United States District Court, D. Colorado
STEVEN LEE BRANDT, an individual, JAMES CLAY WALTERS, an individual, and COLORADO BOX COMPANY, INC., a Colorado corporation, Plaintiffs,
VON HONNECKE, an individual, CHASE HONNECKE, an individual, and S & H SHEET METAL, INC., a Colorado corporation, Defendants.
RAYMOND P. MOORE UNITED STATES DISTRICT JUDGE
accuse Defendants of infringing U.S. Patent No. 8, 999, 029
(the “'029 Patent”). Defendants assert, among
other things, by way of defense and counterclaim that the
patent-in-suit is unenforceable because of misuse or
inequitable conduct. This matter is before the Court on
Plaintiffs' Motion for Summary Judgment (ECF No. 138),
arguing that Defendants cannot produce any evidence in
support of misuse or inequitable conduct. In Response,
Defendants withdraw, without prejudice, their affirmative
defense of misuse (ECF No. 145, page 10),  but assert the
evidence is sufficient as to inequitable conduct.
Plaintiffs' Reply argues otherwise.
'029 Patent concerns a furnace filter box, which is made
with various panels (two sides, front, back, and bottom) and
other pieces. The furnace filter box may be shipped
disassembled and its height can be reduced to fit under a
furnace. As stated, Plaintiffs' complaint alleges
Defendants infringe the '029 Patent. Defendants'
affirmative defenses include the following: “(m) the
patent in suit has been so misused in violation of the
antitrust laws as to render said patents [sic]
unenforceable”; and “(o) the claims of the patent
are invalid and/or unenforceable due to the patentee's
inequitable conduct before the United States Patent and
Trademark Office in failing to disclose material information,
which was known to the applicants or its, his or their
attorneys, at the time the application for patent was
filed.” (SUMF at ¶¶1-4, (bracketed matter and
brackets in original).) In addition, Defendants'
counterclaim alleges “[t]he '029 patent is, on
information and belief, invalid and unenforceable for one or
more of the reasons as alleged in the above specified
Affirmative Defenses, all of which are incorporated herein by
this reference.” (SUMF at ¶¶1-4 (brackets in
original).) Thus, Defendants' counterclaim also alleges
unenforceability of the ‘029 Patent based on misuse or
Motion seeks a determination that Defendants cannot prevail
on these two affirmative defenses/counterclaims. As
Defendants withdraw the affirmative defense of misuse (and,
therefore, their counterclaim based on misuse),
Plaintiffs' Motion based on misuse is moot. Accordingly,
at issue is Plaintiffs' alleged inequitable conduct and
the facts and law applicable to this affirmative defense and
counterclaim (hereafter, collectively,
“defense”). The inequitable conduct defense is
based on Plaintiffs' alleged failure to disclose prior
art during the prosecution of the '029 Patent.
which alleged prior art is at issue is unclear.
Plaintiffs' Motion refers the Court to the Whitehair
Report, issued by Defendants' expert, which references
the Smith & Willis and Gustafson boxes and identifies the
following alleged prior art: Allen; Schumacher; Goetl; Hong;
Wu; Kearsley; and Livingston. (Motion, p. 13, referring the
Court to SUMF ¶10 (ECF No. 124-2, pp. 3-4).)
Defendants' Response, however, refers to “identical
prior art” “including” Smith & Willis,
HVAC, and Gustafson,  and it appears that those are the boxes on
which their expert is relying. (ECF No. 145, pp. 9-10; No.
124-2, e.g., p. 6.) The references (prior art) cited
by the examiner at United States Patent and Trademark Office
(the “PTO”) during the '029 Patent included
Wu, Kearsley, Livingston, Delaney, Parker, and Miller. (ECF
No. 151-2 to 151-5; No. 154-2 to 154-5.) Smith & Willis,
HVAC, Gustafson, and Allen, which are apparently at issue,
were not cited.
