United States District Court, S.D. Ohio, Eastern Division
Vascura, Magistrate Judge
OPINION & ORDER
ALGENON L. MARBLEY, UNITED STATES DISTRICT JUDGE
matter is before the Court on Plaintiff Kit Check, Inc.'s
(“KCI”) Motion to Strike Insufficient Defenses
from the Answer of Defendant Health Care Logistics
(“HCL”). (ECF No. 11). For the reasons that
follow, the Court GRANTS KCI's Motion to
Strike HCL's Affirmative Defenses. (ECF No. 11). In
particular, the Court STRIKES WITHOUT
PREJUDICE HCL's affirmative defenses four,
eight, twelve, sixteen, twenty, twenty-four, and
the holder of seven patents relevant to this civil action,
including U.S. Patent No. 8, 990, 099 (the “‘099
patent”); 9, 037, 479 (the “'479
patent”); 9, 058, 412 (the “‘412
patent”); 9, 058, 413 (the “‘413
patent”); 9, 367, 665 (the “‘665
patent”); 9, 734, 294 (the “‘294
patent”); and 9, 805, 169 (the “‘169
patent”). (ECF No. 1). KCI claims, among other things,
that HCL has infringed the aforementioned patents. (ECF No. 1
at 2). KCI filed its Complaint on December 1, 2017 requesting
“(i) declaratory relief confirming that KCI is the
owner of the trade secrets and intellectual property
concerning the KCI Product; (ii) injunctive relief ordering
HCL to cease its intentional, wrongful, and unfair use of
KCI's trade secrets, and its infringement of KCI's
patents, in order to compete with KCI's business; and
(iii) monetary relief compensating KCI for the economic harm
caused by HCL's unlawful actions.” (ECF No. 1).
answered KCI's complaint on January 2, 2018. (ECF No. 6).
On January 19, 2018, KCI moved to strike seven of HCL's
affirmative defenses. (ECF No. 11). On February 9, 2018, HCL
filed its First-Amended Answer, Affirmative Defenses, and
Counterclaims to Plaintiff's Complaint
(“First-Amended Answer”) (ECF No. 18), as well as
a memorandum in opposition to KCI's motion to strike.
(ECF No. 19). The affirmative defenses that KCI seeks to
strike were set out identically in both HCL's initial
pleading and in its First-Amended Answer. KCI filed a reply
to HCL's memorandum in opposition on February 21, 2018.
(ECF No. 21). KCI's motion to strike, (ECF No. 11), is
ripe for review.
STANDARD OF REVIEW
Motion to Strike
Court, upon motion or on its own, “may strike from a
pleading an insufficient defense or any redundant,
immaterial, impertinent, or scandalous matter.”
Fed.R.Civ.P. 12(f). Motions to strike are entrusted to the
“sound discretion of the trial court, but are generally
disfavored.” Yates-Mattingly v. University of
Cincinnati, No. 1:11-cv-753, 2013 WL 526427, at *1 (S.D.
Ohio Feb. 11, 2013). Indeed, “[s]triking pleadings is
considered a drastic remedy to be used sparingly and only
when the purposes of justice so require.” Id.
(citing Brown & Williamson Tobacco Corp. v. United
States, 201 F.2d 819, 822 (6th Cir. 1953)). The Court
should not grant a motion to strike if “the
insufficiency of the defense is not clearly apparent, or if
it raises factual issues that should be determined on a
hearing on the merits.” Joe Hand Promotions, Inc.
v. Havens, 2:13-cv-0093, 2013 WL 3876176, at *1 (S.D.
Ohio July 26, 2013) (internal quotation omitted). On the
other hand, “motions to strike ‘serve a useful
purpose by eliminating insufficient defenses and saving the
time and expense which would otherwise be spent in litigating
issues which would not affect the outcome of the
case.'” Id. (internal quotations omitted).
conduct is an equitable defense to patent infringement that,
if proved, bars enforcement of a patent.”
Therasense, Inc. v. Becton, Dickinson and Co., 649
F.3d 1276, 1285 (Fed. Cir. 2011). The doctrine of inequitable
conduct evolved to embrace misconduct such as egregious
affirmative acts of misconduct intended to deceive both the
U.S. Patent and Trademark Office (“PTO”) and the
courts, as well as nondisclosure of information to the PTO.
Id. at 1287. The Federal Circuit set out heightened
requirements for pleading inequitable conduct in patent cases
in Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d
1312 (Fed. Cir. 2009). “‘[I]nequitable conduct,
while a broader concept than fraud, must be pled with
particularity' under Rule 9(b).” Id. at
1326 (quoting Ferguson Beauregard/Logic Controls, Div. of
Dover Resources, Inc. v. Mega Sys., LLC, 350 F.3d 1327,
1344 (Fed. Cir. 2003)). “Whether inequitable conduct
has been pleaded with particularity under Rule (9)(b) is a
question governed by Federal Circuit law.” Exergen
Corp., 575 F.3d at 1318 (citing Cent. Admixture
Pharmacy Servs., Inc. v. Advanced Cardiac Solutions,
P.C., 483 F.3d 1347, 1357 (Fed. Cir. 2007)).
Rule of Civil Procedure 9(b) provides that “a party
must state with particularity the circumstances constituting
fraud or mistake. Malice, intent, knowledge, and other
conditions of a person's mind may be alleged
generally.” The Federal Circuit announced that
“to plead the ‘circumstances' of inequitable
conduct with ‘particularity' under Rule 9(b), the
pleading must identify the specific who, what, when, where,
and how of the material misrepresentation or omission
committed before the PTO.” Exergen Corp., 575
F.3d at 1328. Although conditions of mind may be alleged
generally under Rule 9(b), pleading inequitable conduct
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. at 1327. The Federal Circuit noted that the
substantive elements of inequitable conduct are (1) an
individual associated with the filing and prosecution of a
patent application made an affirmative misrepresentation of a
material fact, failed to disclose material information, or
submitted false material information; and (2) the individual
did so with a specific intent to deceive the PTO.
Id. at 1327 n.3. However, “simply aver[ring]
the substantive elements of inequitable conduct, without
setting forth the particularized factual bases for the
allegation, does not satisfy Rule 9(b).” Id.
at 1326-27 (Fed. Cir. 2009). The standard for pleading
inequitable conduct was summarized by the Federal Circuit as
follows: “a pleading of inequitable conduct under Rule
9(b) must include sufficient allegations of underlying facts
from which a court may reasonably infer that a specific
individual (1) knew of the withheld material information or
of the falsity of the material misrepresentation, and (2)
withheld or misrepresented this information with a specific
intent to deceive the PTO.” Id. at 1328-29
pleading standard set forth in Exergen
“applies to allegations of inequitable conduct in
affirmative defenses.” Proctor & Gamble Co. v.
Team Technologies, Inc., Not Reported in F.Supp. 2d, No.
1:12-cv-552, 2012 WL 6001753, at *3 (S.D. Ohio Nov. 30, 2012)
(citations omitted). Generally, “[c]ourts should not
permit an unsupported inequitable conduct defense to be
asserted or maintained.” Proctor & Gamble Co.
v. Team Technologies, Inc., No. 1:12-cv- 552, 2012 WL
6001753, at *3 (S.D. Ohio Nov. 30, 2012).