Corning Incorporated v. Wilson Wolf Manufacturing Corporation

Background

Corning sought declarations concerning three patents owned, according to the allegations, by Wilson Wolf Manufacturing Corporation: U.S. Patent Nos. 9,441,192, 8,697,443, and 9,732,317. Corning asked the court to declare that its HYPERStack cell-culture vessel did not infringe the patents and that the patents were invalid or unenforceable. The amended complaint also asserted claims based on claim preclusion and the Kessler doctrine.

The defendants moved under Federal Rule of Civil Procedure 12(b)(6), which tests whether a complaint states a legally sufficient claim. The court generally had to accept well-pleaded factual allegations as true and draw reasonable inferences for Corning, but it did not have to accept conclusory allegations. Corning’s inequitable-conduct claims—claims alleging that information was deliberately withheld from the patent examiner—also had to meet the heightened particularity requirement for fraud claims under Rule 9(b).

Inequitable Conduct Based on Adverse Data

Corning alleged that the defendants withheld data showing that increased medium height and certain gas-permeable arrangements did not provide advantages, or could negatively affect the culturing of some cell types. Corning alleged that the defendants had received related information in meetings and telephone calls and knew that it was material to the prosecution of the ’192 and ’443 Patents.

The court held that the amended allegations still did not explain sufficiently why the allegedly withheld data would have made the patent claims unpatentable if disclosed. The court also found that Corning had not adequately alleged that the defendants controlled, requested, evaluated, or knew the materiality of Corning’s testing and data, or deliberately withheld it from the patent office. The court therefore granted the motion to dismiss this inequitable-conduct claim and dismissed it with prejudice because Corning had already amended the allegations once before.

Inequitable Conduct Based on the Interference

Corning separately alleged that the defendants failed to disclose to the examiner information from a proceeding before the Patent Trial and Appeal Board involving the related ’044 Patent. The proceeding resulted in the challenged claims of that patent being invalidated as anticipated by prior art. Corning alleged that the materials contradicted positions the defendants took while prosecuting the ’317 Patent and that claims 1 through 9 of that patent would not have issued if the information had been disclosed.

The court again found the allegations insufficient. It concluded that Corning had not adequately alleged which claims would not have issued if the information had been submitted, particularly because Corning had not alleged that the examiner was unaware of the proceeding or that the information was not cumulative of references already before the examiner. The court granted the motion to dismiss this claim with prejudice. This ruling, like the adverse-data ruling, addressed the sufficiency of the pleading rather than deciding whether the patents were ultimately enforceable.

Claim Preclusion and the Kessler Doctrine

Corning reasserted claims seeking declarations that the defendants’ infringement suits against users of the HYPERStack vessel were barred by claim preclusion and the Kessler doctrine. Claim preclusion generally prevents a party from bringing another action based on the same claim after a final judgment on the merits. The Kessler doctrine can prevent a patent owner from repeatedly suing a customer of a seller that previously prevailed against the patent owner because of invalidity or noninfringement.

The court explained that, when different patents are involved, these doctrines can apply only if the asserted patent claims are essentially the same, or “patentably indistinct.” In the earlier round of this case, the court had dismissed Corning’s claims without prejudice because the original complaint lacked factual support showing that the patents were patentably indistinct.

The court found that the amended complaint corrected that deficiency. Corning supplied expanded allegations and claim charts asserting, limitation by limitation, that the claims of the ’192, ’443, and ’317 Patents were patentably indistinct from claims of patents involved in the earlier litigation. The court held that these allegations plausibly supported the requested declarations and denied the motion to dismiss Counts Eleven and Twelve. It did not decide at this stage whether the doctrines ultimately bar infringement claims.

Disposition

The court ordered that the defendants’ motion to dismiss was granted in part and denied in part. It granted the motion regarding Corning’s inequitable-conduct claims, and Counts Two, Five, and Eight were dismissed with prejudice. It denied the motion regarding Corning’s claims for declarations based on claim preclusion and the Kessler doctrine.