Corning Incorporated v. Wilson Wolf Manufacturing Corporation

Background

Corning sought declaratory judgments that Wilson Wolf’s U.S. Patent Nos. 9,441,192, 8,697,443, and 9,732,317 were not infringed, invalid, and unenforceable. Wilson Wolf and John R. Wilson moved to dismiss the complaint and to stay their deadline to answer it.

The dispute followed earlier litigation in which Wilson Wolf and Wilson had alleged that Corning’s HYPERStack product infringed different patents. The court had dismissed those infringement claims with prejudice. Wilson Wolf later sued several HYPERStack users, and Corning alleged that those suits were improper because of the earlier litigation, patent invalidity issues, patent-law safe-harbor protections, and alleged misconduct during prosecution of the patents.

Corning asserted four theories of inequitable conduct: alleged misrepresentation of experimental data; failure to disclose adverse data; submission of a biased expert declaration; and failure to disclose an interference proceeding involving a related patent. Corning also asserted claims for declarations based on claim preclusion and the Kessler doctrine, a tortious-interference claim, and claims against Wilson individually.

Legal standard

The court applied Federal Rule of Civil Procedure 12(b)(6), which tests whether a complaint alleges enough facts to state a plausible claim for relief. For inequitable-conduct claims, the court applied the heightened pleading requirements of Rule 9(b), requiring particular facts identifying who made or withheld the information, what the information was, when and where the conduct occurred, and how it was material to the patent examination. The complaint also had to support a reasonable inference that the relevant individual knew about the information and intended to deceive the Patent Office.

Inequitable-conduct claims

The court granted, without prejudice, the motion to dismiss the claims based on alleged misrepresentation of data. Corning alleged that patent examples did not support the scope of the claims and did not show unexpected results, but the court found that Corning had not alleged facts supporting an inference that Defendants knew the results were not surprising or unexpected. The allegations of intent to deceive were conclusory.

The court also granted, without prejudice, the motion to dismiss the claims based on failure to disclose adverse data. Corning’s references to unspecified “other data” and information provided in 2004 did not identify the alleged omission with the required detail. The documents Corning submitted with its opposition did not supply enough information about who received the data, what was provided, or when and where the alleged meetings occurred.

The court denied the motion to dismiss the claims based on the Vera Declaration. Corning plausibly alleged that Dr. Juan Vera’s declaration was used to support patentability, that Vera was Wilson Wolf’s paid consultant and Wilson’s collaborator, and that Defendants did not disclose that relationship to the Patent Office. The court also found sufficient allegations that the examiner relied on the declaration in related patent prosecutions, that Corning identified relevant claims and claim limitations, and that the alleged misconduct could affect the enforceability of related patents. At the pleading stage, the court found a reasonable inference of intent to deceive.

The court granted, without prejudice, the motion to dismiss the claim based on failure to disclose the Corning-Wilson interference and related documents. Corning identified several documents but did not explain where within them the material information appeared or identify the relevant claim limitations in the ’317 Patent. The court held that the patents’ relationship, the terminal disclaimer, and the absence of an objection to a double-patenting rejection did not by themselves support the claim.

Claim preclusion and the Kessler doctrine

The court granted the motion to dismiss Counts Eleven and Twelve, which sought declarations based on claim preclusion and the Kessler doctrine, and dismissed those counts without prejudice. Claim preclusion can prevent a later case involving the same parties and claims after a final judgment. The Kessler doctrine can protect a prevailing patent defendant and its customers from repeated infringement suits in appropriate circumstances.

The court held that sharing a specification, deriving from the same provisional application, or being related to previously litigated patents was not enough to show that the patents were legally the same or “patentably indistinct.” Corning’s allegations about Defendants’ apparent claim construction were also conclusory and lacked factual support.

Tortious interference

The court denied the motion to dismiss Corning’s tortious-interference claim. Such a claim involving patent enforcement requires allegations that the infringement claims were objectively baseless and brought with subjective bad faith. The court found that Corning had plausibly alleged tortious interference, including through its surviving inequitable-conduct theory and its allegations concerning the customer suits.

Claims against John R. Wilson

The court denied the motion to dismiss all claims against Wilson. Corning alleged that Wilson was individually responsible for portions of the alleged conduct before the Patent Office. The court concluded that, at this stage, Wilson could properly remain a defendant in the surviving inequitable-conduct and tortious-interference claims.

Answer deadline and disposition

The court granted Defendants’ motion to stay their deadline to answer while the motion to dismiss was pending, explaining that a single answer was more efficient than partial answers. After the ruling, Defendants had 14 days after the Order to answer the complaint.

Judge Donovan W. Frank ordered that Defendants’ motion to dismiss was granted in part and denied in part: dismissal was granted for the three specified inequitable-conduct theories and the claim-preclusion and Kessler-doctrine claims; dismissal was denied for the Vera Declaration claim, tortious interference, and all claims against Wilson. The motion to stay the answer deadline was granted.