Corning Incorporated v. Wilson Wolf Manufacturing Corporation

Background

Corning filed an amended complaint seeking declarations concerning three patents: United States Patent Nos. 9,441,192, 8,697,443, and 9,732,317. Corning sought declarations of non-infringement, invalidity, and unenforceability. The defendants moved under Federal Rule of Civil Procedure 12(b)(6), which tests whether a complaint states a legally sufficient claim.

The case followed earlier litigation in which Wilson Wolf and John R. Wilson sued Corning over alleged infringement of different patents involving Corning’s HYPERStack cell-culture product. The court dismissed those infringement claims with prejudice. Corning later brought this action after the defendants sued several HYPERStack users, alleging that the defendants’ patents were not infringed, were invalid or unenforceable, and could not properly be asserted against those users.

The motion addressed two groups of claims: Corning’s inequitable-conduct claims and its claims seeking declarations based on claim preclusion and the Kessler doctrine. Inequitable conduct is alleged deceptive or misleading conduct during patent prosecution. Claim preclusion can prevent a party from bringing the same claim after a final judgment. The Kessler doctrine can, in some circumstances, prevent a patent owner from repeatedly pursuing infringement claims against a customer of a seller that previously prevailed against the patent owner.

Inequitable Conduct Based on Adverse Data

Corning alleged that the defendants withheld adverse testing data while prosecuting the ’192 and ’443 Patents. According to Corning, the data undermined arguments that increased medium height and related gas-permeable arrangements benefited cell culture. Corning alleged that individuals at Corning provided relevant information to John R. Wilson in meetings and telephone calls in 2004 and 2005, and that the defendants knew the information was material but did not disclose it to the patent examiner.

The court applied the heightened pleading standard for fraud under Rule 9(b), which requires a complaint to identify the specific circumstances of the alleged misconduct, including who acted, what was withheld, when and where the conduct occurred, and how it was misleading or material. The court concluded that Corning still had not adequately alleged why the withheld data would have made the patent claims unpatentable, or facts showing that the defendants knew the data was material and deliberately withheld it. The court also noted that Corning did not allege that the defendants controlled, requested, or evaluated the accuracy of Corning’s testing or data.

The court granted the motion to dismiss this portion of the inequitable-conduct claims and dismissed the claims with prejudice because Corning had already amended its allegations once before. Counts Two and Five were dismissed with prejudice only insofar as they asserted inequitable conduct based on withholding adverse data.

Inequitable Conduct Based on the Earlier Patent Proceeding

Corning separately alleged that the defendants failed to disclose to the examiner information from an earlier proceeding involving the related ’044 Patent. The Patent Trial and Appeal Board had invalidated all challenged claims of the ’044 Patent, and that decision was affirmed by the Federal Circuit. Corning alleged that materials from that proceeding contradicted the defendants’ positions during prosecution of the ’317 Patent and that the defendants withheld those materials with an intent to deceive.

The court concluded that the amended complaint still did not adequately identify what claims would not have issued if the information had been submitted to the examiner. The court also found that Corning had not sufficiently alleged that the examiner was unaware of the earlier proceeding or that the allegedly withheld information was not cumulative of information already before the examiner.

The court granted the motion to dismiss the inequitable-conduct claim concerning the ’317 Patent and dismissed Count Eight with prejudice.

Claim Preclusion and the Kessler Doctrine

Corning also reasserted claims seeking declarations that claim preclusion and the Kessler doctrine barred the defendants from asserting the patents in this case against Corning or the HYPERStack users. Corning alleged that the patents in this case were related to the patents involved in the earlier litigation, shared specifications or subject matter, and were “patentably indistinct” from the earlier patents. Corning supported those allegations with claim charts and allegations addressing individual claim limitations.

The court explained that, when different patents are involved, claim preclusion applies only if the asserted patent claims are essentially the same, including because they are patentably indistinct. The court determined that Corning’s amended allegations plausibly showed how the claims of the ’192, ’443, and ’317 Patents were patentably indistinct from the earlier patents. The court therefore denied the motion to dismiss Counts Eleven and Twelve. The court did not decide at this stage whether the patents were actually indistinct or whether preclusion ultimately applied; it held only that these claims could proceed past the motion-to-dismiss stage.

Disposition

The amended order states that the defendants’ motion to dismiss was granted in part and denied in part. The court granted the motion regarding Corning’s inequitable-conduct claims. It denied the motion regarding Corning’s claims for declarations based on claim preclusion and the Kessler doctrine. Count Eight was dismissed with prejudice, and Counts Two and Five were dismissed with prejudice only insofar as they alleged inequitable conduct based on withholding adverse data. The amended order vacated and replaced an earlier order only as to the language in Paragraph 3. Donovan W. Frank signed the order.