Free Redacted Document - District Court of Delaware - Delaware

Case 1:04-cv-00360-JJF Document 236-6 Filed O9/13/2006 Paget of 3
Wsnlarat
Not Reported in F.Supp.2d PHQB I
Not Reported in F.Supp.2d, 2005 WL 914776 (D.Dei.)
(Cite as: Not Reported in F.Sr1pp.2d)
sr . . ._ . .
isrisiis and Oiiisi Rsisisd Dsssiiisiiis Federai Rule of Civil Procedure 8 requires a party to
Oniy the Westlaw citation is currently available. Sel follll 3ffil`m¤ill’€ d€f€¤$'¥’$ in 3 YGSPOIWVC
United Swiss Disiiici COsi~t$D_ Dsiswsis pleading with a “SllO1'$ and piain statement." Federal
MCKESSON ¥NFORMATION SOLUTIONS: LLC, Rule of Civil Pt‘OCeClu1’€ l.2§ i, in tum, S’tEtl€SI
pisiiisiii; Upon motion by a party before responding to a
v_ pleading or, if no responsive pieading is permitted `oy
ras rnrznrro crrorna, inc., Defendant. their mini. ¤r>¤¤ r¤<>ll¤¤ made by B rnrly Within 20
t Ns giv_i}4,i25g_S;JR_ days after the service of the pleading upon the party
or upon tire courts own initiative at any time, the
Apiiiggizgggi court may order stricken from any pleading any
insufficient defense or any redundant, irrnnaterial,
irnpertinent, or scandalous matter.
Thomas J. Allingham. il, Wilmington, DE, for
_ pisimifp Motions to strike affirmative defenses, however, are
, rtetreet oerrery smrtrt, rr, wrrmmgttm, on, ret tliifarvrrd- See
l Defendant. Brands, Inc., 697 F.Supp. 1360, i362 gD.Del.l988).
When nriing on such a motion, "the court must
MEMORANDUM GREEK construe all facts in favor of the norrrnoving party
ROBENSON`, 3. and deny the motion if the defense is sufficient under
the law." Id. Furthermore, courts prefer not to grant a
i_ INTRODUCTION motion to strike "unless it appears to a certainty that
[the movant] would succeed despite any state of
l rr On September rs, 2004, premtrtr area titre action the fans which Cvutd be nrnred in Surirmrt ¤f an
l alleging infringement of its United States Patent Nc. d€f€llS€·” S ll»`€·" V- E*’*l’·lCOl"¥ allies CW - 744 F-2d
5,252,164 retire ner p,etettt··; by aerettaettt.
Defendant answered the compiaint, denied’ any
infringement and asserted that the 'E64 patent was Fm
invalid and unenforceable. (D.l.l0) IV- DISCUSSION "
Pending before the court are plaintiffs motions to
strike defendant's affirmative defenses, dismiss Bgcallsg lilalllllffs m<>li<>¤ te dlsmisst
defendants couuterclaims or, inthe alternative, for a OY in tire i’·}t°l`¤alll’€ for 3 mom dcflllilc
2 more definitive statement of such defenses and Smmlmmt dl-lpimds SOMY OH its meiivn in
emmtetentme. (nits) This court me jurisdiction Strilw, the r¤¤ti<>¤ is disraissecl Wlliwvt
over this suit pursuant to 28 U.S.C. § 1338. ijmludliic to www-
Defendanfs answer to the complaint asserts eight
ii BACK(_;RO·gNji) affirmative defenses and counter-claims for
I declaratory judgment of noninfringenrent,
rnemtirt is tt oeretmte limited rteurrty eemetetme wranfvrccability arid invalidity- {ll)-l-lll) Plaintiff iris
with its pyissipsi piss,-, gf business in Aipissesiis, moved to strike defendants second, sixth and seventh
Georgia. (eric) Defendant is e oerewete afflnnatirc d<=f¢¤S¤S· {kl arti ll, 15, E6-lS>
corporation with its principal place of business in
Newport Beach, California. (D.I.l0) The parties
create and distribute software for reviewing the A· Seclmd And Sixth Affil'm&$lV€ D€f€ll$*"*$“
accuracy of healthcare clairns andfor charges. (Id. at il Inwllldity & Misuse
25-26
E ) Defendants second affirrnative defense argues that
tire 'I64 patent is invalid "for failure to comply with
HL STANDARD Op REVIEW one or more of the conditions for patentability set
© 2006 'I`homsonfWest. No Claim to Orig. U.S. Govt. Works.

Case 1:04-cv-00360-JJF Document 236-6 Filed O9/13/2006 Page 2 of 3
Not Reported in F.Supp.2d Pagfi 2
Not Reported in F.Supp.2d, 2005 WL 914776 (D.Del.)
