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Marical Inc. v. Cooke Aquaculture Inc.

United States District Court, D. Maine

November 15, 2017

MARICAL, INC., et al., Plaintiffs
COOKE AQUACULTURE, INC., et al. Defendants


          John C. Nivison U.S. Magistrate Judge.

         On July 31, 2017, the Court granted Defendants' Motion for Leave to Amend Their Answer (Motion, ECF No. 214), to permit Defendants to add an affirmative defense and supplement their counterclaim to allege that the four patents-in-suit are unenforceable under the doctrines of inequitable conduct and infectious unenforceability. (Decision and Order, ECF No. 282.) In support of their motion, Defendants stipulated they would “limit the inequitable conduct claims to those ‘representative' claims in the litigation, and claim 46 of the ‘792 patent.”[1]

         The matter is before the Court on Plaintiffs' Motion for Reconsideration and Request for Clarification. (ECF No. 285.) The Court grants in part the motion to the extent Plaintiff seeks clarification.


         As recited in the Decision and Order, on March 24, 2002, a patent examiner with the United States Patent Office (PTO) issued an office action rejecting all pending claims under the judicially created doctrine of nonstatutory double patenting, citing prior patent number 6, 337, 391, and explained that “the claims if allowed, would improperly extend the ‘right to exclude' already granted in the [‘391] patent.” (Proposed Am. Ans. ¶ 16; see also ECF No. 214-2.) Subsequently, Plaintiffs overcame the office action, and secured the patents-in-suit, by explaining that the patents differed from the ‘391 Patent because the newly claimed methods involved a “specially made feed” containing NaCl and “at least one PolyValent Cation Sensing Receptor (PVCR) Modulator (e.g., an amino acid), ” which were teachings not disclosed in the ‘391 Patent. (ECF No. 214-4.)

         In its Decision and Order, the Court explained that Defendants alleged facts with sufficient particularity to support a plausible claim that Plaintiffs represented to the PTO that the patented processes involved the use of “specially made” feed containing an amount of NaCl between about 1% and 10% by weight, or between about 10, 000 mg/kg and 100, 000 mg/kg, and tryptophan in an amount ranging between 0.1% and 1%, or between 1gm/kg and 10gm/kg, [2] and that the representation was inequitable because Plaintiffs failed to disclose the material fact that prior art fish feed would meet both limitations.

         In particular, in support of their motion to amend, Defendants referenced Clarke 6 Freshwater Feed, a feed marketed specifically for use during the smoltification process that contained more than 1% added NaCl; and Nutrient Requirements of Fish, published through the National Research Council in 1993 (a/k/a NRC 1993), which disclosed a tryptophan requirement of 0.2% of dry weight for juvenile Chinook salmon. The Court determined that the information could support the plausible inference that the aquaculture industry already had available a prior art feed within the scope of the “specially made feed” described in the patents-in-suit, which patents the PTO issued after Plaintiffs cited the “specially made” character of the feed taught in the patents. The Court found the tryptophan specification particularly relevant to the motion to amend because it appeared that Plaintiffs did not include in the patent applications an adequate prior art reference to dietary tryptophan requirements for salmon. (Decision and Order at 14 - 16.)[3]

         Through their motion for reconsideration and request for clarification, Plaintiffs argue (1) that the finding that Nutritional Requirements of Fish is a material, non-cumulative reference was in error because the patent applications disclosed the reference, “The effect of dietary tryptophan level on growth and metabolism of rainbow trout (Salmo gairneri), ” (Walton, et al.) Brit. J. Nutrition 51, 279-2987 (1984), which reference was identified in Plaintiffs' opposition to the motion to amend[4]; (2) that the Decision and Order is unclear because it approves the proposed amended answer without restriction, even though the Court did not find that Plaintiffs omitted a material fact concerning the use of sodium chloride in prior art feed; and (3) that the allegations in the proposed amended answer are not consistent with Defendants' representation that they would limit the new affirmative defense and counterclaims to the representative claims and claim 46 of the ‘792 patent.


         To be entitled to relief on their motion for reconsideration, Plaintiffs must demonstrate (1) the availability of new evidence not previously available, (2) an intervening change in controlling law, or (3) the need to correct a clear error of law or to prevent manifest injustice. Int'l Ass'n of Machinists & Aerospace Workers v. Verso Corp., 121 F.Supp.3d 201, 217 (D. Me. 2015). However, even if Plaintiffs cannot meet this standard, interlocutory orders remain open pending final judgment and the Court therefore has “wide discretion” to revisit prior interlocutory rulings. Mumme v. U.S. Dep't of Labor, 150 F.Supp.2d 162, 165 (D. Me. 2001); see also Geffon v. Micrion Corp., 249 F.3d 29, 38 (1st Cir. 2001).

         Plaintiffs' contention that reconsideration is warranted because the Court erred in concluding that Defendants adequately alleged inequitable conduct is unpersuasive. The Court nevertheless will clarify the Decision and Order as explained below.

         A. Materiality of Withheld Reference

         “Inequitable conduct is an equitable defense to patent infringement that, if proved, bars enforcement of a patent. This judge-made doctrine evolved from a trio of Supreme Court cases that applied the doctrine of unclean hands to dismiss patent cases involving egregious misconduct ….” Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011). Through a claim of inequitable conduct, a patent infringement defendant asserts that the patentee obtained the patent-in-suit by making material misrepresentations to the PTO or by taking measures to suppress evidence that, if disclosed, would have prevented issuance of a patent. Id. at 1285 - 87. “Inequitable conduct occurs when a patentee breaches his or her duty to the PTO of candor, good faith, and honesty.” U.S. Water Servs., Inc. v. Novozymes A/S, 843 F.3d 1345, 1352 (Fed. Cir. 2016) (quoting Ferring B.V. v. Barr Labs., Inc., 437 F.3d 1181, 1186 (Fed. Cir. 2006), and citing 37 C.F.R. § 1.56(a) (2015) (explaining that a party appearing before the PTO has “a duty to disclose ... all information known to that individual to be material to patentability”)).

         For a nondisclosure to meet the materiality standard that applies to a claim of inequitable conduct, the nondisclosure must be the “but for” cause for issuance of the patent. Therasense, 649 F.3d at 1291. Nondisclosure of prior art meets this standard “if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.” Id. A patentee, however, does not commit inequitable conduct by withholding a reference if the patent examiner in fact considered the reference, Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1582 (Fed. Cir. 1991), overruled on other grounds by Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009), or if the allegedly ...

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