714 F.3d 1277, 1282 (Fed. Cir. 2013); McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1355-56 (Fed. Cir. 2007). However, because inequitable conduct is a claim unique to patent law, the Federal Circuit has instructed that the sufficiency of its pleading is subject to the law of the Federal Circuit. Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009) (citing Cent. Admixture Pharmacy Servs., Inc. v. Advanced Cardiac Sols., P.C., 482 F.3d 1347, 1356 (Fed. Cir. 2007)). As such, I will apply the law of the Federal Circuit in evaluating Defendants' counterclaims and affirmative defenses involving inequitable conduct.
The Federal Circuit has stated that "inequitable conduct, while a broader concept than fraud, must be pled with particularity" pursuant to Federal Rule of Civil Procedure 9(b). Exergen Corp., 575 F.3d at 1326 (...
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