Case 6:12-cv-00799-JRG Document 77 Filed 10/08/13 Page 1 of 19 PageID #: 1904
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`C.A. No. 6:12-cv-00799-LED
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`JURY TRIAL DEMANDED
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`§§
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`§
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`§§
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`§
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`§§
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`§
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`§§
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`§§
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`INVENSYS SYSTEMS, INC.,
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`v.
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`Plaintiff,
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`EMERSON ELECTRIC CO. and
`MICRO MOTION INC., USA,
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`and
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`Defendants.
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`MICRO MOTION INC., USA,
`
`v.
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`INVENSYS SYSTEMS, INC.,
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`Counterclaim-Plaintiff, §
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`§§
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`§§
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`Counterclaim-Defendant.§
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`INVENSYS SYSTEMS, INC.’S MOTION TO DISMISS AND STRIKE MICRO
`MOTION, INC.’S COUNTERCLAIM AND AFFIRMATIVE DEFENSE OF
`INEQUITABLE CONDUCT
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`Case 6:12-cv-00799-JRG Document 77 Filed 10/08/13 Page 2 of 19 PageID #: 1905
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ......................................................................................................................... 1
`FACTUAL AND PROCEDURAL BACKGROUND................................................................... 2
`ARGUMENT................................................................................................................................. 4
`A.
`Micro Motion’s Claim for Unenforceability of the Invensys Patents-in-
`Suit (Count III) Should be Dismissed Because Micro Motion Failed to
`Plead its Inequitable Conduct Allegations with the Necessary Specificity. .......... 6
`1.
`Micro Motion Fails to Properly Identify “Who” Committed the
`Alleged Inequitable Conduct. .................................................................... 6
`Micro Motion Fails to Properly Plead the “What” and “Where,” As
`Well As “How” the Allegedly Material Misrepresentations
`Affected Patentability. ............................................................................... 7
`Even If Pled Properly, Micro Motion’s Claim Would Be Futile........................... 8
`Micro Motion’s Allegations of “Infectious Unenforceability” Should be
`Dismissed............................................................................................................. 10
`CONCLUSION............................................................................................................................ 13
`
`B.
`C.
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`2.
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`-i-
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`Case 6:12-cv-00799-JRG Document 77 Filed 10/08/13 Page 3 of 19 PageID #: 1906
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`CASES
`
`Accord Acquis LLC v. Appro Intern., Inc.
`2010 WL 3155259 (E.D.T.X. July 22, 2010) ............................................................................7
`
`Ariad Pharms. v. Eli Lilly & Co.
`598 F.3d 1336 (Fed. Cir. 2010)................................................................................................10
`
`Ashcroft v. Iqbal
`129 S.Ct. 1937 (2009)................................................................................................................4
`
`Bell Atlantic Corp. v. Twombly
`550 U.S. 544 (2007)...................................................................................................................4
`
`Bone Care Intern., LLC v. Pentech Pharmaceuticals, Inc.
`No. 08-cv-1083, 2010 WL 1655455 (N.D. Ill. Apr. 23, 2010)................................................12
`
`Cent. Admixture Pharmacy Servs., Inc. v. Advanced Cardiac Sol’ns P.C.
`482 F.3d 1347 (Fed. Cir. 2007)..................................................................................................5
`
`Consol. Aluminum Corp. v. Foseco Int’l Ltd.
`910 F.2d 804 (Fed. Cir. 1990)..................................................................................................11
`
`Doe v. Roman Catholic Diocese of Galveston-Houston
`No. 05-1047, 2006 WL 2413721 (S.D. Tex. 2006) ...................................................................1
`
`eSpeed, Inc. v. Brokertec USA, L.L.C.
`417 F. Supp. 2d 580, 79 U.S.P.Q.2d 1258 (D. Del. 2006), aff’d, 480 F.3d 1129, 82
`U.S.P.Q.2d 1183 (Fed. Cir. 2007)............................................................................................11
`
`Everlight Elec. Co., Ltd. v. Nichia Corp.
`No. 12-cv-11578, 2012 WL 5389696 (E.D. Mich. Nov. 2, 2012).......................................6, 12
`
`Exergen Corp. v. Wal-Mart Stores, Inc.
