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Deep Fix, LLC v. Marine Well Containment Company LLC

United States District Court, S.D. Texas, Houston Division

August 12, 2019

DEEP FIX, LLC, Plaintiff,



         This patent case is before the Court on the “Motion for Partial Judgment on the Pleadings and to Dismiss Defendant's Inequitable Conduct Claims Pursuant to Fed.R.Civ.p. 9(b) and 12(c)” (“Motion to Dismiss”) [Doc. # 137] filed by Plaintiff Deep Fix, LLC (“Deep Fix”). Defendant Marine Well Containment Company LLC (“MWCC”) filed an Opposition [Doc. # 148] to the Motion to Dismiss, and Deep Fix filed a Reply [Doc. # 155]. Having reviewed the record, with particular attention to the allegations in Defendant's Fourth Amended Answer [Doc. # 60], and having applied relevant legal authorities, the Court denies the Motion to Dismiss.

         I. BACKGROUND

         Charles Adams is the sole inventor of the cap valve covered by the '393 Patent. Through a series of assignments, Deep Fix asserts sole ownership of all interest in the '393 Patent.

         MWCC is a consortium of oil and gas companies including ExxonMobil, British Petroleum (“BP”), and others. MWCC manufactures oil and gas well containment systems used in well blowout situations.

         On September 3, 2010, Adams filed a provisional patent application for his cap valve invention. See Complaint [Doc. # 1], ¶ 14. On September 2, 2011, Adams filed a non-provisional patent application and claimed priority based on the provisional patent application filed in 2010. See Id. The '393 Patent issued on September 16, 2014. See id.

         Deep Fix filed this patent infringement lawsuit on March 26, 2018, alleging that three well containment systems manufactured by MWCC infringe the claims of the '393 Patent. MWCC filed its Answer on June 18, 2018. In the Answer, MWCC asserted the affirmative defense of inequitable conduct. See Answer [Doc. # 31], p. 9. On July 9, 2018, MWCC filed an Amended Answer again pleading the affirmative defense of inequitable conduct. See Amended Answer [Doc. # 34], pp. 17-23. On August 14, 2018, MWCC filed a Second Amended Answer, again asserting inequitable conduct. See Second Amended Answer [Doc. # 46], pp. 17-23. On September 18, 2018, MWCC filed a Third Amended Answer asserting inequitable conduct. See Third Amended Answer [Doc. # 52], pp. 18-31. On November 16, 2018, MWCC filed its Fourth Amended Answer asserting inequitable conduct as the fifth affirmative defense. See Fourth Amended Answer [Doc. # 60], pp. 24-61. On May 30, 2019, Deep Fix filed the pending Motion to Dismiss challenging the inequitable conduct affirmative defense in the Fourth Amended Answer. The Motion to Dismiss has been fully briefed and is now ripe for decision.

         II. RULE 12(c) STANDARD

         The standard for a motion for judgment on the pleadings under Rule 12(c) “is the same as that for dismissal for failure to state a claim under Rule 12(b)(6).” Johnson v. Johnson, 385 F.3d 503, 529 (5th Cir. 2004). The Court must accept the well-pleaded facts in the affirmative defense as true and view them in the light most favorable to the defendant. See Id. The Court should deny the 12(c) motion unless the defendant could not succeed on the affirmative defense “under any set of facts that he could prove” consistent with the affirmative defense. See id.

         To plead inequitable conduct with the particularity required by Rule 9(b) of the Federal Rules of Civil Procedure, “the pleading must identify the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO.” Exergen Corp. v. Wal-Mart Stores, Inc., 312');">575 F.3d 1312, 1328 (Fed. Cir. 2009); Sanders v. The Mosaic Co., 418 Fed.Appx. 914, 918 (Fed. Cir. Apr. 20, 2011). At the pleading stage, however, the party asserting inequitable conduct is required to plead only those facts that support “a reasonable inference that a specific individual knew of the misrepresentation and had the specific intent to deceive the PTO.” Exergen, 575 F.3d at 1328-29.

         III. ANALYSIS

         A. Legal Standards for Inequitable Conduct Defense

         “Inequitable conduct is an equitable defense to patent infringement that, if proved, bars enforcement of a patent.” In re Rembrandt Techs. LP Patent Litig., 899 F.3d 1254, 1272 (Fed. Cir. 2018) (quoting Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011) (en banc)). “To prevail on the defense of inequitable conduct, the accused infringer must prove that the applicant misrepresented or omitted material information with the specific intent to deceive the [Patent and Trademark Office (“PTO”)].” Id. (quoting Therasense, 649 F.3d at 1287).

         Generally, the “materiality” required for a successful inequitable conduct defense is “but-for” materiality. See Regeneron Pharm., Inc. v. Merus N.V., 864 F.3d 1343, 1350 (Fed. Cir. 2017), cert. denied, 139 S.Ct. 122 (2018). A prior art reference is “but-for” material if the PTO “would not have allowed a claim had it been aware of the undisclosed prior art.” Id. However, when the patentee “has engaged in affirmative acts of egregious misconduct, such as the filing of an ...

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