United States District Court, D. New Jersey
January 6, 2005.
SAINT-GOBAIN PERFORMANCE PLASTICS CORPORATION, HCM DIVISION, Plaintiff,
TRUSEAL USA, INC. and STEPHEN RONALD WARBURTON-PITT, Defendant.
The opinion of the court was delivered by: JOEL PISANO, District Judge
Saint-Gobain Performance Plastics Corporation, HCM Division
("Saint-Gobain" or "Plaintiff") filed a Complaint with this
Court*fn1 on August 6, 2004, alleging that Truseal USA, Inc.
("Truseal") and its owner and president Stephen Ronald
Warburton-Pitt ("Warburton-Pitt") (collectively "Defendants")
infringed a patent owned by Saint-Gobain. Defendants separately
filed answers but both raised defenses and counterclaims
challenging the validity of the patent. Plaintiff, invoking the
doctrine of assignor estoppel, now moves pursuant to Federal
Rules of Civil Procedure 12(f) and 12(b)(6) to strike and to
dismiss Defendants' affirmative defenses and counterclaims that
challenge validity. This Court has jurisdiction under 28 U.S.C.
1331 and 1338.*fn2 For the reasons expressed below, the
Court grants Plaintiff's motions.
I. Factual History
Saint-Gobain, generally, is in the business of selling products
such as tubing, fittings, and manifolds. Warburton-Pitt is a
former employee of Sani-Tech and Nalge Nunc International
Corporation ("NNIC"), both predecessors-in-interest of
Saint-Gobain. As an employee of Sani-Tech, Warburton-Pitt entered
into a Patent and Trade Secret Agreement in which he agreed to
"fully disclose to [Sani-Tech] any and all inventions conceived
or made by [him] or jointly with others along the lines of
[Sani-Tech]'s work, investigations or interests while in its
employ." Warburton-Pitt further agreed to "assign to [Sani-Tech],
its successors and assigns, all such inventions and any and all
patents thereon." The agreement was made "in consideration of
[his] employment and continued employment by Sani-Tech and the
salary to be paid to [him]. . . ."
Not long thereafter Warburton-Pitt and Rick Alan Steele
("Steele") jointly invented "a new and improved Tubing and
Connector Assembly and Method of Molding" and together they
executed an Assignment of Invention and Patents Thereon
("Assignment") to NNIC on August 4, 1997. The Assignment states
NOW, THEREFORE, to all whom it may concern, be it
known that, for and in consideration of the sum of
One Dollar to us in hand paid, and other good and
valuable consideration, the receipt of which is
hereby acknowledged, we have sold, assigned and
transferred, and by these presents do sell, assign
and transfer unto the said [NNIC] our entire right,
title and interest in and to the subject-matter
disclosed in said application and in and to all
Letters Patent Domestic and Foreign issued or to be
obtained thereon, including all rights and interests
with priority rights under the Paris Convention for
the Protection of Industrial Property, the
International Patent Cooperative Union, European
Patent Convention, Common Market Convention, or any
other Convention or Union for each country of said
Convention or Union; and we hereby authorize and
request the Commissioner of Patents to issue the
Letters Patent granted on said application and all
future patents granted upon the subject-matter
disclosed therein to the above named Assignee, its
legal representatives and assigns.
On the same day, Warburton-Pitt and Steele executed a
Declaration, Power of Attorney, and Petition in which they
declared under oath that they were the "original, first and joint
inventor of the subject matter which is claimed and for which a
patent is sought on the invention entitled: Tubing and Connector
Assembly and Method of Molding." One week later NNIC filed a U.S.
Patent Application based on the representations, submissions and
assignment of Warburton-Pitt and Steele. The application was
approved as of September 18, 2001, and Patent Number U.S.
6,290,265 ("the '265 patent") was issued to Saint-Gobain as
Assignee. The '265 patent listed Warburton-Pitt and Steele as the
Warburton-Pitt resigned from Saint-Gobain in October 1999 and
founded Truseal, of which he is the sole owner and president.
Truseal is in the business of manufacturing and selling products
such as tubing, fittings, and manifolds. In its Complaint
Saint-Gobain alleged that Defendants infringed the '265 patent.
