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8 UNITED STATES DISTRICT COURT
9 FOR THE CENTRAL DISTRICT OF CALIFORNIA
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11 I-FLOW CORPORATION, ) CASE NO. SACV 09-0762 AG (MLGx)
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12 Plaintiff, )
) ORDER GRANTING IN PART AND
13 v. ) DENYING IN PART MOTION TO
) STRIKE
14 WOLF MEDICAL SUPPLY, INC.; )
FIRST MEDICAL SOURCE, )
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Defendants, )
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_________________________________ )
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18 AND RELATED COUNTERCLAIMS. )
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19 _________________________________ )
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This case involves alleged patent infringement of a medical device known as an infusion
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pump. Plaintiff and Counter-Defendant I-Flow Corporation (“Plaintiff”) claims that Defendants
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Wolf Medical Supply, Inc. (“Wolf”) and First Medical Source (“First Medical”) (collectively
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“Defendants”) are infringing Plaintiff’s patent for infusion pumps. Defendants assert a
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counterclaim against Plaintiff for inequitable conduct, and Plaintiff has filed a motion to strike
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the counterclaim (“Motion”). The Motion is GRANTED IN PART and DENIED IN PART.
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 1 BACKGROUND
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3 This Motion challenges the sufficiency of the allegations of Defendants’ counterclaim for
4 inequitable conduct in their Second Amended Answer and Counterclaim (“SAAC”).
5 Plaintiff is the assignee of U.S. Patent No. 5,284,481 (“the ‘481 Patent”) for certain
6 infusion pumps. (SAAC ¶ 8.) The persons listed as inventors on the ‘481 patent . . . , through
7 their attorneys and agents (for example, Freling E. Baker [“Baker”]), “filed a Rule 97 Disclosure
8 Statement . . . in the prosecution of the [patent application serial number 07/984,899, which
9 issued as the ‘481 patent] in the United States Patent Office.” (SAAC ¶ 26.) “With the
10 Disclosure Statement, the inventors submitted a Form PTO-1449 listing two prior art patents,
11 i.e., U.S. Patent Nos. 5,080,652 and 5,105, 983 (the “Sancoff Patents”) and copies of the Sancoff
12 Patents. (SAAC ¶ 26.)
13 During the prosecution of this application, Defendants allege, “the inventors or their
14 attorneys and agents (for example, Freling E. Baker) did not submit any prior art other than the
15 Sancoff patents . . . .” (SAAC ¶ 26.) The examiner rejected 24 claims in the ‘899 Application
16 over the Sancoff Patents and two other prior art references, U.S. Patent No. 4,507,116
17 (“Liebinsohn Patent”) and U.S. Patent No. 4,915,693 (“Hessel Patent”). (SAAC ¶ 26.) Plaintiff
18 did not disclose to the examiner these references.
19 Further, the Sancoff patents issued from parent applications which were the parent
20 applications for patent application number 90211152.4 in the European Patent Office (“EPO
21 Application”). (SAAC ¶ 27.) Defendants allege that, during prosecution, the inventors took a
22 position they knew to be inconsistent with the EPO Application. According to Defendants,
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24 Freling E. Baker intended to deceive the U.S. Patent Office during
prosecution leading to the ‘481 patent when he argued that the
25 Sancoff patents should not be available as prior art under 35 U.S.C. §
102(e) because of common assignment as the ‘899 application while
26 failing to submit the European application to the Patent office
because the European application directly contradicted the argument
27 due to its earlier publication date, which made the European
application available as prior art under 35 U.S.C. § 102(b).
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2 (SAAC ¶ 30.)
3 Based on these allegations and others, Defendants assert a defense and counterclaim of
4 inequitable conduct. Plaintiff now moves to strike this defense and counterclaim.