`575 F.3d 1312 (Fed. Cir. 2009)........................................................................................ passim
`
`Human Genome Scis., Inc. v. Genentech, Inc.
`No. 11-6519, 2011 WL 7461786 (C.D. Cal. Dec. 9, 2011).......................................................9
`
`In Re Omeprazole Patent Litig.
`483 F.3d 1364 (Fed. Cir. 2007)................................................................................................11
`
`Johnson Outdoors Inc. v. Navico, Inc.
`774 F. Supp. 2d 1191 (M.D. Ala. 2011) ............................................................................12, 13
`
`Kearns v. Ford Motor Co.
`567 F.3d 1120 (9th Cir. 2009) ...................................................................................................7
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`Case 6:12-cv-00799-JRG Document 77 Filed 10/08/13 Page 4 of 19 PageID #: 1907
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`Konami Digital Entm't Co. v. Harmonix Music Sys., Inc.
`No. 6:08-cv-286-JDL, 2009 WL 5061812 (E.D. Tex. Dec. 14, 2009)..................................7, 8
`
`Leviton Mfg. Co. v. Universal Sec. Instruments, Inc.
`606 F.3d 1353 (Fed. Cir. 2010)..................................................................................................8
`
`SAP Am., Inc. v. Purple Leaf, LLC
`No. 11-4601 PJH, 2012 WL 2237995 (N.D. Cal. June 15, 2012) .............................................8
`
`Speedplay, Inc. v. Bebop, Inc.
`211 F.3d 1245 (Fed. Cir. 2000)................................................................................................11
`
`SynQor, Inc v. Artesyn Technologies, Inc.
`No. 07-cv-497, 2010 WL 3768093 (E.D. Tex. 2010)................................................................8
`
`Therasense v. Becton, Dickinson and Co.
`649 F.3d 1276 (Fed. Cir. 2011) (en banc)..............................................................................5, 9
`
`Weatherford Int’l, Inc. v. Halliburton Energy Servs., Inc.
`2:09-CV-261-CE, 2011 WL 902243 (E.D. Tex. Mar. 14, 2011)...............................................6
`
`STATUTES
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`35 U.S.C. 101, 135, and 157..........................................................................................................10
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`35 U.S.C. § 112..........................................................................................................................5, 10
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`OTHER AUTHORITIES
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`37 C.F.R. § 1.53...............................................................................................................................3
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`37 C.F.R. § 1.56...............................................................................................................................6
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`60 Fed. Reg. 20195, 20196 ............................................................................................................10
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`Fed. R. Civ. P. 9.........................................................................................................................5, 12
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`Fed. R. Civ. P. 12.........................................................................................................................1, 4
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`http://www.uspto.gov/inventors/independent/eye/201004/provisional.html...................................3
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`Case 6:12-cv-00799-JRG Document 77 Filed 10/08/13 Page 5 of 19 PageID #: 1908
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`Plaintiff and Counterclaim-Defendant Invensys Systems, Inc. (“Invensys”), by and
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`through its undersigned counsel, hereby moves the Court to dismiss and strike Defendant and
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`Counterclaim-Plaintiff Micro Motion, Inc.’s (“Micro Motion”) Counterclaim of Inequitable
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`Conduct and related affirmative defense (¶¶ 73-96) in its Amended Answer, Affirmative
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`Defenses, and Second Amended Counterclaims (ECF No. 71, hereinafter “Third Counterclaim”)
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`pursuant to Rules 12(b)(6), 9(b), and 12(f) of the Federal Rules of Civil Procedure.
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`INTRODUCTION
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`The gravamen of Micro Motion’s Third Counterclaim and related affirmative defense1 is
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`that statements originally made in one Provisional Patent Application, U.S. Provisional App. No.
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`60/166,742 (the “’742 Provisional”) were impermissibly broadened in a non-provisional U.S.
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`Application No. 09/716,644 (hereinafter, the “’644 Application”), rendering U.S. Patent No.
