Drew Technologies, Inc. v. Robert Bosch, L.L.C., Case No. 12-15622, 2014 WL 562458 (E.D. Mich. Feb. 13, 2014).
Drew Technologies filed suit against Robert Bosch LLC and affiliates for infringement of four patents relating to on-board information displays in vehicles. Bosch filed an answer and counterclaim alleging inequitable conduct as both an affirmative defense and counterclaim. Essentially, Bosch alleged that Drew breached its duty of candor by failing to cite a prior art patent owned by a subsidiary during examination. Drew moved to dismiss the affirmative defense and counterclaim for failure to state a claim under Fed. R. Civ. P. 12(b)(6).
The court noted that while most aspects of a patent action only require notice pleading, allegations of inequitable conduct – which essentially sound in fraud – must be pled with particularity under Fed. R. Civ. P. 9(b). The Federal Circuit has held that, as a uniform national rule, that such a pleading must set forth “the who, what, when, where, and how of the alleged fraud.” Exergen Corp. v. Wal-mart Stores, Inc., 575 F.3d 1312, 1327 (Fed.Cir.2009)(quoting DiLeo v. Ernst & Young, 901 F.2d 624, 627 (7th Cir.1990)). In addition, although “knowledge” and “intent” may be averred generally under Rule 9(b), Exergen “requires that the pleadings allege sufficient underlying facts from which a court may reasonably infer that a party acted with the requisite state of mind.” Id.
Pleading the “Who”
U.S. District Judge Terrence G. Berg ruled that Bosch’s pleadings failed to meet this standard. First, Bosch did not satisfy the “who” requirement of Exergen. Bosch repeatedly alleged that the deceptive acts were committed by “Michael Drew, Brian Herron and/or their representatives.” The Court ruled that this was insufficient, because any combination of actors could have been responsible for various acts, and thus the pleading did “not identify the ‘who’: the person or persons who committed the acts constituting the elements of the defense.” Slip op. at *3.
Pleading the “How” and “Why”
The Court also held that Bosch failed to plead the “how” and “why” of inequitable conduct in sufficient detail. Under Exergen, this requires identification of the particular claim limitations, or combination of claim limitations, that are supposedly absent from the information of record. The Court held that Bosch’s cursory pleading did not meet this standard. Slip op. at *5.
Pleading the “What” and “Where”
The Court did rule, on the other hand, that Bosch’s counterclaim adequately plead the “what” and the “where” of the alleged inequitable conduct. Bosch identified the specific claim to which the withheld reference was relevant, by averring that, “[t]he passages of the [prior art patent] material to the patentability of at least claim 1 of the Asserted ′851 Patent include….” The Court concluded that, “While the allegations could be clearer, by referencing ‘at least claim 1 of the Asserted ′851 Patent’ Bosch is alleging that every limitation in claim 1 is ‘anticipated or rendered obvious based on the ′964 Patent….” Slip op. at *4.
Finally, the Court ruled that Bosch failed to plead enough facts to support an inference that Drew acted with actual intent to deceive the USPTO, or that its conduct was egregious. See Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276, 1290 (Fed.Cir.2011). Bosch alleged that Drew had copied paragraphs from the prior art patent into the background portion of the asserted patent. However, the Court ruled that copying alone was not enough. “These allegations are insufficient to establish that Plaintiff had knowledge of the withheld material information, and also fail to establish specific intent to deceive the Patent Office. Bosch’s arguments of egregious misconduct are also unavailing.” Slip op. at. *5
As a result, the Court granted Drew’s motion to dismiss.