Case 1:19-cv-02225-RGA Document 197 Filed 02/09/21 Page 1 of 7 PageID #: 13646
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ANALOG DEVICES, INC.
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`Plaintiff,
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`v.
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`XILINX, INC.,
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`Defendant.
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`XILINX, INC. and
`XILINX ASIA PACIFIC PTE. LTD.,
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`Counterclaim Plaintiffs,
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`v.
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`ANALOG DEVICES, INC.,
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`Counterclaim Defendant.
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`Civil Action No. 19-cv-2225-RGA
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`MEMORANDUM ORDER
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`Before the Court is Xilinx’s Motion to Strike Affirmative Defense of Inequitable
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`Conduct. (D.I. 60). The motion is fully briefed. (D.I. 61, 71, 73). For the reasons set forth
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`below, Xilinx’s motion is GRANTED with leave to amend.
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`I.
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`BACKGROUND
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`In response to Xilinx’s amended counterclaims (D.I. 46), Analog Devices, Inc. (“ADI”)
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`filed an answer (D.I. 54) asserting the affirmative defense of inequitable conduct during the
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`1
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`Case 1:19-cv-02225-RGA Document 197 Filed 02/09/21 Page 2 of 7 PageID #: 13647
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`prosecution of U.S. Patent No. 7,224,184 (“the ’184 Patent”). (D.I. 71 at 1; D.I. 54 at ¶¶ 11-14).1
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`ADI alleges that Delon Levi, a former Xilinx employee and named inventor of the ‘184 Patent,
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`intentionally withheld a material reference from the PTO during prosecution. (D.I. 54 at ¶¶ 11-
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`13). Mr. Levi is a named author on the 2003 article, S. Young, et al., A High I/O Reconfigurable
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`Crossbar Switch (hereinafter the “Levi Reference”). (Id. at ¶ 12). ADI alleges that this reference
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`constitutes prior art to the ‘184 Patent and that Levi knowingly failed to disclose it. (Id.)
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`Xilinx moved to strike this affirmative defense under Federal Rule of Procedure 12(f) and
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`requested that the court deny ADI the opportunity to amend. (D.I. 61 at 1).
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`II.
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`LEGAL STANDARDS
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`A. Motion to Strike
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`Federal Rule of Civil Procedure 12(f) permits the court to strike “an insufficient defense
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`or any redundant, immaterial, impertinent, or scandalous matter.” FED. R. CIV. P. 12(f). The
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`Third Circuit cautions that “a court should not grant a motion to strike a defense unless the
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`insufficiency of the defense is ‘clearly apparent.’” Cipollone v. Liggett Grp., Inc, 789 F.2d 181,
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`188 (3d Cir. 1986). In order to survive a motion to strike for failure to state a claim, the
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`affirmative defense must meet the applicable pleading standard. See Sonos, Inc. v. D&M
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`Holdings Inc., 2016 WL 4249493, at *4 (D. Del. Aug. 10, 2016); Senju Pharm. Co. v. Apotex,
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`Inc., 921 F. Supp. 2d 297, 306 (D. Del 2013). “When considering such a motion, the Court must
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`construe all the facts in favor of the nonmoving party [] and deny the motion if the defense is
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`sufficient under law.” Proctor & Gamble Co. v. Nabisco Brands, Inc., 697 F. Supp. 1360, 1362
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`(D. Del. 1988).
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`1 Paragraph numbering for Affirmative Defenses begins on page 17 of the answer. (D.I. 54).
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`2
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`Case 1:19-cv-02225-RGA Document 197 Filed 02/09/21 Page 3 of 7 PageID #: 13648
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`B. Inequitable Conduct
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`Inequitable conduct requires that (1) “the patentee acted with the specific intent to
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`deceive the PTO,” and (2) the material withheld from the PTO satisfies “but-for materiality,” that
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`is, “the PTO would not have allowed a claim had it been aware of the undisclosed prior art.”
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`Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1290-91 (Fed. Cir. 2011).
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`Inequitable conduct must be pled with particularity pursuant to Federal Rule of Civil
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`Procedure 9(b). Exergen Corp v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1328 (Fed. Cir. 2009).
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`To meet this standard, “the pleading must identify the specific who, what, when, where, and how
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`of the material misrepresentation or omission committed before the PTO.” Id. The court in
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`Exergen clarified that while intent may be pleaded generally, the pleading must still “include
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`sufficient allegations of underlying facts from which a court may reasonably infer that a specific
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`individual (1) knew of the withheld material information or of the falsity of the material
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`misrepresentation, and (2) withheld or misrepresented this information with a specific intent to
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`deceive the PTO.” Id. at 1328-29.
