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Pall Corp. v. Cuno Inc.

January 20, 2010


The opinion of the court was delivered by: E. Thomas Boyle United States Magistrate Judge


Before the court is the defendant's motion to amend its Answer, Affirmative Defenses and Counterclaims ("Amended Answer") to assert that the sole remaining patent at issue herein, U.S. Patent No. 5,543,047 (the "'047 Patent"), is unenforceable as a result of plaintiff's inequitable conduct during the recent reexamination proceedings that took place before the United States Patent and Trademark Office (the "PTO"). Plaintiff opposes the defendant's motion on the grounds that the Proposed Amended Answer is not pled with particularity, as required by Federal Rule of Civil Procedure 9(b) and recent case law. For the following reasons, the defendant's motion is granted in its entirety.


Familiarity with the facts of the underlying actions is presumed. As a result of recent reexamination proceedings before the PTO, which concluded with the issuance of a Reexamined Certificate for the '047 Patent on June 9, 2009, the plaintiff, Pall Corporation ("Pall") found it necessary to amend its Complaint in the within two actions and did so on July 13, 2009. Pall's Amended Complaint withdrew its infringement allegations with respect to U.S. Patent No. 5,690,765, withdrew certain allegations of willful patent infringement, and limited its claims with respect to the '047 Patent. The defendant, Cuno Incorporated ("Cuno"), did not oppose Pall's amendment.

Although Cuno sought Pall's consent to file its Amended Answer, Pall advised Cuno that it would oppose any such amendment. By letter motion dated July 15, 2009, Cuno requested a pre-motion conference with Judge Mauskopf with respect to its motion to amend its Answer. Judge Mauskopf referred Cuno's letter motion to the undersigned by Order dated July 17, 2009 and, on July 24, 2009, Pall filed its letter opposing Cuno's request for a pre-motion conference. By Order dated August 4, 2009, the Court waived the requirement of a pre-motion conference and granted Cuno leave to move to amend its Answer by formal motion. Both parties were afforded the right to supplement their papers by Order dated November 30, 2009, due to the intervening decision in Exergen Corporation v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009), and, as permitted, Cuno submitted its revised proposed Amended Answer, for which it seeks leave to file.


I. Legal Standard

Federal Rule of Civil Procedure 15(a) governs the amendment of pleadings and provides that "a party may amend the party's pleading only by leave of court or by written consent of the other party; and leave shall be given as justice so requires." Fed. R. Civ. P. 15(a). The decision to allow such leave is firmly within the discretion of the district court. See Liberty Mut. Ins. Co. v. First Brighton Transp. Mgmt., No. 07 CV 715, 2008 U.S. Dist. LEXIS 31791, at *11-12 (E.D.N.Y. Apr. 16, 2008) (citing Zenith Radio Corp. v. Hazeltine Research, Inc., 401 U.S. 321, 330 (1971)). Leave to amend is generally granted unless there appears to be bad faith or unnecessary delay on the part of the movant, or permitting the proposed amendment would be futile. See Foman v. Davis, 371 U.S. 178, 182 (1962).

In determining whether to grant leave to amend, the court applies the same standard as that for a motion to dismiss under Rule 12(b)(6). See Dougherty v. Town of N. Hempstead Bd. of Zoning Appeals, 282 F.3d 83, 88 (2d Cir. 2002). In order to defeat a Rule 12(b)(6) motion, an individual must plead only enough facts to "state a claim to relief that is plausible on its face." Ashcroft v. Iqbal, __ U.S. __, 129 S.Ct. 1937, 1949 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). As such, "[t]he court must construe the facts alleged by the party proposing the amendment to be true and view them in the most favorable light." Hartman v. County of Nassau, No. 04 CV 1784, 2008 U.S. Dist. LEXIS 34729, at *55 (E.D.N.Y. Apr. 28, 2008) (citing Narvarte v. Chase Manhattan Bank, N.A., No. 96 CV 8133, 1998 U.S. Dist. LEXIS 15530, at *1 (S.D.N.Y. Oct. 1, 1998)).

II. Inequitable Conduct - The Elements

A finding that a patent is unenforceable due to inequitable conduct requires clear and convincing evidence of two elements: (1) that the applicant "made an affirmative misrepresentation of material fact, failed to disclose material information or submitted false material information," and (2) that the applicant "intended to deceive" the PTO. Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1363 (Fed. Cir. 2007) (citing Impax Labs., Inc. v. Aventis Pharms. Inc., 468 F.3d 1366, 1374 (Fed. Cir. 2006)). If the court finds that the requisite two elements have been established by clear and convincing evidence, "it must then 'balance the equities to determine whether the patentee has committed inequitable conduct that warrants holding the patent unenforceable.'" Cargill, 476 F.3d at 1364 (quoting Impax Labs., 468 F.3d at 1374-75) (additional citation omitted). Under this balancing test, "[t]he more material the omission or the misrepresentation, the lower the level of intent required to establish inequitable conduct, and vice versa." Cargill, 476 F.3d at 1364 (quoting Critikon, Inc. v. Becton Dikinson Vascular Access, Inc., 120 F.3d 1253, 1256 (Fed. Cir. 1997)) (alteration in original). "[A] finding of inequitable conduct in the acquisition of even a single claim of a patent renders the remaining claims of that patent unenforceable, even those without the taint of inequitable conduct." Pharmacia Corp. v. Par Pharm., Inc., 417 F.3d 1369, 1374-75 (Fed. Cir. 2005) (citing Kingsdown Med. Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867, 877 (Fed. Cir. 1988)).

1. Materiality

Information is considered material "where there is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent." Cargill, 476 F.3d at 1364 (citing 37 C.F.R. § 1.56(a)). Information is also considered material if it falls within the standards set forth in PTO Rule 56, which provides as follows:

[I]nformation is material to patentability when it is not cumulative to information already of record or being made of ...

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