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6 LEGAL STANDARD
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8 “The court may strike from a pleading an insufficient defense or any redundant,
9 immaterial, impertinent, or scandalous matter.” Fed. R. Civ. P. 12(f). A Rule 12(f) motion to
10 strike gives the parties an early opportunity to attack portions of a pleading or “challenge to the
11 legal sufficiency of [a] defense.” Schwarzer, et al., California Practice Guide: Federal Civil
12 Procedure Before Trial, ¶ 9:371 (2009) (citing California v. United States, 512 F. Supp. 36, 38
13 (N.D. Cal. 1981)). Motions to strike are “generally disfavored,” and “generally not granted
14 unless it is clear that the matter to be stricken could have no possible bearing on the subject
15 matter of litigation.” Shabaz v. Polo Ralph Lauren Corp., 586 F. Supp. 2d 1205, 1209 (C.D.
16 Cal. 2008) (quotation marks omitted). But they should be granted “when a defense is
17 insufficient as a matter of law.” Sherman v. Stryker Corp., SACV 09-224 JVS (ANx), 2009 U.S.
18 Dist. LEXIS 34105, at *9-10 (C.D. Cal. 2009) (citing Kaiser Aluminum & Chem. Sales, Inc. v.
19 Avondale Shipyards, Inc., 677 F.2d 1045, 1057 (5th Cir. 1982)).
20 Courts must view the pleadings under attack in the light most favorable to the pleader.
21 Lazar v. Trans Union LLC, 195 F.R.D. 665, 669 (C.D. Cal. 2000). “The grounds for a motion to
22 strike must appear on the face of the pleading under attack, or from matters which the Court may
23 take judicial notice.” Sherman, 2009 U.S. Dist. LEXIS 34105, at *10.
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25 ANALYSIS
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27 This Motion concerns whether Defendants have a valid defense and counterclaim for
28 inequitable conduct. “A patent may be rendered unenforceable for inequitable conduct if an

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 1 applicant, with intent to mislead or deceive the examiner, fails to disclose material information
2 or submits materially false information to the PTO during prosecution.” Larson Mfg. Co. of S.D.
3 v. Aluminart Prods., 559 F.3d 1317, 1326 (Fed. Cir. 2009) (quoting Digital Control, Inc. v.
4 Charles Mach. Works, 437 F.3d 1309, 1313 (Fed. Cir. 2006)). “To successfully prove
5 inequitable conduct, ‘the accused infringer must present evidence that the applicant (1) made an
6 affirmative misrepresentation of material fact, failed to disclose material information, or
7 submitted false material information, and (2) intended to deceive the [PTO].’” Id. (quoting Star
8 Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir. 2008)) (internal
9 quotation marks omitted).
10 Plaintiff makes two arguments that the defense and counterclaim of inequitable conduct
11 should be stricken. First, Plaintiff argues, Defendants’ allegations “fail to identify how any
12 allegedly withheld reference was material and not cumulative of the information of record.”
13 (Mot. 1:21-23.) Second, Plaintiff argues, Defendants’ allegations “also fail to provide sufficient
14 facts to permit a reasonable inference that someone with a duty of disclosure had the requisite
15 knowledge and intent to deceive the [PTO].” (Mot. 1:23-26.) The Court addresses each
16 argument in turn.
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18 1. MATERIALITY AND CUMULATIVENESS
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20 Plaintiff first argues that Defendants’ counterclaim fails because the three references they
21 identify cannot support an allegation of inequitable conduct. Plaintiff contends that two of the
22 three references, the Hessel Patent and the Liebinsohn Patent, were actually considered by the
23 patent examiner, so they are immaterial and a claim of inequitable conduct cannot be based on
24 references considered by the examiner. Further, according to Plaintiff, the third reference, the
25 EPO Application, cannot be the basis for an inequitable conduct claim because it was cumulative
26 of other references before the examiner.
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 1 1.1 The Hessel Patent and the Liebinsohn Patent
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3 Plaintiff argues that an inequitable conduct claim may not be based on the Hessel Patent
4 or the Liebinsohn Patent because the examiner independently identified those references. The
5 Court agrees.
6 Defendants do not dispute that the examiner identified the Hessel Patent and the
7 Liebinsohn Patent. They argue only that, “at the time Baker submitted the Disclosure Statement
8 for the patent applicants, he had no reason to conclude that the Patent Examiner would later on
9 identify these two references.” (Opp’n 6:6-8.)
10 Defendants say that Plaintiff misrepresents Federal Circuit law by arguing that “patents
11 considered by the examiner cannot be the basis for an inequitable conduct claim.” (Opp’n 5:2-4
12 (quoting Mot. at 2).) Defendants are wrong.