Defendants separately answered the Complaint but each claimed the
patent was invalid as their first affirmative defenses.
Additionally, Defendants separately made counterclaims seeking,
among other things, declaratory judgment that the '265 patent was
invalid and unenforceable. Saint-Gobain now moves to strike and
to dismiss Defendants' affirmative defenses and counterclaims
that allege the '265 patent is invalid. In their papers and at
the motion hearing, Defendants admitted that Saint-Gobain is
rightful assignee of the '265 patent and that Warburton-Pitt did
duly assign the '265 patent to Saint-Gobain through its
In regards to Defendants' affirmative defense invoking
invalidity, Plaintiff cites Federal Rule of Civil Procedure
12(f), which permits a court to "order stricken from any pleading
any insufficient defense or any redundant, immaterial,
impertinent, or scandalous matter." Correspondingly, Plaintiff
cites Rule 12(b)(6) in response to Defendants' counterclaims that
seek to declare the '265 patent invalid. Rule 12(b)(6) permits a
court to dismiss a complaint "for failure to state a claim upon
which relief can be granted." On a Rule 12(b)(6) motion, a court
will, as it must, accept as true all of the factual allegations
within the complaint and any reasonable inferences that may be
drawn from those allegations. Nami v. Fauver, 82 F.3d 63, 65
(3d Cir. 1996). "In considering a Rule 12(b)(6) motion, we do not
inquire whether the plaintiffs will ultimately prevail, only
whether they are entitled to offer evidence to support their
claims." Langford v. City of Atlantic City, 235 F.3d 845, 847
(3d Cir. 2000) (quoting Nami, 82 F.3d at 65). Claims will be
dismissed under Rule 12(b)(6) only if "it appears beyond doubt
that the plaintiff can prove no set of facts in support of his
claim which would entitle him to relief." Conley v. Gibson,
355 U.S. 41, 45-46 (1957); Nami, 82 F.3d at 65.
In support of its motions Plaintiff invokes the doctrine of
assignor estoppel, which "is an equitable doctrine that prevents
one who has assigned the rights to a patent (or patent
application) from later contending that what was assigned is a
nullity. The estoppel also operates to bar other parties in
privity with the assignor, such as a corporation founded by the
assignor." Diamond Scientific Co. v. Ambico, Inc.,
848 F.2d 1220, 1224 (Fed. Cir 1988); Mentor Graphics Corp. v. Quickturn
Design Systems, Inc., 150 F.3d 1374, 1377 (Fed. Cir. 1998).
Defendants argue that assignor estoppel "has been steadily
eroding" and is no longer a viable doctrine. Defendants rely on
Lear, Inc. v. Adkins, 395 U.S. 653 (1969) (disapproving the
doctrine of licensee estoppel); Scott Paper Co. v. Marcalus Mfg.
Co., 326 U.S. 249 (1945) (allowing the assignor to demonstrate
the accused devices are within the prior art so as avoid
infringement); and Westinghouse Elec. & Mfg. Co. v. Formica
Insulation Co., 266 U.S. 342 (1924) (permitting assignor to
explain the prior art so as to narrow the patent claims in light
of the assignment). Though these cases limit the doctrine, they
do not obviate it. More contemporary cases demonstrate that
assignor estoppel remains a sound doctrine, but not without
In Diamond Scientific, the plaintiff brought suit against a
former employee, Dr. Welter, and his corporation alleging patent
infringement. While an employee Dr. Welter invented a vaccine for
gastroenteritis in swine and filed a patent application, the
rights of which he assigned to plaintiff. Plaintiff eventually
was awarded three patents as result of the application. Dr.
Welter subsequently left plaintiff's employ and formed his own
company, which began manufacturing and selling a gastroenteritis
vaccine for swine. In response to plaintiff's patent infringement
action, Dr. Welter raised patent invalidity defenses and
Plaintiff moved to strike those defenses based on assignor
estoppel. The district court granted plaintiff's motion and the
Federal Circuit addressed "whether in this case the
assignor-inventor of the patents (or a company in privity with
him) can defend the infringement suit brought by the assignee by
challenging the validity of the patents previously assigned, or
whether the equitable doctrine of assignor estoppel prevents the
assignor from claiming that the patents are invalid."