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`7,124,646 (the “’646 Patent”) and six Invensys Patents-In-Suit2 from different families
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`unenforceable for Invensys’ alleged inequitable conduct. See Third Counterclaim ¶¶ 15-38. As
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`set forth in greater detail below, however, Micro Motion’s allegations are fatally flawed and
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`cannot be cured by an amended pleading because:
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`1 For the purposes of this Motion, all references to Micro Motion’s inequitable conduct
`allegations are to its Third Counterclaim, ¶¶ 15-38, pp. 21-24. Micro Motion’s related
`affirmative defense (¶¶ 73-96, pp. 16-19) incorporates the same allegations set forth in Micro
`Motion’s Third Counterclaim. Invensys addresses the sufficiency of Micro Motion’s Third
`Counterclaim in the context of Rules 12(b)(6) and 9(b); however, the same heightened pleading
`requirements apply under Rule 12(f) for Micro Motion’s affirmative defense. See Doe v. Roman
`Catholic Diocese of Galveston-Houston, No. 05-1047, 2006 WL 2413721, at *2 (S.D. Tex.
`2006) (“the standards for a Rule 12(f) motion to strike and a Rule 12(b)(6) motion to dismiss are
`‘mirror images”’); see also Exergen, 575 F.3d at 1325-1326. As such, Micro Motion’s
`affirmative defense should be stricken under Rule 12(f) for the same reasons set forth in this
`Motion regarding Micro Motion’s Third Counterclaim.
`2 The Invensys Patents-in-Suit include U.S. Patent Nos. 7,124,646; 7,136,761; 6,311,136;
`7,505,854; 6,754,594; 7,571,062; and 8,000,906. For purposes of this Motion, the term
`“remaining Invensys Patents-in-Suit” shall include all of the aforementioned patents except U.S.
`Patent No. 7,124,646.
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`Case 6:12-cv-00799-JRG Document 77 Filed 10/08/13 Page 6 of 19 PageID #: 1909
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` Micro Motion’s Third Counterclaim falls far short of the standard enunciated in well-
`established Federal Circuit authority setting forth the requirements for pleading a claim of
`inequitable conduct, as it fails to meet the “who, what, where, when, and how” standard
`set forth under Federal Circuit precedent;
`
` Even assuming that Micro Motion had satisfied the relevant standard, its claim is futile
`because mere inconsistencies (if any) between a provisional and a non-provisional
`application are insufficient for this Court to infer intent, and the remedy for allegedly
`unsupported representations along the lines of those pled by Micro Motion from a final,
`non-provisional application is a finding that the patent lacks proper support in the
`specification, not that it was procured by fraud; and
`
` Micro Motion alleges, contrary to any relevant legal standard, that a claim for
`“infectious unenforceability” can stem from alleged inequitable conduct in a provisional
`application from an unrelated chain of patents and fails to meet the relevant standards for
`pleading inequitable conduct for the remaining Invensys Patents-in-Suit.3
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`FACTUAL AND PROCEDURAL BACKGROUND
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`On October 22, 2012, Invensys filed the instant litigation alleging patent infringement of
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`U.S. Patent Nos. 7,124,646 (the “‘646 Patent”); 7,136,761 (the “‘761 Patent”); 6,311,136 (the
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`“’136 Patent”); and 7,505,854 (the “’854 Patent”) against Micro Motion. (ECF No. 1)4 Nearly
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`one year thereafter -- after filing an initial and amended answer -- Micro Motion alleged
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`inequitable conduct of the Invensys Patents-in-Suit for the first time. (ECF No. 71, filed
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`September 13, 2013). Despite this considerable passage of time, Micro Motion’s pleading is set
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`forth in a summary and conclusory fashion, failing to meet the rigorous inequitable conduct
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`pleading standards which the Federal Circuit has required in its recent jurisprudence.
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`Reduced to its essence, Micro Motion contends that Invensys impermissibly broadened
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`its claims to patentable subject matter between the time of filing the ‘742 Provisional in 1999 and
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`the time of issuance of the ‘646 Patent in 2006. Among other things, Micro Motion asserts that
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`3 Just prior to filing this motion, Micro Motion’s counsel indicated a willingness to stipulate to a
`withdrawal of its infectious unenforceability defense and claim.
