Corning Inc. v. Wilson Wolf Mfg. Corp.

569 F.Supp.3d 920

CORNING INCORPORATED, Plaintiff,

v.WILSON WOLF MANUFACTURING CORP. and John R. Wilson, Defendants.

Civil No. 20-700 (DWF/TNL)

United States District Court, D. Minnesota.

Signed October 28, 2021

Ivan Poullaos, Esq., and Kimball R. Anderson, Esq., Winston & Strawn LLP; Jeff M. Barron, Esq., Barnes & Thornburg, LLP; Lora Mitchell Friedemann, Esq., and Nirmani Chethana Perera, Esq., Fredrickson & Byron, PA, counsel for Plaintiff.

Britta S. Loftus, Esq., Devan V. Padmanabhan, Esq., Michelle E. Dawson, Esq., Sri K. Sankaran, Esq., and Paul J. Robbennolt, Esq., Padmanabhan & Dawson, PLLC, counsel for Defendants.

AMENDED^** MEMORANDUM OPINION AND ORDER

DONOVAN W. FRANK, United States District Judge

INTRODUCTION

Plaintiff Corning Inc. ("Corning" or "Plaintiff") filed an amended complaint seeking declaratory judgment of patent non-infringement, invalidity, and unenforceability of U.S. Patent Nos. 9,441,192 (the " ’192 Patent"), 8,697,443 (the " ’443 Patent"), and 9,732,317 (the " ’317 Patent") (collectively, the "Patents-in-Suit"). (Doc. No. 73 ("Am. Compl.").) This matter is before the Court on a Partial Motion to Dismiss Amended Complaint brought by Defendants Wilson Wolf Manufacturing Corp. ("Wilson Wolf") and John R. Wilson ("Wilson") (together, "Defendants"). (Doc. No. 81.) Plaintiff opposes Defendants’ motion. (Doc. No. 88 ("Pl. Opp.").) For the reasons set forth below, the Court grants in part and denies in part Defendants’ motion to dismiss.

BACKGROUND

I. The Patents-in-Suit

Wilson Wolf is the purported owner of the Patents-in-Suit. (Am. Compl. ¶ 35; see also id. , Ex. A (" ’192 Patent"), Ex. B (" ’443 Patent"), Ex. C (" ’317 Patent").) Corning alleges that the Patents-in-Suit are "related either by family or subject matter to the patents that were asserted by Wilson Wolf and Wilson in the Minnesota Litigation." (Id . ¶ 36.)

A. The ’192 and ’443 Patents

The ’192 Patent, entitled "Cell culture methods and devices utilizing gas permeable materials," was filed on July 27, 2015 and issued on September 13, 2016. ( ’192 Patent.) The ’443 Patent, also entitled "Cell culture methods and devices utilizing gas permeable materials," was filed on April 2, 2010 and issued on April 15, 2014. ( ’443 Patent.) The ’192 and ’443 Patents both claim priority to U.S. Provisional Application No. 60/509,651 (the " ’651 Provisional") and are both divisions of Application No. 10/961,814 (the " ’814 Application").¹ (See ’192 Patent ; ’443 Patent.) Corning alleges that the ’192 and ’443 Patents "share the same specification with, and concern the same alleged inventions as, Wilson Wolf's [ U.S. Patent No. 8,158,426 (the " ’426 Patent") and U.S. Patent No. 8,158,427 (the " ’427 Patent") ], which had been asserted against the use of Corning's HYPERStack® un the Minnesota Litigation." (Id . ¶¶ 15, 37.) Corning further alleges that "[u]nder Wilson Wolf's apparent claim construction in the suits against the HYPERStack Users," the claims of the ’192 and ’443 Patents are "patentably indistinct" from the claims of the ’426 and ’427 Patents." (Id . ¶ 37.)

B. The ’317 Patent

The ’317 Patent, entitled "Highly efficient gas permeable devices and methods for culturing cells," was filed on July 2, 2014 as U.S. Patent Application No. 14/321,933 (the " ’933 Application") and issued on August 15, 2017. (See ’317 Patent ; see also Am. Compl. ¶ 111.) The ’317 Patent is a continuation of the ’044 Patent, which claims the benefit of U.S. Provisional Patent Application Serial No. 60/873,347 (the " ’347 Provisional"). (Id. ; see also Am. Compl. ¶ 111.) Corning alleges that "the claims of the ’317 Patent are not patentably distinguishable from the claims of ’044 Patent." (Id . ¶ 112.) Moreover, during the prosecution of the ’933 Application, the Examiner issued a double patenting rejection finding that all pending claims of the ’933 Application were not patentably distinct from the claims of the ’044 patent. (Id . ¶ 112.) Instead of challenging the double patenting rejection, Wilson Wolf and Wilson filed a terminal disclaimer. (Id .)

II. General and Procedural History

Much of the factual background for the above-entitled matter is clearly and precisely set forth in the Court's March 22, 2016 Memorandum Order in the case captioned Wilson et al. v. Corning Inc. , Case No. 13-cv-210 (D. Minn. filed Jan. 25, 2013) (the "Minnesota Litigation") (see Minnesota Litigation, Doc. No. 388), as well as the Court's prior order granting in part and denying in part a motion to dismiss the Complaint originally filed in this action. (Doc. No. 43 ("Oct. 2020 Order").)

