KNAUF INSULATION, LLC v. JOHNS MANVILLE CORPORATION
1:15-cv-00111
S.D. Ind.Jun 1, 2020Background
- Knauf (plaintiffs) sued Johns Manville for infringing multiple patents, including U.S. Patent No. 9,926,464 (the '464 Patent).
- Johns Manville filed counterclaims alleging (III) inequitable conduct rendering the '464 Patent unenforceable, (IV) false marking under 35 U.S.C. § 292, and (VI) bad-faith assertion of patent infringement under Indiana Code § 24-11-5-1.
- The parties had multiple rounds of amended pleadings; similar counterclaims had been dismissed previously for pleading defects and Johns Manville was given leave to amend.
- Knauf moved to dismiss the amended Counterclaims III (in part as to the '464 Patent), IV, and VI for failure to state claims and failure to plead with particularity under Rule 9(b).
- The court found the inequitable-conduct claim as to the '464 Patent deficient because allegedly material references were presented to the PTO (not "buried") and intent to deceive was not plausibly alleged; that claim was dismissed with prejudice.
- The court denied dismissal of the false-marking counterclaim, finding Johns Manville adequately alleged competitive injury at the pleading stage; the Indiana bad-faith counterclaim was dismissed with prejudice for being conclusory and legally deficient.
Issues
| Issue | Knauf's Argument | Johns Manville's Argument | Held |
|---|---|---|---|
| Inequitable conduct re: '464 Patent (Counterclaim III) | Pleading fails to show withheld/material references or intent; cited materials were on PTO disclosure list | Amended complaint identifies who/what/when/where/how and alleges intent to deceive Examiner | Dismissed with prejudice as to the '464 Patent — materials were on disclosure list and not shown to be "buried," intent not plausibly alleged |
| False marking (Counterclaim IV) | Allegations only show competition, not the required competitive injury | Amended allegations identify specific competitive injury facts and effects | Denied — false-marking allegations sufficiently plead competitive injury to survive motion to dismiss |
| Indiana bad-faith patent assertion (Counterclaim VI) | Lacks factual support; conclusory; prior dismissal reasons remain | Adds allegations tying conduct to bad faith, points to related inequitable-conduct theory | Dismissed with prejudice — allegations conclusory; state-law claim cannot be used as a proxy for inequitable conduct |
Key Cases Cited
- Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (establishes but‑for materiality and intent standards for inequitable conduct)
- Exergen Corp. v. Wal‑Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009) (requires identification of who, what, when, where, and how for inequitable conduct pleading)
- Delano Farms Co. v. Cal. Table Grape Comm’n, 655 F.3d 1337 (Fed. Cir. 2011) (failure‑to‑disclose inequitable conduct survives only with facts supporting actual knowledge and intent)
- Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357 (Fed. Cir. 2008) (elements required to prove inequitable conduct)
- Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) (pleading must state a plausible claim above speculative level)
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (conclusory legal assertions are insufficient to survive dismissal)
- Dow Chem. Co. v. Exxon Corp., 139 F.3d 1470 (Fed. Cir. 1998) (state‑law claims cannot serve as a remedy for inequitable conduct)
- Remijas v. Neiman Marcus Grp., LLC, 794 F.3d 688 (7th Cir. 2015) (dismissal under Rule 12(b)(6) operates as dismissal with prejudice)