United States District Court, N.D. Texas, Dallas Division
DR. FORD ALBRITTON, IV, Plaintiff,
ACCLARENT, INC., Defendant.
MEMORANDUM OPINION AND ORDER
BARBARA M.G. LYNN CHIEF JUDGE
the Court are (1) a Motion to Dismiss Plaintiff's First
Amended Complaint [ECF #26], and (2) a Motion for Leave to
File a Supplemental Exhibit in Support of Motion to Dismiss
[ECF #40], both filed by Defendant Acclarent, Inc.
(“Acclarent”). For the following reasons, the
Motion for Leave to File a Supplemental Exhibit is DENIED,
and the Motion to Dismiss is DENIED in part, and GRANTED in
First Amended Complaint (“FAC”), which is the
live pleading in this action and the subject of
Acclarent's Motion to Dismiss, alleges Plaintiff Dr. Ford
Albritton, IV (“Dr. Albritton”) is a prominent
ENT surgeon and an innovator in the field of nasal and sinus
surgery. FAC, ¶14. Acclarent is a medical device company
that sells, among other things, balloon sinuplasty devices,
including the Relieva Spin® and SpinPlus® devices.
Id., ¶¶8, 15. In 2006, Dr. Albritton
allegedly began working to develop a novel, surgical catheter
device that could be operated with a single hand.
Id., ¶15. Acclarent allegedly learned of this
invention and contacted Dr. Albritton in 2007 to express
interest in working with him to further develop the
single-handed surgical catheter and other medical devices.
Id., ¶15. On June 12, 2007, Dr. Albritton and
Acclarent executed a Mutual Non-Disclosure Agreement
(“NDA”) to facilitate the sharing of confidential
information while the parties explored possible business
opportunities of mutual benefit. Id., ¶16;
see also id., Ex. A. In 2008, the parties negotiated
and signed a consulting services agreement (“Consulting
Agreement”), pursuant to which Dr. Albritton provided
advice and guidance to Acclarent employees on modifications
and improvements to several Acclarent products. Id.,
¶¶25-27; see also id, Ex. F.
lawsuit, Dr. Albritton alleges that Acclarent breached the
NDA and the Consulting Agreement (1) by using his
confidential information to develop Acclarent's Relieva
Spin ® and SpinPlus ® devices; (2) by incorporating
Dr. Albritton's pre-existing intellectual property into
the patent applications that eventually issued as U.S. Patent
No. 8, 414, 473 (“the ʼ473 patent”); (3) by
failing to identify Dr. Albritton as a co-inventor of the
technology claimed in the ‘473 Patent; and (4) by
failing to assign Dr. Albritton all right, title, and
interest in the ‘473 Patent. Dr. Albritton further
alleges that Acclarent fraudulently induced him to sign both
the NDA and the Consulting Agreement and that Acclarent
committed fraud because Acclarent secretly used Dr.
Albritton's confidential information for its own
purposes, including filing for patent protection for its own
benefit. Finally, Dr. Albritton alleges that Acclarent
directly and indirectly infringes his patent, U.S. Patent No.
9, 011, 412 (“the ‘412 patent”), by making
and selling the Acclarent Relieva devices, including the
Relieva Spin® and the SpinPlus®.
moves to dismiss on limitations grounds Dr. Albritton's
common law claims for breach of the NDA, breach of the
Consulting Agreement, fraudulent inducement, and fraud.
Acclarent further argues that Dr. Albritton's claims
regarding breach and fraudulent inducement of the NDA should
be dismissed because the NDA fails to protect the allegedly
misused information and because the FAC fails to identify
with sufficient particularity the conduct that allegedly
induced Dr. Albritton to sign the NDA. Finally, Acclarent
argues that the FAC establishes that the Acclarent Relieva
devices do not infringe the ‘412 patent.
Albritton responds that his common law claims are not barred
by the statute of limitations because he adequately pleaded
that Acclarent fraudulently concealed information that would
trigger the statute of limitations and that his fraudulent
inducement and patent infringement allegations are sufficient
to state a claim for relief.
Court held a hearing on Acclarent's Motion to Dismiss on
October 24, 2017, and the parties filed supplemental briefs
directed to various limitations issues. On November 9, 2017,
Acclarent filed a Motion for Leave to File pleadings
submitted to the Patent Trial and Appeal Board
(“PTAB”) in support of its Motion to Dismiss. The
issues have now been fully briefed and argued, and both
Motions are ripe for determination.
survive a Rule 12(b)(6) motion to dismiss, the plaintiff must
have pled “a short and plain statement of the claim
showing that the pleader is entitled to relief.”