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`III. DISCUSSION
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`Xilinx argues that ADI’s pleading is deficient with respect to (1) the non-cumulativeness
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`of the prior art; (2) materiality; and (3) intent. (D.I. 61 at 7-9). I will address each in turn.
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`Xilinx argues that ADI’s pleading must fail because it does not address how the Levi
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`Reference is not cumulative of the prior art before the PTO. (Id. at 7). ADI asserts that Xilinx is
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`merely faulting it for not using the term “non-cumulative” but that the pleadings adequately
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`address how the Levi Reference would have been interpreted by the PTO. (D.I. 71 at 9). In
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`support of its argument, ADI points to language discussing the contents of the Levi Reference as
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`3
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`Case 1:19-cv-02225-RGA Document 197 Filed 02/09/21 Page 4 of 7 PageID #: 13649
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`evidence that its pleading “identif[ies] the particular claim limitations . . . that are supposedly
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`absent from the information of record.” (Id. at 9 (citing Exergen, 575 F.3d at 1329)).
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`I agree that ADI need not use the term “non-cumulative,” but the pleadings must contain
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`facts that demonstrate “‘why’ the withheld information is material and not cumulative, and ‘how’
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`an examiner would have used this information in assessing the patentability of the claims.”
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`Exergen, 575 F.3d at 1330; see also Aerocrine AB v. Apieron Inc., 2010 WL 1225090, at *9 n.7
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`(D. Del. Mar. 30, 2010) (collecting post-Exergen caselaw on point). ADI’s pleading states:
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`On information and belief, Mr. Levi knowingly failed to disclose the Levi
`Reference with a specific intent to deceive the USPTO. As a listed author of the
`Levi Reference, Mr. Levi was unquestionably aware of the Levi Reference.
`Moreover, the Levi Reference was plainly material to the patentability of the ’184
`claims. For example, claim 1 of the ’184 patent claims a programmable logic
`device, with reconfigurable modules for implementing tasks, and a dynamically
`reconfigurable crossbar switch. The Levi Reference discloses modules for
`implementing tasks similar to those Xilinx has accused of infringement in its sixth
`counterclaim.2 The Levi Reference also discloses a dynamically reconfigurable
`crossbar switch.
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`Upon information and belief, the USPTO relied on Mr. Levi’s material omission
`in issuing the ’184 patent. But for Mr. Levi’s material omission, the USPTO
`would not have granted one or more claims of the ’184 patent.
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`(D.I. 54 at ¶¶ 13, 14 (footnote added)). From these allegations, there is nothing one can infer
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`about the contents of the prior art before the PTO and whether the Levi Reference fills any gaps
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`therein.
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`Relatedly, Xilinx argues that ADI’s materiality allegations are insufficient. (D.I. 61 at 8).
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`Xilinx asserts that the above allegations concerning the Levi Reference are too general and do
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`not adequately address how the Levi Reference is relevant to the patentability of claim 1 of the
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`‘184 patent. (Id. at 8-9). ADI argues that identifying the “dynamically reconfigurable crossbar
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`2 I am not sure of the relevance of an assertion that the accused product is similar to the prior art.
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`4
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`switch” and “modules for implementing tasks similar to those Xilinx has accused of
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`infringement in its sixth counterclaim” is sufficient to tie the Levi Reference to claim 1 of the
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`‘184 Patent. (D.I. 71 at 10-11).3
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`ADI’s failure to address the contents of the prior art before the PTO means that ADI has
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`failed to plead materiality with the particularity required by Rule 9(b). In addition to the facts
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`recited, ADI’s conclusory assertion that “[b]ut for Mr. Levi’s material omission, the USPTO
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`would not have granted one or more claims of the ’184 patent” is insufficient to satisfy this
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`pleading standard. See Allergan USA, Inc. v. Prollenium US Inc., 2019 WL 7298569, at *3 (D.
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`Del. Dec. 9, 2019) (“The use of boiler plate and conclusory allegations will not suffice.”)
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`(quoting Kuhn Constr. Co. v. Ocean & Coastal Consultants, Inc., 844 F. Supp. 2d, 519, 530 (D.
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`Del. 2012)); Human Genome Scis. v. Genentech, Inc., 2011 WL 7461786, at *4 (C.D. Cal. Dec.