Wilson is the CEO of Wilson Wolf. (Am. Compl. ¶ 4.) Wilson Wolf is a biotechnology firm that develops and manufactures cell-culture devices. Corning is one of the world's leading innovators in materials science. (Id . ¶ 8.) Corning manufactures and sells cell culturing vessels. (Id .) One of Corning's cell culturing vessels is marketed as the HYPERStack, which is designed to facilitate adherent cell cultures. (Id . ¶ 13.) Corning alleges that the HYPERStack uses gas-permeable film technology that allows the HYPERStack vessel to be an efficient, scalable cell culture vessel for adherent cell culture applications. (Id . ¶ 14.)

In 2013, Wilson Wolf and Wilson sued Corning in the Minnesota Litigation, alleging that Corning obtained Wilson Wolf's cell-culture technology under a confidentiality agreement and that Corning subsequently developed products using Wilson Wolf's technology. (Id . ¶ 15; see also, id. , Ex. D.) Among other claims, Wilson Wolf and Wilson alleged that the use, offer, and sale of Corning's HYPERStack product directly and indirectly infringed the ’426 Patent and the ’427 Patent. (Id .) On March 17, 2015, the Court dismissed the claims for patent infringement of the ’426 and ’427 Patents with prejudice. (Id. ; Minnesota Litigation, Doc. No. 299 at 5.) Five claims remain in the Minnesota Litigation, including claims for correction of inventorship, breach of contract, and misappropriation of trade secrets.² (Id . ¶ 16.)

On December 26, 2017, the U.S. Patent and Trial Appeal Board ("PTAB") issued a decision and judgment in an interference proceeding (the "Interference") invalidating all challenged claims of the ’044 Patent on the ground that they were anticipated by prior art. (Id . ¶ 18.) That decision was affirmed by the Federal Circuit. (Id. ; citing Wilson v. Martin , 789 F. App'x 861 (Fed. Cir. 2019).)

On March 9, 2020, Plaintiff filed a Complaint for Declaratory Judgment and Other Relief against Defendants. Plaintiff brought this action in response to three separate lawsuits filed by Defendants against Plaintiff's customers and end users, alleging infringement of the Patents-in-Suit from the use of Plaintiff's HYPERStack device. In short, Corning alleges that, having suffered invalidation of the ’044 Patent, Wilson Wolf and Wilson launched retaliatory litigation against Corning's HYPERStack end-users and customers.³ (Id . ¶ 19.) In this litigation, Defendants allege that the HYPERStack Users infringe some or all of the Patents-in-Suit. (Id .)⁴ Corning's original complaint asserted thirteen claims—three seeking declarations of noninfringement for each of the Patents-in-Suit from the use of Corning's HYPERStack device; three seeking declarations of invalidity of each of the Patents-in-Suit; three seeking declarations of unenforceability of each of the Patents-in-Suit due to inequitable conduct; one seeking a declaration that the accused infringement is subject to the Safe Harbor of 35 U.S.C. § 271(e)(1) ; two seeking declarations of claim preclusion; and one for Tortious Interference with Prospective Economic Advantage.

On May 7, 2020, Defendants filed a partial motion to dismiss the original complaint. (Doc. No. 22.) In the October 2020 Order, the Court granted in part and denied in part the motion. Specifically, the Court dismissed without prejudice certain claims in Plaintiff's original Complaint: (1) inequitable conduct based on the alleged provision of "misleading data" to the PTO; (2) inequitable conduct based on the alleged withholding of "other data" from the PTO; (3) inequitable conduct based on the alleged withholding of documents from the Interference from the PTO; (4) claim preclusion with respect to the ’192 Patent and the ’443 Patent ; and (5) claim preclusion pursuant to the Kessler doctrine with respect to the ’317 Patent. The Court denied Defendant's motion to dismiss with respect to (1) Plaintiff's claims for inequitable conduct for submittal of the Vera Declaration; (2) Plaintiff's tortious interference claim; and (3) all claims against Defendant Wilson.

On February 19, 2021, Plaintiff filed an Amended Complaint. Again, Corning alleges that Defendants are engaged in a patent enforcement and litigation campaign that is based on non-infringed, invalid, and unenforceable patents. (Am. Compl. ¶ 1.) For example, Corning alleges that when Defendants filed lawsuits against the HYPERStack Users, Defendants knew, or should have known, that the Patents-in-Suit were unenforceable in light of Defendants’ fraudulent conduct in obtaining the patents from the PTO. (Id. ¶ 26.)⁵ Corning also alleges that Defendants knew, or should have known, that the claims in the ’044 Patent, which allegedly underline the Patents-in-Suit, had been invalidated by the PTAB. (Id .) Corning further alleges that Defendants knew, or should have known, that patent infringement lawsuits against the HYPERStack Users were barred by the Kessler doctrine and the safe harbor established by 35 U.S.C. § 271(e)(1). (Id .) Corning also alleges that Defendants filed the lawsuits against the HYPERStack Users for the "improper and unjustified purposes of interfering with Corning's existing and prospective business relationships with its customers." (Id . ¶ 27.)

Defendants now move to dismiss Corning's inequitable conduct claims based on the alleged withholding of adverse data and information from the Interference, as well as...