Fed.R.Civ.P. 8(a)(2). In analyzing a motion to dismiss for
failure to state a claim under Rule 12(b)(6), the Court
accepts all well-pleaded facts as true and views them in the
light most favorable to the plaintiff. Thompson v. City
of Waco, 764 F.3d 500, 502 (5th Cir. 2014); In re
Katrina Canal Breaches Litig., 495 F.3d 191, 205 (5th
Cir. 2007). The Court will not, however “accept as true
conclusory allegations, unwarranted factual inferences, or
legal conclusions.” Great Lakes Dredge & Dock
Co. LLC v. La. State, 624 F.3d 201, 210 (5th Cir. 2010).
“complaint must contain sufficient factual matter,
accepted as true, to state a claim to relief that is
plausible on its face.” Howe v. Yellowbook,
USA, 840 F.Supp.2d 970, 975 (N.D. Tex. 2011) (Lynn, J.)
(citing Bell Atl. Corp. v. Twombly, 550 U.S. 544,
570 (2007)). A claim is plausible on its face “when the
plaintiff pleads factual content that allows the court to
draw the reasonable inference that the defendant is liable
for the misconduct alleged.” Lone Star Nat. Bank,
N.A. v. Heartland Payment Sys., Inc., 729 F.3d 421, 423
(5th Cir. 2013) (quoting Highland Capital Mgmt., L.P. v.
Bank of Am., Nat'l Ass'n, 698 F.3d 202, 205 (5th
Cir. 2012)). “Plausible” does not mean
“probable, ” but it asks for “more than a
sheer possibility that a defendant has acted
unlawfully.” Ashcroft v. Iqbal, 556 U.S. 662,
678 (2009) (citing Twombly, 550 U.S. at 556).
sounding in fraud must also satisfy the heightened pleading
standard set out in Fed.R.Civ.P. 9(b), which requires a party
“alleging fraud or mistake . . . [to] state with
particularity the circumstances constituting fraud or
mistake.” United States ex rel. Grubbs v.
Kanneganti, 565 F.3d 180, 185 (5th Cir. 2009) (internal
citation omitted). The Fifth Circuit has interpreted Rule
9(b) to require, at a minimum, that a plaintiff set forth the
“who, what, when, where, and how” of the alleged
fraud. United States ex rel. Thompson v. Columbia/HCA
Healthcare Corp., 125 F.3d 899, 903 (5th Cir. 1997)
(internal citation and quotation marks omitted). However, the
Fifth Circuit has also stated that the “time, place,
contents, and identity standard is not a straitjacket for
Rule 9(b), ” concluding that Rule 9(b) is
context-specific and flexible. Grubbs, 565 F.3d at
preliminary matter, Acclarent seeks leave to submit a copy of
Dr. Albritton's response to Acclarent's petition for
inter partes review (“IPR”) of the
‘412 patent, for the Court's consideration in
connection with Acclarent's Motion to Dismiss Dr.
Albritton's patent infringement claims. Acclarent
contends the IPR Response filed with the PTAB is relevant to
(1) the claim construction proposed by Dr. Albritton and (2)
a hypothetical question posed by the Court at the October 24,
2017, hearing regarding “creative” use. More
specifically, Acclarent argues Dr. Albritton's assertion
at the hearing that the ‘412 patent is infringed if the
Relieva devices are “capable of” manipulation of
a working device with a thumb and forefinger is inconsistent
with his position in the PTAB proceeding that the ‘412
patent covers only products that are “configured
to” or “designed to” permit, and not merely
“capable of” permitting, manipulation of the
working device with both the thumb and index finger.
Albritton argues that Acclarent's request should be
denied because it is procedurally improper and substantively
incorrect. Dr. Albritton contends that his arguments to this
Court and the PTAB are consistent and that Acclarent
improperly conflates the concepts of inherent anticipation,
express anticipation, and literal infringement to show
Motion is DENIED, and the Court will not consider Dr.
Albritton's PTAB submission in the context of the pending
Motion to Dismiss. The proffered material is not part of the
FAC, and thus is outside of the scope of the pleadings the
Court considers under Fed.R.Civ.P. 12(b)(6). See Scanlan
v. Texas A & M Univ., 343 F.3d 533, 536 (5th Cir.
2003) (explaining that district court must not go outside the
pleadings in determining whether to grant a motion to
dismiss). As explained below, the Court declines to consider
any claim construction arguments or resolve any disputed
issue of fact at this stage in the litigation.