`4 On January 31, 2013, Invensys filed its Amended Complaint including allegations of
`infringement for U.S. Patent Nos. 6,754,594; 7,571,062; and 8,000,906. (ECF No. 25).
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`Case 6:12-cv-00799-JRG Document 77 Filed 10/08/13 Page 7 of 19 PageID #: 1910
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`Invensys claimed (in contrast to the ‘742 Provisional) that its flow rate measurement test results
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`could be repeated in real world industrial settings; that its experiments supported a finding that
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`its flow tubes of all sizes would not stall with the introduction of any level of gas; and that its
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`correction techniques could be used with variable fluid densities. See Third Counterclaim, ¶¶
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`20-34. This is without regard to the well-recognized proposition that Invensys was fully entitled
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`to conduct additional testing and research following filing of the ‘742 Provisional, as the USPTO
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`explicitly recognizes; see
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`http://www.uspto.gov/inventors/independent/eye/201004/provisional.html (one of the
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`advantages of filing a provisional is giving the applicant an additional year to experiment and
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`perfect an invention). Moreover, Micro Motion completely disregards the fact that the ‘646
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`Patent is a continuation-in part to two chains of patents, as set forth below (Fig 1, attached hereto
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`as Ex. 1, Invensys Patents-In-Suit circled). Per 37 C.F.R. § 1.53, an applicant is allowed to file
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`continuation-in-part applications that may “disclose and claim subject matter not disclosed in [a]
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`prior application.” (emphasis added). Taking Micro Motion’s allegations as true (which
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`Invensys ultimately intends to contest), it accordingly does not follow that what is contained in
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`the ‘646 Patent specification must match what is set forth in the ‘742 Provisional.
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`Through a one-line reference in its pleading, Micro Motion also states that “[t]he conduct which
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`renders the ‘646 patent unenforceable so infects the family of the Invensys Patents-In-Suit that it
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`renders the other asserted patents unenforceable.” Third Counterclaim, ¶ 37. As is apparent
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`from the above, however, the remaining Invensys Patents-In-Suit come from wholly independent
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`patent families, and there is no allegation of any misconduct of any nature in the prosecution of
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`patents within those families. Under such circumstances, a claim of “infectious
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`unenforceability” cannot lie.
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`ARGUMENT
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`Pursuant to Fed. R. Civ. P. 12(b)(6) and recent U.S. Supreme Court jurisprudence, a party
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`must plead facts sufficient to state a claim to relief that is “plausible on its face.” Ashcroft v.
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`Iqbal, 129 S.Ct. 1937, 1949 (2009), citing Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570
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`(2007). To demonstrate plausibility, a plaintiff must go beyond pleading facts that, when
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`assumed to be true, are “merely consistent with a defendant’s liability.” Id., citing Twombly, 550
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`U.S. at 556-57. This requires “more than labels and conclusions, and a formulaic recitation of
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`the elements of a cause of action will not do.” Id.
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`Moreover, as the Federal Circuit recently stated in no uncertain terms, claims of
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`inequitable conduct before the USPTO “ha[ve] been overplayed, [are] appearing in nearly every
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`patent suit, and [are] cluttering up the patent system…the habit of charging inequitable conduct
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`in almost every major patent case has become an absolute plague. Reputable lawyers seem to
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`feel compelled to make the charge against other reputable lawyers on the slenderest grounds…”
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`Therasense v. Becton, Dickinson and Co., 649 F.3d 1276, 1289-90 (Fed. Cir. 2011) (en banc)
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`(citations omitted) (emphasis added). Recognizing this trend, the Federal Circuit has imposed
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`stringent pleading requirements on parties asserting inequitable conduct pursuant to Fed. R. Civ.
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`P. 9(b), and “simply aver[ring] the substantive elements of inequitable conduct, without setting
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`forth the particularized factual basis for the allegation, does not satisfy Rule 9(b).” 5 Exergen
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`Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 (Fed. Cir. 2009) (citations omitted).
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`Instead, a party must first identify “the specific who, what, when, where, and how of the material
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`misrepresentation or omission committed before the PTO.” Id. at 1327.
