Verco Decking Incorporated v. Consolidated Systems Incorporated
2:11-cv-02516
| D. Ariz. | Dec 23, 2013Background
- Verco filed a patent infringement complaint against CSI on December 20, 2011 asserting the ‘932 device patent and the ‘469 method patent.
- CSI answered with counterclaims and affirmative defenses; Verco moved to dismiss and strike those counterclaims and defenses.
- PTO granted ex parte reexamination of both patents on June 7, 2012; the court stayed proceedings pending reexamination and later lifted after reconsideration certificates issued in 2013.
- PTO initially rejected all claims in March 2013, then, after after-final reconsideration, issued certificates: the ‘932 device patent amended (claim 1) and the remaining claims unamended; the ‘469 method patent confirmed (claims 1–15).
- Verco filed an Amended Complaint incorporating PTO outcomes; CSI amended its Answer; the court denied Verco’s earlier motions as moot and now rule on Verco’s Rule 12 motion to dismiss counterclaims and strike defenses.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether CSI’s invalidity claims survive a 12(b)(6) challenge | CSI pleads invalidity based on prior art; Verco argues lack of new evidence and higher court standard undermines plausibility. | CSI’s invalidity allegations are plausible and properly pleaded. | Counts I and II not dismissed; valid as pleaded. |
| Whether CSI’s intervening rights claim (Count VI) survives | CSI seeks intervening rights due to amended/new claims after reexamination. | No amended/new claims exist; intervening rights unavailable. | Count VI dismissed; no new/amended claims and no plausible intervening rights. |
| Whether and how to strike CSI’s affirmative defenses and references to inequitable conduct | Some defenses are insufficient or redundant and inequitable conduct references should be struck. | Affirmative defenses are adequately pleaded; inequitable conduct references in factual sections are part of the claims and should not be struck; prayer for relief may be struck. | Affirmative defenses (Second, Fifth, Sixth, Seventh) not fully stricken; references to inequitable conduct in factual allegations not struck; prayer for relief based on inequitable conduct struck; CSI may amend for inequitable conduct defenses/counterclaims. |
Key Cases Cited
- Navarro v. Block, 250 F.3d 729 (9th Cir. 2001) (pleading standard for Rule 12(b)(6) to show plausible entitlement to relief)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (U.S. 2007) (pleading must show plausible claims, not mere conclusory statements)
- Ashcroft v. Iqbal, 556 U.S. 662 (U.S. 2009) (plausibility standard requires factual content showing plausible liability)
- Ethicon, Inc. v. Quigg, 849 F.2d 1422 (Fed. Cir. 1988) (patent validity challenges may proceed differently in court vs. PTO)
- Marine Polymer Techs., Inc. v. Hemcon, Inc., 672 F.3d 1350 (Fed. Cir. 2012) (intervening rights require a new or amended claim and substantive scope changes)
- In re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1323 (Fed. Cir. 2012) (Forms control only for causes with sample pleadings; invalidity/intervening rights not covered by Form 18)