848 F.2d at 1222.
The court began its analysis by noting that assignor estoppel
is the "functional equivalent of estoppel by deed," which is "a
form of legal, not equitable, estoppel." Id. at 1225.
However, the court explained it was not constrained by that
concept and later reiterated that assignor estoppel was an
equitable challenge, id. at 1227, but not so broad as to be
applied automatically.*fn3 Id. at 1225-26. The court
explained that "the primary consideration in now applying the
doctrine is the measure of unfairness and injustice that would be
suffered by the assignee if the assignor were allowed to raise
defenses of patent invalidity. Our analysis must be concerned
mainly with the balance of equities between the parties." Id.
at 1225. In weighing the equities the court found it significant
that Dr. Welter 1) assigned the rights to his inventions "for
valuable consideration (one dollar plus other unspecified
consideration presumably his salary over many years and other
employment benefits)," 2) "executed an inventor's oath, which
stated his belief, inter alia, that he was the first and sole
inventor . . .," and 3) actively participated in the patent
application process. Id. at 1225. The former two factors were
enough to support application of the doctrine and the materials
establishing the final factor, though unnecessary and outside the
pleadings, were properly considered "because of the equitable
nature of the estoppel doctrine." Id. at 1227. The court
explained that "[w]hen the inventor-assignor has signed the Oath,
Power of Attorney and Petition, which attests to his belief in
the validity of the patents, and has assigned the patent rights
to another for valuable consideration, he should be estopped from
defending patent infringement claims by proving that what he
assigned was worthless." Id. at 1226.
The court noted that it was irrelevant that Dr. Welter's patent
application was pending at the time of the assignment. Id. "The
fact is that Dr. Welter assigned the rights to his invention,
irrespective of the particular language in the claims
describing the inventions when the patents were ultimately
granted." Id. However, the court did note one possible
exception to assignor estoppel: If the assignee "broadened the
claims in the patent applications (after the assignments)" then
the assignor might be permitted "to introduce evidence . . . to
narrow the scope of the claims of the patents. . . ." Id.
(citing Westinghouse Elec. & Mfg. Co. v. Formica Insulation
Co., 266 U.S. 342, 350 (1924)).
In the case at hand, Warburton-Pitt, like Dr. Welter in
Diamond Scientific, represented that his invention had value.
Warburton-Pitt executed an inventor's oath in which he expressed
his belief that he was the first inventor of a new and novel
invention. He reiterated that belief in the Assignment to
Saint-Gobain and acknowledged receipt of valuable consideration
for his rights to the invention. According to Diamond
Scientific, 848 F.2d at 1226, these factors alone sufficiently
support application of assignor estoppel; any evidence that
Warburton-Pitt actively participated in the prosecution of the
patent application would only embolden the applicability of the
doctrine.*fn4 A balancing of the equities thus warrants the
application of assignor estoppel against both Warbuton-Pitt and
his company Truseal.*fn5
Although assignor estoppel now precludes Defendants from
challenging the validity of the '265 patent they are not without
a defense. "An estopped party may also argue for a narrow claim
construction or that the accused devices are within the prior art
and therefore cannot infringe." Mentor Graphics Corp.,
150 F.3d at 1379 (citing Westinghouse, 266 U.S. at 351; Scott Paper
Co., 326 U.S. at 257-58); see Diamond Scientific,
848 F.2d at 1226; see also Q.G. Products, Inc., 992 F.2d at 1214
(describing how to analyze whether a patent falls within the
bounds of an assignment).
For the reasons expressed above, Plaintiff's motion to strike
Defendants' affirmative defenses and to dismiss Defendants'
counterclaims that challenge the validity of the '265 patent is
granted. An appropriate order follows.
Before the Court is Plaintiff's motion to strike and to dismiss
Defendants' defenses and counterclaims that challenge the
validity of a patent in this infringement action. Having
considered the parties' written submissions and oral arguments in
this matter, and for the reasons expressed in the accompanying
opinion of January 6, 2005, and for good cause shown, IT IS
ORDERED that Plaintiff's motion to strike and to dismiss
Defendants' defenses and counterclaims that are based on patent
invalidity is GRANTED.