SUMMARY JUDGMENT STANDARD
judgment is appropriate only if there is no genuine dispute
of material fact and the moving party is entitled to judgment
as a matter of law. Fed.R.Civ.P. 56(a); Celotex Corp. v.
Catrett, 477 U.S. 317, 322 (1986); Gutteridge v.
Oklahoma, 878 F.3d 1233, 1238 (10th Cir. 2018). Whether
there is a genuine dispute as to a material fact depends upon
whether the evidence presents a sufficient disagreement to
require submission to a jury or is so one-sided that one
party must prevail as a matter of law. Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 251-52 (1986);
Stone v. Autoliv ASP, Inc., 210 F.3d 1132, 1136
(10th Cir. 2000). Once the moving party meets its initial
burden of demonstrating an absence of a genuine dispute of
material fact, the burden then shifts to the nonmoving party
to demonstrate the existence of a genuine dispute of material
fact to be resolved at trial. See 1-800-Contacts, Inc. v.
Lens.com, Inc., 722 F.3d 1229, 1242 (10th Cir. 2013)
(citation omitted). “The mere existence of some alleged
factual dispute between the parties will not defeat an
otherwise properly supported motion for summary judgment; the
requirement is that there be no genuine issue of material
fact.” Scott v. Harris, 550 U.S. 372, 380
(2007) (citation omitted). The facts, however, must be
considered in the light most favorable to the nonmoving
party. Cillo v. City of Greenwood Vill., 739 F.3d
451, 461 (10th Cir. 2013) (citations omitted).
conduct, a judge-made doctrine, “is an equitable
defense to patent infringement that, if proved, bars
enforcement of a patent.” Therasense, Inc. v.
Becton, Dickinson & Co., 649 F.3d 1276, 1285 (Fed.
Cir. 2011). This remedy - rendering the entire patent
unenforceable - has been referred to as the “atomic
bomb” of patent law. Id. at 1288 (citing
Aventis Pharma S.A. v. Amphastar Pharm., Inc., 525
F.3d 1334, 1349 (Fed. Cir. 2008) (Rader, J., dissenting)).
Thus, in Therasense, supra, the Federal Circuit
tightened the standards to trigger the doctrine.
are two separate requirements for the defense of inequitable
conduct: intent and materiality. Absent affirmative egregious
conduct, to prevail on the defense, the accused infringer
must prove by clear and convincing evidence that: (1)
“the patentee acted with the specific intent to deceive
the PTO”; and (2) the non-disclosed information was
but-for material. Therasense, 649 F.3d at 1290-91.
See also, e.g., KFx Med. Corp. v. Arthrex, Inc., No.
11cv1698 DMS (BLM), 2012 WL 12847287, at *3 (S.D. Cal. Oct.
the patentee acted with the specific intent to deceive, the
accused infringer must prove that the patentee
“knew of the reference, knew that it
was material, and made a deliberate decision to
withhold it.” Therasense, 649 F.3d at 1290
(emphasis added). Neither gross negligence nor negligence
under a “should have known” standard satisfies
this intent requirement. Id.
may be inferred from indirect and circumstantial evidence.
“However, to meet the clear and convincing evidence
standard, the specific intent to deceive must be ‘the
single most reasonable inference able to be drawn from the
evidence.'” Id. (quoting Star
Scientific Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d
1357, 1366 (Fed. Cir. 2008)). “[T]he evidence must be
sufficient to require a finding of deceitful intent
in the light of all the circumstances.” Id.
(quotation marks and citation omitted) (emphasis in
original). “[W]hen there are multiple reasonable
inferences that may be drawn, intent to deceive cannot be
found.” Id. at 1290-91. Moreover, intent may
not be inferred solely from materiality. Id. at
1290. “Proving that the applicant knew of a reference,
should have known of its materiality, and decided not to
submit it to the PTO does not prove specific intent to
patentee need not offer any good faith explanation for
withholding material information unless the accused infringer
first proves an intent to deceive by clear and convincing
evidence. Id. at 1291. And, “[t]he absence of
a good faith explanation for withholding a ...