Goss v. MAN Roland, et al.

Goss v. MAN Roland, et a l . 03-CV-513-SM 08/14/07 UNITED STATES DISTRICT COURT DISTRICT OF NEW HAMPSHIRE

Goss International Americas, I nc., Plaintiff v. Civil No. 03-CV-513-SM Opinion No. 2007 DNH 096 MAN Roland, Inc. and MAN Roland Druckmaschinen A G , Defendants

MAN Roland, Inc. and MAN Roland Druckmaschinen A G , Counterclaim Plaintiffs v. Goss International Americas, Inc. and Heidelberqer Druckmaschinen AG, Counterclaim Defendants

O R D E R

On January 6, 2006, MAN Roland moved for summary judgment on its third counterclaim, seeking a declaratory judgment of unenforceability based upon a variety of alleged inequitable conduct (document no. 173). On July 31, 2006, the court denied MAN Roland's motion, finding that MAN Roland failed to provide clear and convincing evidence of inequitable conduct (document no. 418). Goss now moves for summary judgment that the '100, '734, and '251 patents-in-suit are not unenforceable for inequitable conduct (document no. 441), arguing that the alleged inequitable conduct, even if true, is not relevant to the pa t ents- i n - s u i t .

The Applicable Law "A patent may be rendered unenforceable for inequitable conduct if an applicant, with intent to mislead or deceive the examiner, fails to disclose material information or submits materially false information to the PTO during prosecution." Atofina v. Great Lakes Chem. C o r p . . 441 F.3d 991, 1001 (Fed. Cir. 2006) (quoting Digital Control. Inc. v. Charles Mach. W o r k s . 437 F.3d 1309, 1313 (Fed. Cir. 2006)). Both of these elements, intent and materiality, must be proven by clear and convincing evidence. M. Eagles Tool Warehouse. Inc. v. Fisher Tooling C o . . 439 F.3d 1335, 1340 (Fed. Cir. 2006) (citing J.P. Stevens & Co. v . Lex Tex L t d ., 747 F.2d 1553, 1559 (Fed. Cir. 1984)).

The Federal Circuit has held that "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 P h a r m . . I nc.. 417 F.3d 1369, 1374-75 (Fed. Cir. 2005) (citing Kingsdown Med. Consultants. Ltd. v. Hollister. I nc.. 863 F.2d 867, 877 (Fed. Cir. 1988)). But, "the court's inequitable conduct cases do not extend inequitable conduct in one patent to another patent that was not acquired through culpable c o n d u c t ." Id.

Discussion Goss asserts that even if it had engaged in inequitable conduct related to the revival of the /587 application, such conduct would be irrelevant to this case, because the prosecution chain that led to the /100, /734, and /251 patents is wholly separate from the revived /587 application.1

MAN Roland argues that the relevant inquiry is not whether the ancestry of the patents-in-suit can be traced back to the revival of the /587 application, but rather, whether any of the claims in the patents-in-suit protect the same subject matter at issue in the revived /587 application. The need to determine the

In an order dated March 3, 2007 (document no. 463) the court considered the same operative facts in the context of Heidel b e r g e r ''s motion for summary judgment on MAN Roland's antitrust cross-claim. Specifically, Heidelberger moved for summary judgment on MAN Roland's cross-claim asserting sham litigation on the basis that Heidelberger knew or should have known that the 'lOO and 'VSi patents were invalid and unenforceable because of inequitable conduct related to the J581 application revival. Heidelberger argued in that motion, just as Goss argues presently, that the patents-in-suit were unrelated to the revival J581 application. MAN Roland objected, but ignored the issue entirely, thereby conceding the point.2 A review of the record also revealed that the 'lOO and 'ISA patents traced their ancestry back through continuations that predated the abandonment and subsequent revival of the J581 application.

Regarding the present motion, MAN Roland brings forward no new evidence. The record still reflects that the /100 and /734 patents, as well as the /251 patent that was not at issue in the court's March 12 order, trace their origins back through a chain of continuations that predate the abandonment of the original J581 application. Specifically, all of the patents-in-suit can be traced back to the J668 application, a continuation of the original J581 application. The J668 application was filed on May 14, 1991, but claims a priority date of October 5, 1989, based on the original filing date of the J581 application. See 35 U.S.C. § 120 (articulating the conditions under which an inventor may claim the benefit of an earlier filing date). The original J581 application was not abandoned until May 27, 1991, several days after the J668 application was filed. The alleged inequitable conduct occurred in connection with the revival of the J581 application, which did not take place until June 24, 1992.

In its opposition, MAN Roland, citing Fox Industries. Inc. v. Structural Preservation Systems. I nc.. 922 F.2d 801, 804 (Fed. Cir. 1990), correctly notes that "[i ]nequitable conduct occurring early in the prosecution of a chain of patent applications may render unenforceable all claims issuing from later-filed applications." The record in this case, however, establishes two separate and independent prosecution chains: one that derived from the original /587 application, and one that derived from the revived /587 application. Although inequitable conduct in the revival of the /587 application might well taint the chain of applications that arose out of the revived /587 application,3 it cannot be said that such inequitable conduct could have tainted the '668 application from which all of the relevant subsequent applications, including those that matured into the patents-in- suit, derived.

Simply put, the /668 application, from which the patents-in- suit ultimately derive, predates the alleged inequitable conduct.

Accordingly, the inequitable conduct could not have tainted the chain of applications that ultimately gave rise to the patents- in-suit.

Conclusion For the reasons given, the motion for summary judgment (document no. 441) is granted.

SO ORDERED.

Steven J./McAuliffe Chief Judge August 14, 2 00 7 cc: Daniel E. Will, Esq.

Hugh T. Lee, Esq.

Richard S. Gresalfi, Esq.

Georg C. Reitboeck, Esq.

Mark A. Hannemann, Esq.

Michael J. Lennon, Esq.

T. Gy Walker, Esq.

Jonathan M. Shirley, Esq.

Alfred H. Hemingway, Jr., Esq.

Irvin D. Gordon, Esq.

Martin B. Pavane, Esq.

Michael J. Songer, Esq.

Shari R. Lahlou, Esq.

Sidney R. Bresnick, Esq.

Teodor J. Holmberg, Esq.

Richard D. Margiano, Esq.

Russell Beck, Esq.

John F. Sweeney, Esq.

Tony V. Pezzano, Esq.

Bruce W. Felmly, Esq.

Seth J. Atlas, Esq.

Steven F. Meyer, Esq.

Anthony S. Augeri, Esq.