United States District Court, D. Vermont
OPINION AND ORDER
WILLIAM K. SESSIONS III DISTRICT COURT JUDGE
Plaintiff Mobile Medical International Corporation (“MMIC”) has filed suit seeking a declaratory judgment as to its alleged infringement of U.S. Patent No. 4, 915, 435 (the “‘435 Patent”). MMIC also challenges the validity of the ‘435 Patent. Defendants Tractus Medical, Inc., which allegedly owns the ‘435 Patent, and Advanced Mobile Hospital Systems, Inc. (collectively “AMoHS”) have filed a counterclaim for patent infringement.
Pending before the Court is AMoHS’s motion for judgment on the pleadings with respect to MMIC’s affirmative defense of inequitable conduct. ECF No. 146. MMIC claims that during a re-examination of the ‘435 Patent by the United States Patent and Trademark Office (“PTO”), AMoHS acted inequitably by failing to disclose existing “prior art” of which it was aware. The AMoHS motion contends that MMIC’s affirmative defense is inadequately pled. The motion is unopposed.
For the reasons set forth below, the motion for judgment on the pleadings is granted.
The ‘435 Patent describes a transportable van in which invasive surgical procedures can be performed. It includes a laterally expandable portion that defines the operating room, with an operating table that can remain in the vehicle when the expandable portion is retracted. The unit includes all essential facilities for complete invasive surgical procedures, including pre- and post-op areas.
MMIC is a manufacturer of temporary surgical units, known as “mobile medical units.” Having been accused by AMoHS of patent infringement, MMIC filed this lawsuit on October 30, 2007 challenging both the infringement claim and the ‘435 Patent’s validity. AMoHS, of which Tractus Medical Inc. is a subsidiary, responded with a counterclaim for infringement. On February 25, 2008 and March 29, 2009, MMIC asked the PTO to reexamine the ‘435 Patent. The instant litigation was stayed on August 27, 2008 pending the outcome of the reexaminations.
During the first reexamination, the PTO found the claims in the ‘435 Patent unpatentable. The decision was reversed by the Board of Patent Appeals and Interferences, which found claims 1-18 and 30 valid. The parties then returned to this Court, and the instant litigation recommenced in 2012.
On March 21, 2013, MMIC filed its most recent answer to the infringement counterclaim. The answer included various “additional defenses.” ECF No. 92 at 7-8. Among those is a defense of inequitable conduct, in which MMIC claims that AMoHS and others, including Defendants’ counsel, failed to disclose certain “prior art” during the reexaminations. That defense alleges in full as follows:
The ‘435 patent is unenforceable, at least because, upon information and belief, at least as early as February 2001, both the patentee and his counsel were aware of multiple materially relevant prior art references depicting medical vans with expandable or telescoping sides, including but not limited to publications cited to patentee by counsel for another accused infringer. Upon information and belief, these material prior art references were known to one or more of Defendants and/or their alter egos and/or their principals not later than 2001, and again in February 2005, as evidenced by correspondence finally produced by Defendants in January 2013. These material prior art references were not cited during the original examination of the application that led to the ‘435 patent or during reexamination 90/009, 055 or reexamination 90/101, 466 of the ‘435 patent. These prior art references were more relevant than the references cited during the original examination, and would have been material to the reexamination of the ‘435 patent because they clearly depict an “operating room” with mounted equipment not removed from the operating room when the expandable sides of the van expand or nest. The Defendants, their alter egos, their agents, and the inventor also failed to provide materially relevant information regarding expandable mobile lithotripsy units and expandable cardiac catheterization units to the USPTO, despite the inventor’s knowledge that the alleged distinction between the operating room of such prior art units and the operating room or “invasive surgery room” of his alleged invention was merely the intended use of the room, i.e., that users of his alleged invention would simply scrub their hands, clean surfaces carefully, and wear surgical clothes (“greens”) and surgical masks in order to make the expandable room “sterile” for surgical procedures.
ECF No. 92 at 7-8. AMoHS now moves to dismiss this defense for inadequate pleading.
AMoHS submits its motion pursuant to Fed.R.Civ.P. 12(c) seeking judgment on the pleadings. As a preliminary matter, it is not clear that the motion is filed under the appropriate rule. Rule 12(c) generally applies to affirmative claims, while a separate rule, Fed.R.Civ.P. 12(f), allows the Court to “strike from a pleading an insufficient defense.” As the current motion seeks dismissal of an affirmative defense, the Court will apply Rule 12(f). See Wireless Inc. Corp. v. Facebook, Inc., 787 F.Supp.2d 298, 300 (S.D.N.Y. 2011) (construing motion to dismiss a defense in a patent case as a motion to strike under Rule 12(f)); Bazazi v. Michaud, 856 F.Supp. 33, 34 (D.N.H. 1994) (construing plaintiff’s motion for judgment on the pleadings as motion to strike affirmative defenses pursuant to Rule 12(f)).
AMoHS argues that MMIC’s assertion of facts lacks the level of specificity required for an inequitable conduct claim, and should therefore be dismissed. In the context of a patent claim, Federal Circuit law determines the applicable pleading standard. Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009). A claim of patent unenforceability premised upon inequitable conduct sounds in fraud. Because it sounds in fraud, the claim or defense must be pled with particularity as required by Federal Rule of Civil Procedure 9(b). Id. at 1331 (citing Ferguson Beauregard/Logic Controls, Div. of Dover Res. v. Mega Systems, 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 ...