United States District Court, E.D. Missouri, Eastern Division
MEMORANDUM OPINION AND ORDER
SHIRLEY PADMORE MENSAH, Magistrate Judge.
This matter is before the Court on Plaintiff Emerson Electric Co.'s ("Emerson's") Motion to Dismiss Defendants Cleva North America, Inc. and Sears, Roebuck & Co.'s ("Defendants'") Inequitable Conduct Counterclaims and Motion to Strike Defendants' Inequitable Conduct Affirmative Defenses. (Doc. No. 123). For the reasons set forth below, the Court will grant Emerson's motions.
Emerson is the inventor of U.S. Patent No. 7, 237, 300 ("the 300 Patent"), titled "Multistepped Appliance Accessory Holder." In its Amended Complaint, Emerson alleges a claim that Defendants have infringed the 300 Patent.
Each Defendant, in its Amended Answer and Counterclaims to Plaintiff's Amended Complaint, asserts counterclaims seeking a declaratory judgment of inequitable conduct and an affirmative defense that alleges inequitable conduct by Emerson in prosecuting the patent application that resulted in the 300 Patent. (Doc. Nos. 111 & 112).
In both their counterclaims and their affirmative defenses, Defendants allege that the 300 Patent "is invalid and/or unenforceable due to the failure of each individual associated with the filing and prosecution of the patent to disclose to the Patent Office all information known to be material to patentability." (Doc. 111, ¶¶ 83, 99; Doc. 112, ¶¶ 85, 98). In support of their counterclaims, Defendants further allege that Emerson "publicly disclosed the subject matter claimed in [the 300 Patent] more than one year before the earliest claimed priority date for [the 300 Patent]"; that Emerson sold and/or offered for sale products that included the subject matter claimed in the 300 Patent more than one year before that earliest claimed priority date for the 300 Patent; that "[t]he applicants and/or attorney" who prosecuted the application for the 300 Patent were aware of such public use, sales, and/or offers for sale; that such public use, sales, and/or offers for sale were material to the patentability of the subject matter claimed in the 300 Patent under 35 U.S.C. § 102; and that the applicants and attorney who prosecuted the application for the 300 Patent failed to disclose the public use, sales, and/or offers for sale with the intention of misleading or deceiving the patent examiner. (Doc. 111, ¶¶ 94-99; Doc. 112, ¶¶ 93-98).
In the instant motion, Emerson asks the Court to dismiss Defendants' counterclaims and strike Defendants' affirmative defenses, arguing that Defendants have failed to plead inequitable conduct with the particularity required by Federal Rule of Civil Procedure 9(b) and Federal Circuit law. (Doc. No. 123). Defendants oppose Emerson's motion and contend that they have adequately pleaded their counterclaims and affirmative defenses. (Doc. No. 129).
A. Emerson's Motion to Dismiss Defendants' Inequitable Conduct Counterclaims
1. Legal Standard
A motion to dismiss under Rule 12(b)(6) of the Federal Rules of Civil Procedure tests the legal sufficiency of the complaint. "To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face.'" Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). 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." Id. (citing Twombly, 550 U.S. at 556). "While a complaint attacked by a Rule 12(b)(6) motion to dismiss does not need detailed factual allegations, a plaintiff's obligation to provide the grounds' of his entitle[ment] to relief' requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do." Twombly, 550 U.S. at 555 (internal citations omitted). Indeed, "[a]lthough for the purposes of a motion to dismiss [courts] must take all of the factual allegations in the complaint as true, [courts] are not bound to accept as true a legal conclusion couched as a factual allegation.'" Iqbal, 556 U.S. at 678. Thus, "[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice." Id. (citing Twombly, 550 U.S. at 555). These requirements apply both to pleadings governed by the general pleading standard of Rule 8 and those governed by the heightened pleading standards of Rule 9. Iqbal, 556 U.S. at 686.
In addressing a motion under Rule 12(b)(6), "documents attached to or incorporated within a complaint are considered part of the pleadings, and courts may look at such documents for all purposes, including to determine whether a plaintiff has stated a plausible claim.'" Retro Television Network, Inc. v. Luken Commc'ns, LLC, 696 F.3d 766, 769 (8th Cir. 2012) (quoting Brown v. Medtronic, Inc., 628 F.3d 451, 459-60 (8th Cir. 2010)).
Under Federal Circuit law, inequitable conduct counterclaims "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 Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1344 (Fed. Cir. 2003)); see also Fed.R.Civ.P. 9(b) ("In alleging fraud or mistake, a party must state with particularity the circumstances constituting fraud or mistake."). In addition, as ...