National Products Inc. v. Gamber-Johnson LLC
3:20-cv-01108
W.D. Wis.Jun 16, 2022Background:
- NPI sued Gamber for infringing U.S. Patent No. 9,706,026 (the '026 patent), alleging Gamber’s powered cradles/docking stations practice claim 10.
- The '026 patent, filed Nov. 9, 2015, names Jeffrey D. Carnevali as sole inventor and NPI as assignee; claims include a magnetic connection system used in a protective cover and cradle.
- Gamber counterclaimed that the patent is unenforceable for inequitable conduct, alleging NPI knew of prior art — the Magtron magnetic system (part of GPS’s Ultra Pro 7) — shown to NPI representatives in Feb. 2014, before the priority date.
- Gamber alleges NPI misrepresented Carnevali as sole inventor and failed to disclose the material prior art to the USPTO, rendering claims (esp. 8, 9, 20) unpatentable.
- NPI moved to dismiss the inequitable-conduct counterclaim under Rules 12(b)(6) and 9(b), arguing pleading deficiencies (reliance on "information and belief," lack of "who/what/when/where/how," and failure to plead materiality and intent).
- The court denied the motion, holding Gamber’s allegations satisfy Rule 9(b) at the pleading stage and plausibly plead materiality and deceptive intent sufficient to survive dismissal.
Issues:
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether inequitable-conduct counterclaim meets Rule 9(b) particularity | NPI: pleading is conclusory and adopted from another suit; lacks specificity | Gamber: identifies prior art, meeting, actors, timing and how it anticipates claims | Denied — court finds heightened pleading requirements satisfied at this stage |
| Whether pleading on "information and belief" is permitted | NPI: reliance on GPS pleading is improper and too speculative | Gamber: facts about the meeting and Magtron lie uniquely within NPI’s knowledge; adoption on information-and-belief is allowed | Permitted — "information and belief" OK when facts lie within opposing party’s knowledge |
| Whether the "who, what, when, where, how" elements are alleged | NPI: missing communication link (how inventor knew) | Gamber: alleged meeting (who/what/when/where) and identified the product as "identical," allowing reasonable inference of communications | Adequate — detailed "how" not required at pleading stage; reasonable inference suffices |
| Whether prior art alleged is material (non-cumulative) and intent pleaded | NPI: Magtron is cumulative of a disclosed patent and not material; intent not shown | Gamber: Magtron is anticipatory/identical to claimed limitations and was withheld; facts support inference of deliberate withholding | Adequate — anticipatory reference is plausibly non-cumulative; facts permit an inference of deceptive intent for pleading purposes |
Key Cases Cited
- Adams v. City of Indianapolis, 742 F.3d 720 (7th Cir. 2014) (12(b)(6) dismissal standard)
- Semiconductor Energy Lab. Co. v. Samsung Elecs. Co., 749 F. Supp. 2d 892 (W.D. Wis. 2010) (pleading must raise reasonable expectation discovery will support allegations)
- Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009) (Rule 9(b) requires "who, what, when, where, how" for inequitable conduct)
- DiLeo v. Ernst & Young, 901 F.2d 624 (7th Cir. 1990) (fraud pleading particularity)
- Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357 (Fed. Cir. 2008) (elements of inequitable conduct: materiality and intent)
- Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (but-for materiality standard)
- Oakley, Inc. v. Sunglass Hut Int'l, 316 F.3d 1331 (Fed. Cir. 2003) (anticipation requires all claim limitations in single reference)
- Celeritas Techs. Inc. v. Rockwell Int'l Corp., 150 F.3d 1354 (Fed. Cir. 1998) (anticipation and claim limitation analysis)
- Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 139 S. Ct. 628 (2019) (withholding material information can constitute inequitable conduct)
- Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376 (Fed. Cir. 2001) (anticipation and novelty analysis)