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`As set forth below, Micro Motion has failed to identify (at minimum) who allegedly
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`committed the alleged misconduct before the USPTO, what claims and claim limitations the
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`information set forth in the ‘742 Provisional relates to, and how an examiner would have used
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`the additional information in assessing the patentability of the claims. Additionally, even if
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`Micro Motion had pled its claim with the necessary specificity, it ultimately sounds (albeit
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`deficiently) as a claim for inadequate support for the broadened claims at issue (the “written
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`5 Whether inequitable conduct has been adequately pled is a matter of Federal Circuit law,
`because it “pertains to or is unique to patent law.” Exergen, 575 F.3d at 1326, citing Cent.
`Admixture Pharmacy Servs., Inc. v. Advanced Cardiac Sol’ns P.C., 482 F.3d 1347, 1356 (Fed.
`Cir. 2007).
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`Case 6:12-cv-00799-JRG Document 77 Filed 10/08/13 Page 10 of 19 PageID #: 1913
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`description” and/or enablement requirements per 35 U.S.C. § 112), not as a claim for inequitable
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`conduct. Finally, as illustrated by the family tree above (Fig. 1) there is no plausible basis setting
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`forth how the purported inequitable conduct could affect the remaining Invensys Patents-in-Suit.
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`A.
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`Micro Motion’s Claim for Unenforceability of the Invensys Patents-in-Suit (Count
`III) Should be Dismissed Because Micro Motion Failed to Plead its Inequitable
`Conduct Allegations with the Necessary Specificity.
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`1.
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`Micro Motion Fails to Properly Identify “Who” Committed the Alleged
`Inequitable Conduct.
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`Under the Exergen standard, Micro Motion must identify a specific individual who: (a)
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`owed the PTO a duty of candor because of his/her involvement with prosecuting the ‘646 Patent;
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`(b) “knew of the material information;” and (c) “deliberately withheld it.” 575 F.3d at 1329. In
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`Exergen, defendant S.A.A.T. pled on information and belief that “Exergen, its agents, and/or
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`attorneys” intentionally withheld two prior art references from the USPTO during the
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`prosecution of the patent-in-suit that were material to its patentability. The Federal Circuit ruled
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`that this pleading was deficient because it failed to name the specific individual associated with
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`the filing or prosecution who both knew of the material information and deliberately withheld or
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`misrepresented it. Id.; accord Everlight Elec. Co., Ltd. v. Nichia Corp., No. 12-cv-11578, 2012
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`WL 5389696, at *4-5 (E.D. Mich. Nov. 2, 2012) (identification of the “inventors” and relying on
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`their 37 C.F.R. § 1.56 declaration inadequate); see also Weatherford Int’l, Inc. v. Halliburton
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`Energy Servs., Inc., 2:09-CV-261-CE, 2011 WL 902243 (E.D. Tex. Mar. 14, 2011)
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`(Everingham, J.) (denying motion to dismiss when party identified at least one individual who
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`knew of the falsity of the alleged material misrepresentation).
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`This case is on all fours with Exergen and its progeny insofar as Micro Motion fails to
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`identify with any specificity “who” committed the alleged inequitable conduct. Micro Motion
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`focuses almost exclusively on the differences between the ‘742 Provisional on the one hand, and
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`Case 6:12-cv-00799-JRG Document 77 Filed 10/08/13 Page 11 of 19 PageID #: 1914
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`the ‘644 Application and ‘646 Patent, on the other hand, and then concludes summarily that
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`“[t]hese changes constituted a material misrepresentation and render the patent unenforceable for
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`inequitable conduct.” Third Counterclaim, ¶ 36. Glaringly omitted from these allegations is who
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`Micro Motion contends is responsible for this alleged misconduct. The closest Micro Motion
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`comes in its additional defense and counterclaim are two bare references to “the named
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`inventors” in passing. See, e.g. Third Counterclaim, ¶ 28 (“[t]he named inventors of the ‘646
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`patent did not possess the broad scope of invention claimed in the independent claims of the ‘646
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`patent.”). These types of statements fall far short of the particularity required by Exergen,
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`insofar as they do not reflect who was responsible for the purported misrepresentation; indeed,
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`this particularity is required to “protect those whose reputation would be harmed as a result of
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`being subject to fraud charges.” Exergen, 575 F.3d at 1329 n.6, citing Kearns v. Ford Motor Co.,
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`567 F.3d 1120, 1125 (9th Cir. 2009).
