By Eric Schweibenz
On December 7, 2009, ALJ Robert K. Rogers, Jr. issued Order No. 21 in Certain Bulk Welding Wire Containers and Components Thereof and Welding Wire (Inv. No. 337-TA-686).  In the Order, ALJ Rogers granted-in-part and denied-in-part a motion filed by Complainants The Lincoln Electric Company and Lincoln Global, Inc. (collectively, “Lincoln”) to strike the Seventh Affirmative Defense of Respondent Sidergas SpA (“Sidergas”).

In support of its motion, Lincoln argued that the inequitable conduct defense set forth in Sidergas’ response to Lincoln’s complaint was inadequate under the Federal Circuit’s recent decision in Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009), because Sidergas “fail[ed] to include sufficient detail to meet the heightened pleading standard of Fed. R. Civ. P. 9(b).”  In opposition, Sidergas argued that its inequitable conduct pleading satisfied the standard in Exergen and that Lincoln’s motion should be denied because it sought to strike other claims that were raised simultaneously with Sidergas’ inequitable conduct claim, including patent misuse, fraud on the U.S. Patent and Trademark Office, and infectious unenforceability.  Alternatively, Sidergas argued that if its pleading was deficient it should be afforded the opportunity to add sufficient detail.  The Commission Investigative Staff opposed Lincoln’s motion stating that Lincoln failed to demonstrate that Sidergas’ inequitable conduct defense did not comply with Commission Rule 210.13(b), and that Sidergas should be given the opportunity to amend its pleading to satisfy any alleged deficiencies.

In the Order, ALJ Rogers determined that “in cases in which inequitable conduct is raised as an affirmative defense, it is appropriate to require a level of pleading equal to the level required by Fed. R. Civ. P. 9(b).”  While determining that the purposes of Rule 9(b), such as providing adequate notice and deterrence are equally important in Section 337 proceedings as they are in district court actions, ALJ Rogers found that “there is good cause to require the heightened pleading requirement of Fed. R. Civ. P. 9(b) when a respondent pleads an affirmative defense of unenforceability based on inequitable conduct.”

According to the Order, ALJ Rogers granted-in-part Lincoln’s motion finding that Sidergas’ inequitable conduct pleading failed to meet the standard described in Exergen.  Specifically, regarding certain prior art, ALJ Rogers determined that Sidergas failed (i) to adequately identify any individual involved in the prosecution of the patent-in-issue who allegedly had specific knowledge of the prior art and failed to disclose it during prosecution; (ii) to provide “necessary detail regarding how an examiner would have used the [prior art] in assessing the patentability of the claims”; and (iii) to allege any specific intent to deceive.  Further, ALJ Rogers declined to allow Sidergas the opportunity to amend its response stating that if Sidergas wished to do so, it must file a motion pursuant to Commission Rule 210.14(b)(2).