United States District Court, S.D. Texas, Houston Division
MEMORANDUM AND ORDER
F. ATLAS, SENIOR UNITED STATES DISTRICT JUDGE
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
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
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.
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.
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
RULE 12(c) STANDARD
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.
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.
Legal Standards for Inequitable Conduct
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).
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 ...