Kawasaki Jukogyo Kabushiki Kaisha v. Rorze Corporation

Background

This patent case concerns robots that transport silicon wafers inside semiconductor-processing equipment. Kawasaki asserted several reissue patents related to the robots’ arm length and the space reserved around a component that opens wafer-transport pods. Rorze filed counterclaims and affirmative defenses challenging Kawasaki’s patents.

The order addresses Kawasaki’s motion to dismiss portions of Rorze’s counterclaims, its motion to strike related affirmative defenses, and its request for judicial notice of documents from Patent and Trademark Office files. The court accepted the countercomplaint’s factual allegations as true when evaluating the motion to dismiss.

Judicial Notice

The court granted Kawasaki’s unopposed request for judicial notice. It took notice of the existence and contents of the public patent-file documents, but drew no additional inferences or characterizations from them.

Counterclaims

Rorze asserted six counterclaims: inequitable conduct, violation of the federal Sherman Act, violation of California’s Unfair Competition Law, patent-prosecution laches, noninfringement, and invalidity. The antitrust and unfair-competition claims were based on the inequitable-conduct allegations. The other claims sought declaratory judgments.

Inequitable Conduct

Inequitable conduct is an equitable defense to patent infringement based on an applicant’s material misrepresentation, failure to disclose material information, or submission of false material information, together with an intent to deceive the Patent and Trademark Office. Under Federal Rule of Civil Procedure 9(b), the claim must identify the specific who, what, when, where, and how of the alleged misconduct.

Rorze alleged that Yasuhiko Hashimoto and Kenji Noguchi misrepresented the novelty of the claimed “robot invasion restricted region” during prosecution of the patent application that became the ’782 patent. The court held that the statements Rorze identified were attorney argument about three patents the examiner had already considered, not affirmative misrepresentations of material fact. Applicants may advocate their interpretation of patent claims and prior art.

Rorze also alleged that Kawasaki’s applicants failed to disclose the SEMI E63 industry standard and other prior-art references. The court concluded that Rorze had not adequately alleged how those materials differed from prior art the examiner had considered or why they would have been material. The court also noted that the patent specification referred to the SEMI E63 standard, undermining an allegation that the applicants intended to conceal its materiality.

Rorze alternatively alleged false inventorship, arguing that Kawasaki customers suggested the robot-exclusion concept to Hashimoto. The court held that Rorze had not clearly alleged a prior conception containing all limitations of the claimed invention or how that complete conception was communicated to Hashimoto. The inequitable-conduct counterclaim was therefore dismissed under both theories.

Antitrust and Unfair Competition

Rorze acknowledged that its Sherman Act claim, based on the theory recognized in Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., and its California Unfair Competition Law claim depended entirely on the inequitable-conduct claim. Because the inequitable-conduct counterclaim was dismissed, the court dismissed both derivative claims.

Patent-Prosecution Laches

Patent-prosecution laches is an equitable defense that may make a patent unenforceable when it issued only after an unreasonable and unexplained prosecution delay amounting to an egregious misuse of the patent system. Rorze alleged that Kawasaki’s serial reissue applications showed intentional and unreasonable delay designed to pursue claims covering Rorze’s products.

The court dismissed this counterclaim because Rorze had not plausibly alleged unreasonable delay or egregious misuse. The court stated that Rorze’s allegations focused primarily on the substance of the reissue applications rather than on delay in prosecuting them.

Invalidity

Rorze sought a declaratory judgment that Kawasaki’s patents were invalid under several patent statutes, including provisions concerning inventorship and reissue patents. Kawasaki sought dismissal to the extent the invalidity claim relied on false inventorship or improper reissue.

The court dismissed the false-inventorship portion for the same reasons it dismissed the corresponding inequitable-conduct theory. It also dismissed the improper-reissue portion. Rorze’s specific improper-reissue allegations appeared mainly in its affirmative defenses, while the counterclaim itself cited 35 U.S.C. § 251. The court further explained that Rorze’s arguments relied substantially on a possible change in the meaning of patent terms, but the court had since construed “robot invasion restricted region” and other shared terms to have the same meaning across the asserted reissue patents.

Motion to Strike Affirmative Defenses

Kawasaki asked the court to strike affirmative defenses corresponding to Rorze’s dismissed counterclaims. The court held that affirmative defenses are subject to a less demanding pleading standard than counterclaims: the defense must give the plaintiff fair notice, rather than satisfy the heightened plausibility standard used for claims for relief.

Although Rorze’s allegations were insufficient to state plausible declaratory-judgment claims under the counterclaim standard, the court concluded that Rorze had not pleaded itself out of the ability to raise inequitable-conduct and prosecution-laches defenses later. The court therefore denied Kawasaki’s motion to strike those defenses and also declined to strike other defenses based only on Kawasaki’s argument that they were conclusory.

Disposition

The court granted Kawasaki’s request for judicial notice and motion to dismiss. It dismissed the inequitable-conduct and prosecution-laches declaratory-judgment counterclaims, the related Sherman Act and California Unfair Competition Law counterclaims, and the invalidity counterclaim to the extent based on false inventorship or improper reissue. The court denied Kawasaki’s motion to strike the affirmative defenses.

The dismissal of Rorze’s counterclaims was without leave to amend. The court stated, however, that Rorze could seek a stipulation or file a motion for leave to amend if it could plead additional facts or replead the improper-reissue claim in light of the court’s construction of the patent terms.