13 “Inequitable conduct cannot be based on an applicant’s failure to cite a prior art reference
14 where the examiner independently cited the same reference.” Symbol Techs., Inc. v. Aruba
15 Networks, Inc., 609 F. Supp. 2d 353, 358 (D. Del. 2009). In other words, “[w]hen a reference
16 has been considered by the examiner, it is not controlling how it came to the examiner’s
17 attention. When a reference was before the examiner, whether through the examiner’s search or
18 the applicant’s disclosure, it can not be deemed to have been withheld from the examiner.”
19 Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1582 (Fed. Cir. 1991),
20 overruled on other grounds by Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1293 (Fed. Cir.
21 2009) (en banc).
22 This rule has been reaffirmed numerous times. See, e.g., Dimension One Spas, Inc. v.
23 Coverplay, Inc., 2007 U.S. Dist. LEXIS 70838, at *10-11 (S.D. Cal. Sept. 24, 2007) (“Even
24 when patent applicants are aware of highly material prior art patents during prosecution of their
25 application, there is no inequitable conduct if the reference comes before the PTO some way
26 other than through the applicants’ disclosure.”); Teva Pharm. Indus. Ltd. v. Apotex, Inc., 2008
27 WL 3413862, at *2; Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 106 F.
28 Supp. 2d 667, 691 n.13 (D. N.J. 2000). Defendants have not identified any contrary authority.

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 1 It is undisputed that the patent examiner considered the Hessel Patent and the Liebinsohn
2 Patent. These references cannot be the basis for Defendants’ inequitable conduct claim.
3 Accordingly, the Court GRANTS the Motion to the extent it asserts that the Hessel Patent and
4 the Liebinsohn Patent cannot be the basis for an inequitable conduct claim.
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6 1.2 The EPO Application
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8 Plaintiff next argues that an inequitable conduct claim may not be based on the EPO
9 Publication because it “is cumulative of the Sancoff Patent that was considered by the PTO as
10 prior art.” (Mot. 5:1-3.) But the Court is unpersuaded by Plaintiff’s argument that Defendants’
11 allegations concerning the EPO Application should be stricken.
12 A reference is “cumulative” to prior art before the examiner if the art before the examiner
13 teaches the “same combination” of claim limitations taught in the allegedly withheld reference.
14 Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1330 (Fed. Cir. 2009); Larson Mfg., 559
15 F.3d at 1333. “[A] withheld otherwise material prior art reference is not material for the
16 purposes of inequitable conduct if it is merely cumulative to that information considered by the
17 examiner.” Digital Control, 437 F.3d at 1331-32. “What is relevant is whether [the withheld
18 material] discloses subject matter relevant to the examination of the . . . patent application that is
19 not taught by the [material already before the PTO].” Larson Mfg., 559 F.3d at 1332 (quoting)
20 (Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1575 (Fed. Cir. 1997)); see also
21 Litton Indus. Prods., 755 F.2d at 167 (reversing a finding of non-cumulativeness because,
22 “[w]hile the precise structural arrangements of the devices disclosed by these references differ,
23 they have the same relative degree of materiality with respect to the claimed invention”).
24 Here, Defendants allege:
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26 It is reasonable to infer that Freling E. Baker intended to deceive the
U.S. Patent Office during prosecution leading to the ‘481 patent
27 when he argued that the Sancoff patents should not be available as
prior art under 35 U.S.C. § 102(e) because of common assignment as
28 the ‘899 application while failing to submit the European application

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 1 to the Patent office because the European application directly
contradicted the argument due to its earlier publication date, which
2 made the European application available as prior art under 35 U.S.C.
§ 102(b).
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4 (SAAC ¶ 30.) They further allege that the “European application [] discloses the same
5 embodiments as Sancoff patent no. 5,080,652.” (SAAC ¶ 29.)
6 Plaintiff argues that the EPO Application has the same disclosures as the Sancoff Patents,
7 and Defendants do not dispute this argument. Rather, Defendants emphasize that the of the EPO
8 application has an earlier publication date than the Sancoff Patents, and argue that “[w]hen the
9 prosecuting attorney Freling E. Baker submitted arguments to try to disqualify the Sancoff
10 patents as prior art due to common assignment, that argument would have been futile in view of
11 the European application.” (Opp’n 6:19-22.)