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`2.
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`Micro Motion Fails to Properly Plead the “What” and “Where,” As Well As
`“How” the Allegedly Material Misrepresentations Affected Patentability.
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`To satisfy the “what” and “where” elements, a party must particularly plead to which
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`claims --and to which limitations in those claims -- the information is relevant and where
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`material information may be found. Exergen, 575 F.3d at 1329. For example, in Konami, the
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`“what” and “where” requirements were satisfied by pleadings that contained charts of potentially
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`invalidating prior art on a claim-by-claim and limitation-by-limitation basis. Konami Digital
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`Entm't Co. v. Harmonix Music Sys., Inc., No. 6:08-cv-286-JDL, 2009 WL 5061812, at *2 (E.D.
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`Tex. Dec. 14, 2009). Accord Acquis LLC v. Appro Intern., Inc., 2010 WL 3155259 (E.D.T.X.
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`July 22, 2010) (Davis, J.) (finding pleading did not identify which claims and which limitations
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`in those claims to which the withheld references were relevant). Similarly, to satisfy the “why”
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`and “how” requirements, a pleading must explain why the information is material and how an
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`Case 6:12-cv-00799-JRG Document 77 Filed 10/08/13 Page 12 of 19 PageID #: 1915
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`examiner would have used the information in assessing the patentability of the claims. Exergen,
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`575 F.3d at 1330. Information may be “material” if there is a “substantial likelihood that a
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`reasonable examiner would consider it important in deciding whether to allow the application to
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`issue as a patent.” Leviton Mfg. Co. v. Universal Sec. Instruments, Inc., 606 F.3d 1353, 1358-59
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`(Fed. Cir. 2010) (internal citations omitted).
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`Micro Motion paints with an overly broad brush in its Third Counterclaim and related
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`affirmative defense. Unlike in Konami, nowhere in its pleading does Micro Motion identify
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`which claims and which limitations in those claims were affected in any way by the alleged
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`misstatements. In the absence of such an identification, it follows that Micro Motion has not
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`adequately alleged that the PTO would have acted differently absent the alleged
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`misrepresentations – namely, “how” the representations purportedly affected patentability. See
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`generally Third Counterclaim, ¶ ¶ 30, 36 (“[t]he change in language was a material
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`misrepresentation”); see, e.g., SynQor, Inc v. Artesyn Technologies, Inc., No. 07-cv-497, 2010
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`WL 3768093, *6 (E.D. Tex. 2010), report and recommendation adopted, 2010 WL 3860154
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`(E.D. Tex. 2010) (recommending granting motion to dismiss for failure to allege the “how” and
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`“why” prongs with “facts sufficient to show specifically why [the] alleged misstatements were
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`material and how the examiner would have used the information in assessing the patentability of
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`the claims”); SAP Am., Inc. v. Purple Leaf, LLC, No. 11-4601 PJH, 2012 WL 2237995, at *5
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`(N.D. Cal. June 15, 2012) (granting motion to dismiss when party failed to allege “but-for”
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`materiality when it pled no facts showing the alleged misconduct resulted in “the unfair benefit
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`of receiving an unwarranted claim”).
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`B.
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`Even If Pled Properly, Micro Motion’s Claim Would Be Futile.
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`Perhaps the most crucial of Micro Motion’s errors is its wholesale failure to allege an
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`intent to deceive with regard to the alleged inequitable conduct as to any individual. The factual
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`Case 6:12-cv-00799-JRG Document 77 Filed 10/08/13 Page 13 of 19 PageID #: 1916
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`circumstances must “plausibly suggest a[] ‘deliberate decision to withhold a known material
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`reference’ or to make a knowingly false misrepresentation – a necessary predicate for inferring
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`deceptive intent.” Exergen, 575 F.3d at 1331 (internal citations omitted). Indeed, Therasense
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`has established that specific intent be the single most reasonable inference to be drawn from the
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`facts pled in the Complaint. Therasense, 649 F.3d at 1290.