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`9, 2011). Further, the few facts included in the pleadings do not include the required “how” and
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`the “why.” Exergen, 575 F.3d at 1329-30; see also Aevoe Corp. v. AE Tech. Co., 2013 WL
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`876036, at *8 (D. Nev. Mar. 7, 2013) (demonstrating the omitted material’s relevance was
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`insufficient to satisfy materiality). These omissions are fatal to ADI’s pleading.
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`Lastly, Xilinx asserts that ADI’s pleading fails to include facts that would allow the court
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`to infer specific intent to deceive the PTO. (D.I. 61 at 9). With respect to Mr. Levi, ADI alleges:
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`(1) Mr. Levi is a named inventor on the ‘184 patent; (2) Mr. Levi is a named author of the Levi
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`Reference; (3) “On information and belief, Mr. Levi knowingly failed to disclose the Levi
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`Reference with a specific intent to deceive the USPTO;” (4) “As a listed author of the Levi
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`Reference, Mr. Levi was unquestionably aware of the Levi Reference;” (5) “On information and
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`3 ADI also cites to portions of patent prosecution demonstrating the materiality of the Levi Reference. (D.I. 71 at 11-
`12). While I may take judicial notice of the patent prosecution on a motion to strike, ADI may not introduce new
`allegations by citing to this material in order to supplement its pleading.
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`5
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`Case 1:19-cv-02225-RGA Document 197 Filed 02/09/21 Page 6 of 7 PageID #: 13651
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`belief, Mr. Levi—a named inventor on the ’184 patent and a named author on the Levi
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`Reference—would have recognized the materiality of the Levi Reference to the prosecution of
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`the ’184 patent;” (6) “On information and belief, Mr. Levi nevertheless made the decision to
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`withhold the Levi Reference from the USPTO.” (D.I. 54 at ¶¶ 12-14).
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`Xilinx argues that ADI’s argument is predicated entirely on Levi’s knowledge of the
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`omitted document, which is inadequate as matter of law. (D.I. 61 at 9). In support, Xilinx cites
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`Bayer Cropscience wherein a named inventor failed to disclose a reference he co-authored to the
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`PTO. (Id., citing Bayer Cropscience v. Dow Agrosciences LLC, 2012 WL 1253047, at *4 (D.
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`Del. Apr. 12, 2012) (finding insufficient evidence of specific intent)). ADI argues that Bayer
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`Cropscience is distinct because there the omitted reference was published after the application
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`was submitted. (D.I. 71 at 14 n.6). While I agree that the timeline is more favorable to ADI in
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`this case, ADI’s allegations align with those rejected in Therasense. “Proving that the applicant
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`knew of a reference, should have known of its materiality, and decided not to submit it to the
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`PTO does not prove specific intent to deceive.” Therasense, 649 F.3d at 1290. Without more,
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`ADI’s allegations fail to provide facts from which the court can reasonably infer specific intent.4
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`In the alternative, ADI requests leave to amend its pleadings. (D.I. 71 at 15). Xilinx
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`argues that any amendment would be futile and that ADI forfeited the right to amend when it
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`declined a previous opportunity to amend its pleading. (D.I. 73 at 9). I disagree. ADI has pointed
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`to material in the prosecution history that indicates that it may be possible to cure its pleading.
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`4 While Exergen, not Therasense, provides the standard for pleading inequitable conduct, it remains that ADI’s
`pleading is insufficient if it fails state a claim under the law as articulated by Therasense. See Wyeth Holdings Corp.
`v. Sandoz, Inc., 2012 WL 600715, *12 (D. Del. Feb. 3, 2012) (declining to apply the “single most reasonable
`inference” standard from Therasense at the pleading stage).
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`6
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`(See, e.g., D.I. 71 at 9-10, 11-12). Xilinx cites no authority supporting its theory that declining to
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`amend at the request of opposing counsel5 is evidence of a dilatory motive. (D.I. 61 at 10-11).
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`IV. CONCLUSION
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`Xilinx’s motion to strike ADI’s affirmative defense of inequitable conduct (D.I. 60) is
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`GRANTED with leave to amend.
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`IT IS SO ORDERED this 9th day of February 2021.
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`/s/ Richard G. Andrews
`United States District Judge
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`5 On April 30, 2020 Xilinx advised ADI that it would move to strike its affirmative defense and proposed that ADI
`amend its pleading by May 8, 2020 in order to avoid motion practice. (D.I. 62, Ex. A at 1-2).
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`7
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