12 Scripps Clinic and its progeny say that the nondisclosure of a reference is not inequitable
13 conduct if the examiner independently cites a reference. This rule applies even if the applicant
14 knew about the reference and chose not to disclose it before the examiner cited it. The issue
15 here is whether this conclusion hold true when an applicant chooses not to disclose what would
16 be a material reference, and then the examiner later cites a different reference that discloses the
17 same combination of claim limitations as the undisclosed reference.
18 Plaintiff has failed to establish that the answer is yes. The standard for material
19 information that had to be submitted to the PTO during prosecution of the ‘481 Patent was:
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21 information is material to patentability when it is not cumulative to
information already of record or being made of record in the
22 application, and (1) It establishes, by itself or in combination with
other information, a prima facie case of unpatentability of a claim; or
23 (2) It refutes, or is inconsistent with, a position the applicant takes in:
(i) Opposing an argument of unpatentability relied on by the Office,
24 or (ii) Asserting an argument of patentability.
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26 Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1363 n.2 (Fed. Cir. 2003).
27 Under this language, the EPO Application might have refuted Baker’s argument that the
28 Sancoff patents were disqualified as prior art. Thus, Defendants have established that their

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 1 allegations concerning the EPO Application might support their inequitable conduct claim.
2 Plaintiff fails to refute Defendants’ argument, so the allegations concerning the EPO claim will
3 not be stricken.
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5 2. REASONABLE INFERENCE OF AN INTENT TO DECEIVE
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7 Plaintiff next argues that Defendants fail to allege sufficient facts to raise a reasonable
8 inference that Baker acted with an intent to deceive the PTO. The Court find Plaintiff’s
9 argument unpersuasive.
10 “[W]hether inequitable conduct has been adequately pleaded is a question of Federal
11 Circuit law because it ‘pertains to or is unique to patent law’.” Exergen, 575 F.3d at1327
12 (quoting Cent. Admixture Pharmacy Servs., Inc. v. Advanced Cardiac Solutions, P.C., 482 F.3d
13 1347, 1356 (Fed. Cir. 2007)). The Federal Circuit has held that “[i]nequitable conduct, while a
14 broader concept than fraud, must be pled with particularity under Rule 9(b).” Exergen, 575 F.3d
15 at 1237 (quotation marks omitted).
16 “[I]n pleading inequitable conduct in patent cases, . . . [a]lthough ‘knowledge’ and
17 ‘intent’ may be averred generally, a pleading of inequitable conduct under Rule 9(b) must
18 include sufficient allegations of underlying facts from which a court may reasonably infer that a
19 specific individual (1) knew of the withheld material information or of the falsity of the material
20 misrepresentation, and (2) withheld or misrepresented this information with a specific intent to
21 deceive the PTO.” Id. at 1328-29. Plaintiff argues that the SAAC does not give enough
22 information to permit a reasonable inference that Baker intended to deceive the PTO.
23 Defendants allege that Baker was extensively involved in prosecution of the Sancoff
24 Patents and the ‘481 Patent. (SAAC ¶ 29.) Further, they allege that the EPO Application is the
25 foreign counterpart of the Sancoff Patents. (SAAC ¶ 27.) Under these allegations, Defendants
26 argue that, “[n]ot knowing a foreign counterpart is not a plausible explanation.” (Opp’n 8:16-
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28 Considering these arguments, the Court finds at this stage that Plaintiff has failed to show

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 1 that Defendants’ allegations concerning the EPO Application must be stricken. Thus, the
2 Motion is DENIED to the extent it requests that the Court strike allegations concerning the EPO
3 Application.
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5 DISPOSITION
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7 The Motion is GRANTED IN PART and DENIED IN PART. At oral argument, the
8 parties discussed issues concerning possible appeal of the Court’s ruling, but the Court does not
9 address these issues in this Order.
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13 IT IS SO ORDERED.
14 DATED: February 4, 2010.
15 _______________________________
Andrew J. Guilford
16 United States District Judge
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