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`The crux of Micro Motion’s allegations is that the ‘644 Application inappropriately
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`broadened the scope of the invention from the ‘742 Provisional (Third Counterclaim, ¶¶ 26, 32),
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`with “the intention of deceiving the [PTO].” Third Counterclaim, ¶ 35. But the mere existence
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`of inconsistencies between the ‘742 Provisional, on the one hand, and the ‘644 Application and
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`‘646 Patent, on the other, is wholly inadequate for the Court to infer deceptive intent on the part
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`of anyone associated with the prosecution at the pleading stage. For example, in Human
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`Genome Scis., Inc. v. Genentech, Inc., No. 11-6519, 2011 WL 7461786 (C.D. Cal. Dec. 9, 2011),
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`the court dismissed an unenforceability claim because there were no facts alleged to support an
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`inference of specific intent to deceive the PTO, as “any number of reasons could exist for that
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`contradiction – the inventor could have made a mistake in that letter or he could have changed
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`his mind about how to read the data. The point is that HGS cannot show the intent behind the
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`statement from the alleged inconsistency itself.” (emphasis added).
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`This case is even more compelling than Human Genome. As a threshold matter, Micro
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`Motion mischaracterizes Invensys’ statements as “misrepresentations”, when, for example, the
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`statement in the ‘742 Provisional that “it cannot be guaranteed that similar repeatability could be
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`achieved in an arbitrary industrial process” is fully reconcilable with the statement in the ‘646
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`Case 6:12-cv-00799-JRG Document 77 Filed 10/08/13 Page 14 of 19 PageID #: 1917
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`Patent that “similar repeatability could be achieved.”6 Moreover, it is hardly unusual for the
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`scope of an invention to change between the time of a provisional and final application, as this
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`year-long period gives the applicant further opportunity to experiment and perfect its invention.
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`For this very reason, the USPTO does not examine provisional applications. See 60 Fed. Reg.
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`20195, 20196 (“The provisional application is not subject to the provisions of 35 U.S.C. 101,
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`135, and 157, i.e. provisional application[s] will not be examined for patentability…”). Micro
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`Motion only points to a difference in statements from the ‘742 Provisional, on the one hand, and
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`the ‘644 Application, and the ‘646 Patent, on the other, along with the conclusory statement that
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`the changes from the ‘742 Provisional to the ‘644 Application “were done with the intention of
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`deceiving the [PTO].” Absent additional allegations, the Court cannot infer, even at the pleading
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`stage, that such misrepresentations were made with a specific intent to deceive.
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`Moreover, Micro Motion claims that the facts and data in the specification did not
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`support Invensys’ broader statements in the ‘644 Application. Third Counterclaim, ¶ 35; accord
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`Third Counterclaim, ¶ 21 (“[t]his is the only statement in the ‘646 patent that the claimed method
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`can be used in a variety of real-world industrial batch processes.”). If these was indeed the case,
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`the USPTO could have reached the conclusion that the patent application should be rejected for a
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`lack of an adequate written description and/or enablement under 35 U.S.C. § 112, which
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`provides, in pertinent part, that “the specification shall contain a written description of the
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`invention, and of the manner and process of making and using it, in such full, clear concise and
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`exact terms as to enable any person skilled in the art to which it pertains…to make and use the
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`same..” Accord Ariad Pharms. v. Eli Lilly & Co., 598 F.3d 1336, 1344 (Fed. Cir. 2010). The
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`USPTO refused to do so, and issued several patents emanating from the ‘644 Application.
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`6 Indeed, this statement from the ‘742 Provisional was from a technical paper submitted with the
`provisional offered outside the context of any particular claim.
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`Case 6:12-cv-00799-JRG Document 77 Filed 10/08/13 Page 15 of 19 PageID #: 1918
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`C.
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`Micro Motion’s Allegations of “Infectious Unenforceability” Should be Dismissed.