(Cite as: Not Reported in F.Supp.2d)
forth in Title 35 ofthe United States Code, including failure of the inventors, andfor their agents, to
but not limited to 35 U.S.C. § § 102, LQ; and gQ_." disclose to the Patent Office, during prosecution of N
gid. at j} lltPIaintit`f argues that this defense is too the patent-in—suit, information material to the
broad because it includes any and all of title 35, and patentability of the patent—in—suit, in violation of §_j_
it is repetitive of defendants third, fourth and filth C.F.R.§ 1.56.
affnmative defenses, which asserts specific violations To the extent now known, and subject to further
ot`§_§_l0_2_, LQQ and ll;. {Ig';) arnpliflcation as to the full extent of the withholding
and misrepresentation of information, the inventors
*2 Defendants sixth affirmative defense asserts that and/or their agents made a number of
"[t]l1e *164 patent is unenforceable because [plaintiff} misrepresentations or omissions of material fact to
comes into Court with unclean hands. Plaintiff has tlre Patent Office, including but not limited to, false
committed patent misuse by attempting to enforce a statements and omissions regarding prior art. In
patent it should reasonably know is invalid and not particular, and without limitation, the following
infringed." (D.I. 10 at 11 E5) Flaintiff asserts that this intentional and material false statements or omissions
defense does not meet pleading requirements because were made by the inventors andfor their agents,
it does not allege bad faith or antbcompetitive including:
effectmg a) the failure by applicants to disclose to the
Examiner one ofthe inventors own material prior art
l publications, including "An Access—oriented
l "I7;5gM. The basic allegation of patent misuse Negotiated Fee Schedule-The Caterpillar
is that the patentee has "exter1d[ed] the Experiencef and a presentation at the l07n‘
economic benefit beyond the scope of the Annual Meeting of The American Surgical
patent grant? CR. Bard, Inc. v. M3 Qs., Association ...;
Inc., 157 F.3d 1340, l372 {Fed.Cir.1998}. b) the failure to disclose to the Examiner the fact that
Patent misuse "requires that the alleged the claimed software to review claims was obvious
énfringer show that the patentee has and disclosed in commonly available books on expert
{ irnpermissibly broadened the physical or systems as admitted by Marcia Radosevich, President
i temporal scope of the patent grant with of HPR, the assignee of the patcnt—in~suit, in a case
. antécornpetitive effect? Virginia Panel study at the Harvard Business School in 1989;
Cory. v. MAC Panel Co., l33 F.3d 860, 863- c) the failure to disclose to the l¥’atent Office that four
7E §Fed.Cir.§997). There is a two part test programming and code review consultants
for patent misuse that requires the party participated in the development of the claimed
alleging misuse to show a patentee's bad software as described by Marcia Radosevich to the
_ faith in alleging infringement and an Harvard Business School; and
anticompetitive effect or purpose behind the d) the failure to disclose to the Patent office that the
allegation. See ag., Glrrverbell Societe invention was conceived by some individuals who
Anonyme v. Nortirlake Mktg. & Suggly Inc., were employed by Boston University‘s Health Policy
45 F.3d 1550, 1558 {Fed.Cir.l995[; Institute, and that the work was funded by the U.S.
Advanced Crswfiovascular Sggstems, Inc. v. Government sponsored research.
Scimed Stgstems Imc., C-96-0950, 1996 Wl., The above false statements and omitted references
467277 at *4 g§.D.Cal.l996 3. and funding information would have been considered
Q by a reasonable examiner to be material to a
E In complex litigation, such as cases involving patent determination of aliowability of the patent claims,
infringement, it is through the discovery process that and on information and belief, said statements and
the parties refine and focus their claims. At this stage omissions were made with intent to deceive the
in the litigation, the court declines to strike Patent Office. Had the inventors and/or their agents
defendants affirmative defenses until adequate made accurate representations to the Patent Office,
discovery has been completed. the ‘i6·4 patent would not have issued. Hence, the
patent-in—suit is unenforceable for inequitable
conduct.
B. Seventh Affirmative Defense—InequitabEe Conduct s
*3 (D1. 10 atilil 1648)
Defendants seventh affrrmative defense states:
The patent-in-suit is invalid and unenforceable Fraud is a clear exception to the otherwise broad
because it was obtained through the intentional notice—pleading standards under Fed.R.Civ.P. 9. A
© 2006 ThomsonfW est. No Claim to Orig. U.S. Govt. Works.

Case 1:04-cv-00360-JJF Document 236-6 Filed O9/13/2006 Page 3 of 3
Not Reported in F.Supp.2d Page 3
Not Reported in F,Supp.2d, 2005 WL 914776 (D.Del.)
