United States District Court, E.D. Missouri, Eastern Division
WATER TECHNOLOGY, LLC and WATER TECH CORP., Plaintiffs/Counterclaim Defendants,
KOKIDO DEVELOPMENT LIMITED And MENARD, INC., Defendants/Counterclaim Plaintiffs.
MEMORANDUM AND ORDER
G. FLEISSIG, UNITED STATES DISTRICT JUDGE
matter is before the Court on Water Tech's motions (ECF
Nos. 142, 145) to dismiss certain counterclaims asserted by
Kokido. Both motions will be granted.
30, 2017, Water Tech filed a complaint asserting that
Kokido's products infringe five Water Tech patents, known
by the parties as the ‘182, ‘441, ‘460,
‘975, and ‘D396. Kokido filed a counterclaim
seeking declaratory judgment of non-infringement and
invalidity as to all five. Water Tech filed an amended
complaint removing its claims with respect to the ‘182
and ‘441, which were dismissed with prejudice. On June
27, 2018, Kokido filed an answer to the amended complaint
(ECF No. 80) retaining its counterclaims regarding the
dismissed patents (counterclaims 3, 4, 7, 8, 10, and 11) and
adding a new counterclaim of infectious unenforceability with
respect to the ‘460 (counterclaim 12). Water Tech moved
to dismiss these counterclaims (ECF Nos. 95, 142),
the matter was fully briefed (ECF Nos. 96, 106, 113, 144).
While the motion was still pending, Water Tech issued a
covenant not to sue, which the parties agree divests this
Court of jurisdiction with respect to counterclaims 3, 4, 7,
8, 10, and 11. As such, Water Tech filed an unopposed motion
to dismiss those counterclaims by consent of the parties (ECF
No. 145). That motion will be granted. Water Tech's
motion to dismiss with respect to counterclaim 12 (ECF No.
142) remains in dispute and will also be granted for the
reasons set forth below.
counterclaim 12, Kokido seeks declaratory judgment of
infectious unenforceability as to the ‘460, alleging
that Water Tech knowingly made material misrepresentations to
the USPTO in the prosecution of the ‘460's parent
patent (the ‘157) in order to overcome the
Schuman patent. Specifically, in that prosecution, Water
Tech distinguished its product from Schuman by asserting that
Water Tech's product had a toroidal body, whereas Schuman
was not toroidal. Kokido alleges that Water Tech's
representation was knowingly false in that Schuman is
cylindrical, and a cylinder is a toroid. Water Tech contends
that this counterclaim should be dismissed for failure to
state a claim under Rule 12(b)(6) because the representation
was merely attorney argument and not an intended deception.
purpose of a motion to dismiss under Rule 12(b)(6) of the
Federal Rules of Civil Procedure is to test the legal
sufficiency of the complaint. World Wide Stationery Mfg.
Co., Ltd. v. U.S. Ring Binder, L.P., 4:07-CV-1947 (CEJ),
2009 WL 1684702, at *1 (E.D. Mo. June 16, 2009). “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). “A claim has
facial plausibility 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. Inequitable conduct must be pleaded with
particularity under Rule 9(b). World Wide
Stationary, 2009 WL 1684702, at *1.
prove infectious unenforceability, an accused infringer must
establish (1) inequitable conduct sufficient to hold the
parent patent unenforceable and (2) a direct relation between
that conduct and enforcement of the child patent.
Consolidated Aluminum Corp. v Foseco International
Ltd., 910 F.2d 804, 810-811 (Fed. Cir. 1990). With
respect to the first prong, the accused infringer must prove
that the patentee acted with the specific intent to deceive
the PTO. Therasense, Inc. v. Becton, Dickinson &
Co., 649 F.3d 1276, 1290 (Fed. Cir. 2011). A finding
that the misrepresentation or omission amounts to gross
negligence or negligence under a “should have
known” standard does not satisfy this intent
requirement. Id. Specific intent to deceive must be
“the single most reasonable inference able to be drawn
from the evidence.” Id. Attorney argument
attempting to distinguish claims from prior art does not rise
to the level of affirmative misrepresentation, and the
examiner is free to reject such argument and reach his own
conclusion. Young v. Lumenis, Inc., 492 F.3d 1336,
1349 (Fed. Cir. 2007). That is precisely what occurred here.
parties do not dispute that donuts and cylinders are both
toroids. The ‘460 prosecution history, incorporated by
reference into Kokido's counterclaim pleadings, reflects
that Water Tech's use of “toroidal” refers to
the curvilinear body of the ‘460, as shown in Figure 2,
where the “donut hole” creates the handle, as
opposed to the elongated cylinder of Schuman. Water Tech
simply sought to distinguish the compact shape of the
‘460 in support of its claim of superior
maneuverability. And the PTO examiner clearly was not
deceived by Water Tech's usage. The examiner recognized
that Schuman did indeed have a toroidal body, but he still
allowed the amendment because Schuman did not teach a
toroidal body wherein the hole created the handle. Viewing
Kokido's pleadings and the referenced patents in full
context, the Court finds Kokido's allegations of
deception entirely speculative and insufficient to state a
claim to relief that is plausible on its face.
IT IS HEREBY ORDERED that Plaintiffs motions
to dismiss are GRANTED. ECF Nos. 142, 145.
 Water Tech's original motion to
dismiss, filed July 18, 2018 (ECF No. 95), was dismissed
without prejudice (ECF No. 141) in the wake of the
Court's Markman ruling (ECF No. 137). Water Tech renewed
its motion to dismiss on April 4, 2019 (ECF No. 142).
 U.S. Patent No. 6, 797, 157.
 U.S. Patent No. 4, 962, 559.