Opinion
No. 04 Civ. 1966 (DLC).
August 19, 2004
Anthony J. Viola, Andre K. Cizmarik, Edwards Angell, LLP, New York, New York, for the Plaintiff.
Edgar H. Haug, Jeffrey A. Hovden, Kevin Murphy, Frommer Lawrence Haug, LLP., New York, New York, for the Defendants.
MEMORANDUM OPINION AND ORDER
Plaintiffs Takeda Chemical Industries, Inc. and Takeda Pharmaceuticals, North America, Inc. ("Takeda") bring this action as one of four related actions against four sets of defendants, alleging similar claims for patent infringement and inducement of patent infringement. Defendants Alphapharm Pty, Ltd. and Genpharm, Inc. ("Alphapharm" or the "defendants") have asserted against Takeda an affirmative defense and counterclaim for "patent misuse." Takeda now moves to dismiss the counterclaim pursuant to Rule 12(b)(6), Fed.R.Civ.P., and to strike the affirmative defense pursuant to Rule 12(f), Fed.R.Civ.P.
The three other related actions are: Takeda Chemical Industries, Ltd. v. Ranbaxy Laboratories, Ltd., 03 Civ. 8250 (DLC); Takeda Chemical Industries, Ltd. v. Mylan Laboratories, Inc., 03 Civ. 8253 (DLC); and Takeda Chemical Industries, Ltd. v. Watson Pharmaceuticals, Inc., No. 03 Civ. 8254 (DLC).
The patent misuse doctrine seeks "to prevent a patentee from using the patent to obtain market benefit beyond that which inures in the statutory patent right." Monsanto Co. v. McFarling, 363 F.3d 1336, 1341 (Fed. Cir. 2004) (citation omitted). The key inquiry in evaluating a patent misuse defense, is "whether, by imposing conditions that derive their force from the patent, the patentee has impermissibly broadened the scope of the patent grant with anticompetitive effect." Id. (citation omitted). Patent misuse has been found in "tying" arrangements, such as when a patent licensor "conditions the license on a patent licensee's purchase of an unpatented material for use in the invention." Id. None of the other defendants in the related cases has asserted a defense or counterclaim for patent misuse against Takeda.
The relevant factual and statutory background underlying this lawsuit is detailed in an Opinion denying a related defendant's partial motion to dismiss. See Takeda Chemical Industries, Ltd. v. Watson Pharmaceuticals, Inc., No. 03 Civ. 8254 (DLC), 2004 WL 1259884, *1 (S.D.N.Y. June 9, 2004). Familiarity with that Opinion is assumed. For purposes of this motion, the only relevant facts are the statements contained in the defendants' pleadings. In their Answer, the defendants assert as an affirmative defense that Takeda's combination use patents are unenforceable "as a result of unclean hands and/or patent misuse." The defendants also interpose a counterclaim alleging patent misuse, which states,
Alpharpharm also partially moved to dismiss Takeda's complaint based on nearly identical arguments as were made by the defendants in the related case. Based on the analysis in the June Opinion, Alphapharm's motion was denied in an Order dated August 13, 2004.
"Upon information and belief, Plaintiffs' action in asserting the use patents were not taken in good faith, but rather were taken with the specific intent of extending patent rights beyond statutory limits."
Plaintiffs' action in asserting the use patents against [defendants] have had, and will have, an anti-competitive effect and in addition imposes an improper restraint on competition."Discussion
When considering a motion to dismiss, a court must take all facts alleged in the complaint as true and draw all reasonable inferences in favor of the plaintiff. Securities Investor Protection Corp. v. BDO Seidman, LLP, 222 F.3d 63, 68 (2d Cir. 2000); Jaghory v. New York State Department of Education, 131 F.3d 326, 329 (2d Cir. 1997). "Dismissal is inappropriate unless it appears beyond doubt that the plaintiff can prove no set of facts which would entitle him to relief." Raila v. United States, 355 F.3d 118, 119 (2d Cir. 2004); Securities Investor Protection Corp., LLP, 222 F.3d at 68. The parties agree that the standard on a motion to strike pursuant to Rule 12(f) is the same as the standard on a motion to dismiss pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure.
The parties dispute whether the defendants' allegations of patent misuse are governed by the liberal pleading standards of Rule 8(a), Fed.R.Civ.P., or by the particularized pleading requirements set forth in Rule 9(b), Fed.R.Civ.P. It is unnecessary to reach this issue, since the defendants' allegations fail to meet even the minimal requirements of notice pleading. See Swierkiewicz v. Sorema, N.A., 534 U.S. 506, 514 (2002). The defendants merely parrot the elements of a claim for patent misuse, without alleging even general facts to support that claim. Conclusory references to an "anti-competitive effect" and "improper restraint on competition" contained in the defendants' pleadings are not sufficient to give Takeda notice of the misconduct alleged.
Because the defendants' counterclaim for patent misuse does not meet Rule 8(a)'s pleading standards, it is not necessary to reach the other bases asserted by Takeda in support of its motion. The defendants do not separately defend the inclusion of patent misuse as an affirmative defense. Accordingly, it is hereby
ORDERED that Takeda's motion to dismiss the counterclaim and to strike the affirmative defense for patent misuse is granted.
SO ORDERED.