(Cite as: Not Reported in F.Supp.2d)
claim of patent unenforceability is premised upon Selected Portions of the Deposition Conducted 'oy
incquitable conduct before the Pate:1t& Trademark '1`rizetto (Apr. 17, 2006) Original Imze of this
Office (“PTO"), which is a claim sounding in fraud. Document (PDF)
A plaintiff allcging tmenfcrceabllity, therefore, must · 2006 WL l435860 (Trial Motion, Memorandum
plead with particularity those facts which support tb and Afiidavit) Trizett;o's Response to Mokessorfs
. ciaim the patent holder acted fraudulently before the Motion for Fartial Reconsideration or Partial Stay
PTO. See eg., Fergyson Beczuregard/Logic Controls (D.I. 330) (Apr. 16, 2006) Original Image of this
y. Mega Sys., LLC, 350 E36 1327, 1343-44 Document (PDF)
gFed.Ci1*.2003;. · 2006 WL 1435859 (Trial Motion, Memorandum
and Affidavit) Mckessorfs Response to Trizetto’s
This court has previously found that pleadings that Motions to Strike the Supplemental Reports of
"disc1cse the name of the relevant prior att and Mckesson Expert Witnesses Dr. Margaret Johnson
disclose the acts of the aiiegcd fraud fulfiii the and Dr. Mark Museo (Apr. 13, 2006) Original Image
requirements of Rule 9§b;." See, ag., EMC Corg__; of this Document (PDF)
Storage Tech. Co.=·g.g., 92} F.Sr1p_o. 126i, 1263 · 2006 WL 1388578 (Trial Motion, Memorandum
, gD.Dei.§.9963. In this case, defendant has satisfied the and Affidavit) The Trizctto Group, Inc.'s Motion to
` pieading requirements of Rule 9§b), as it states, with Strike the Supplementai Expert Report of
_ reasonable particularity, the prior art references and McKesson‘s Second Infringement Expert, Margaret
g instances of iiaud to which it is referring. Piaintiff is L. Johnson, Pl1.D. (Apr. 12, 2006) Original Image of
on notice of the misconduct alieged. this Document (PDF)
- 2006 WL M35858 (Trial Motion, Memorandum
l and Affidavit) Mckessozfs Memorandum in Response
IV. CONCLUSION to '1“rizetto's Motion to Strike the Portion of Marcia J.
Radosevicirs April 10, 2006 Deposition Conducted
Thcrct`o1·e, at Wilmington this 20th day of April, by Mckesscn, and for Sanctions (Apr. 12, 2006)
2005; Original Image of this Document (PDF)
· 2006 WL 1388577 (Trial Motion, Memorandum
. IT ES ORDEED that: and Affidavit) Trize1to‘s Motion to Strike the ?O1'TlO1’1
l of Marcia J. Radosevicirs April 10, 2006 Deposition
r 1. Plaintiffs motion ro strike certain of defendar1t's Conducted by Mckesson, and for Sanctions (Apr. ll,
aftirmative defenses (D.I.13) is denied without 2006) Original Image of this Document (PDF}
prejudice. · 2006 WL 1435857 {Trial Motion, Memorandum
and Affidavit) The Trizetto Group, Inc.'s Motion to
2. Plaintiffs motion to dismiss, or for a more Strike the Supplemental Expert Report of Mark A.
definitive statement (1).1.13), is denied without Museo (Apr. 4, 2006) Original Image of this
prejudice. Document (PDF)
· 2006 WL 809E29 (Trial Motion, Memorandum and
D.Del.,2005. Affidavit) Mckessoifs Response to '1`rizetto's
IVECKQSSOEI Information Solutions, LLC v. 3`rizctto Objections to Mrxkessorfs Means-P1us—Function
Group, Inc. Claim Construction Chart (Fab. 28, 2006) Original
Not Reported in F.Supp.2d, 2005 WL 914776 Image ofthis Document (PDF)
(D.Del.) · 2005 WL 3666827 (Triai Motion, Memorandum
, and Affidavit) The Trizetto Group, Inc.'s Motion to
l Briefs and Other Related Documents Enforce Complaincc with the Cotrrrs September 20,
2005 Order Re: Ciaim Construction (Oct. E2, 2005)
· 2006 WL 1435862 (Trial Motion, Memorandum Original Image of this Document (PDF)
; and Affidavit) The Triztto Group, Inc.'s Motion for • 1:O4cv0i258 (Docket) (Sep. 13, 2004)
Judgment of Noninfringemerit as A Matter of Law
(Apr. 24, 2006) Original Image-: of this Document END OF DOCUMENT
(PDF)
· 2006 WL M35861 (Trial Motion, Memorandum
and Affidavit) MCKBSSOHIS Memorandum in Support
of its Motion for Reconsideration of the Court‘s April
13, 2006 Order Regarding the Deposition of Marcia
J. Radosevich or, in the Alternative, to Strike
© 2006 Thomson/Wcst. No Ckaim to Orig. U.S. Govt. Works.

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