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`The allegation of infectious unenforceability of the Invensys Patents-in-Suit is similarly
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`deficient. Micro Motion, without any factual bases, states only that the alleged inequitable
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`conduct which renders the ‘646 Patent unenforceable “so infects the family of the Invensys
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`Patents-in-Suit as to render them unenforceable”. See Third Counterclaim, ¶ 37. This allegation
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`is baseless and should be summarily rejected.
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`First, for the reasons articulated above, the pleading with regards to the unenforceability
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`of the ‘646 Patent is insufficient; thus, there is no valid claim of unenforceability with which to
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`“infect” the remaining Invensys Patents-in-Suit. See In Re Omeprazole Patent Litig., 483 F.3d
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`1364, 1375 (Fed. Cir. 2007) (since accused infringer failed to show inequitable conduct as to a
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`first patent, its arguments of infectious unenforceability failed); Speedplay, Inc. v. Bebop, Inc.,
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`211 F.3d 1245, 1259 (Fed. Cir. 2000) (refusing to hold related patents unenforceable where court
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`affirmed trial court’s denial of inequitable conduct on main patent).
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`Second, even assuming, arguendo, that Micro Motion could set forth a claim of
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`inequitable conduct with respect to the ‘646 Patent, Micro Motion’s infectious unenforceability
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`allegations have no merit. Under a claim of infectious unenforceability, a related patent’s claims
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`are held unenforceable only when the inequitable conduct in prosecuting the parent application
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`bears an “immediate and necessary relation” to the enforcement of the related patents. Consol.
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`Aluminum Corp. v. Foseco Int’l Ltd., 910 F.2d 804, 810-11 (Fed. Cir. 1990).7 There is no
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`authority that would allow for a provisional application in an unrelated chain to “infect” other
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`7 Inequitable conduct in a patent application “does not automatically render unenforceable all of
`the claims of all later issued patents in the same chain,” and patents issuing from continuation
`applications may be held unenforceable only where “the inequitable conduct [is] related to the
`targeted claims of the…patents sought to be enforced.” eSpeed, Inc. v. Brokertec USA, L.L.C.,
`417 F. Supp. 2d 580, 79 U.S.P.Q.2d 1258, 1269 (D. Del. 2006), aff’d, 480 F.3d 1129, 82
`U.S.P.Q.2d 1183 (Fed. Cir. 2007).
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`Case 6:12-cv-00799-JRG Document 77 Filed 10/08/13 Page 16 of 19 PageID #: 1919
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`patents in the way that Micro Motion suggests.8 See Fig. 1, attached hereto as Ex. 1. Indeed, the
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`remaining Invensys Patents-in-Suit issue from different provisional applications from that of the
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`‘646 Patent (U.S. Patent App. No. 60/066,544; U.S. Patent App. No. 60/368,153). As shown in
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`Fig. 1, the ‘646 Patent and the remaining Invensys Patents-in-Suit are related only by virtue of
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`the fact that the ‘646 Patent is a continuation-in-part application of the ‘761 Patent.
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`Third, even setting aside the fact that Micro Motion’s infectious unenforceability claims
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`rest on legally insufficient grounds, Micro Motion’s pleading is deficient. As previously noted,
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`it must allege specific facts demonstrating how the alleged inequitable conduct has such an
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`“immediate and necessary relation” to particular claims of the remaining Invensys Patents-in-
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`Suit. A cursory allegation that “[t]he conduct which renders the ‘646 patent unenforceable so
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`infects the family of the Invensys patents-in-suit that it renders the other asserted patents
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`unenforceable” (Third Counterclaim, ¶ 37) fails to meet this standard. Courts have held such
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`claims to be insufficient under Rule 9(b). See Bone Care Intern., LLC v. Pentech
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`Pharmaceuticals, Inc., No. 08-cv-1083, 2010 WL 1655455, *3 (N.D. Ill. Apr. 23, 2010) (finding
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`accused infringer failed to plead sufficient facts to show a sufficient relationship between the
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`prior patents that were allegedly procured with inequitable conduct, as “[t]he mere fact that the
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`[patent] is r