Case 2:20-cv-11177-JWH-GJS Document 92 Filed 02/22/22 Page 1 of 8 Page ID #:658

1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 FOR THE CENTRAL DISTRICT OF CALIFORNIA 10 11 BENCHMADE KNIFE CO., INC., Case No. 2:20-cv-11177-JWH-GJSx

12 Plaintiff,

MEMORANDUM OPINION AND

13 v. ORDER ON PLAINTIFF’S

MOTION TO STRIKE

14 HOGUE, INC. and AFFIRMATIVE DEFENSE OF

HOGUE TOOL & MACHINE, INC., INEQUITABLE CONDUCT [ECF

15 No. 77] Defendants. 16 17 18 19 20 21 22 23 24 25 26 27 28 Case 2:20-cv-11177-JWH-GJS Document 92 Filed 02/22/22 Page 2 of 8 Page ID #:659

1 Before the Court is the motion of Plaintiff Benchmade Knife Co., Inc. to 2 strike the affirmative defense of inequitable conduct asserted by Defendants 3 Hogue, Inc. and Hogue Tool & Machine, Inc. (jointly, “Hogue”), pursuant to 4 Rule 12(f) of the Federal Rules of Civil Procedure.1 The Court finds this matter 5 appropriate for resolution without a hearing. See Fed. R. Civ. P. 78; L.R. 7-15. 6 After considering the papers filed in support and in opposition,2 the Court 7 DENIES the Motion for the reasons set forth below. 8 I. BACKGROUND 9 Benchmade Knife is the assignee of the U.S. Design Patent No. 686,900 10 (the “D’900 Patent”), entitled “Knife Blade.”3 Michael Ohlrich is the named 11 inventor on the D’900 Patent.4 The application for the D’900 Patent was filed 12 on May 21, 2012, and it issued July 30, 2013.5 The D’900 Patent claims priority 13 to Patent Application No. 29/394,650, which was filed on June 20, 2011, and is 14 now abandoned.6 The D’900 Patent includes a single claim for “the ornamental 15 design for a knife blade, as shown and described.”7 Figures 1 and 2 reproduced 16 below depict “upper perspective view of the right side [and left side of] a knife 17 blade illustrating [the claimed] design,” respectively:8 18 19

20 1 Pl. Benchmade Knife Co., Inc.’s Mot. to Strike Affirmative Defense of Inequitable Conduct (the “Motion”) [ECF No. 77]. 21 2 The Court considered the following papers: (1) Answer to Am. Compl. (the “Answer”) [ECF Nos. 72 & 73 (sealed version)]; (2) the Motion (including 22 its attachments); (3) Defs.’ Opp’n to the Motion (the “Opposition”) [ECF No. 83]; (4) Pl.’s Reply in Supp. of the Motion (including its attachments) (the 23 “Reply”) [ECF No. 87]. 24 3 See D’900 Patent [ECF No. 60-1]; D’900 Patent Assignment [ECF No. 75-3]. 25 4 See D’900 Patent. 26 5 Id. 6 Id. 27 7 Id. 28 8 Id. -2- Case 2120-cv-11177-JWH-GJS Document 92 Filed 02/22/22 Page 3of8 Page ID #:660

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13 14 15 Il. LEGAL STANDARD 16|| A. Rule 12(f)— Motion to Strike 17 Under Rule 12(f), the Court may strike “any insufficient defense or any 18 || redundant, immaterial, impertinent or scandalous matter.” 19|| Fed. R. Civ. P. 12(f). “The essential function of a Rule 12(f) motion is to ‘avoid 20 || the expenditure of time and money that must arise from litigating spurious 21 || issues by dispensing with those issues prior to trial.’” Bureerong v. Uvawas, 922 22)|| F. Supp. 1450, 1478 (C.D. Cal. 1996) (quoting Fantasy, Inc. v. Fogerty, 984 F.2d 23|| 1524, 1527 (9th Cir. 1993), overruled on other grounds, 510 U.S. 517 (1994)). 24 || When ruling on a Rule 12(f) motion to strike, the Court must view the pleading 25|| in the light most favorable to the nonmoving party. See RDF Media Lid. v. Fox 26 || Broad. Co., 372 F. Supp. 2d 556, 561 (C.D. Cal. 2005). “Motions to strike an 27\| affirmative defense are generally disfavored, but the court may properly grant 28 || them when the defense is insufficient as a matter of law.” Multimedia Patent Tr. -3-

Case 2:20-cv-11177-JWH-GJS Document 92 Filed 02/22/22 Page 4 of 8 Page ID #:661

1 v. Microsoft Corp., 525 F. Supp. 2d 1200, 1211 (S.D. Cal. 2007) (citations 2 omitted). 3 B. Rule 9(f)—Pleading Inequitable Conduct 4 “Inequitable conduct is an equitable defense to patent infringement that, 5 if proved, bars enforcement of a patent.” Therasense, Inc. v. Becton, Dickinson & 6 Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011). Rule 9(b) governs inequitable 7 conduct claims. Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 8 (Fed. Cir. 2009). “Rule 9(b) requires that in all averments of fraud or mistake, 9 the circumstances constituting fraud or mistake shall be stated with 10 particularity.” Id. (internal quotation marks and bracket omitted). To meet that 11 standard, the Federal Circuit (like other circuits) requires the pleading party to 12 identify “the specific who, what, when, where, and how of the material 13 misrepresentation or omission committed before the PTO.” Id. at 1327. 14 Thus, a well-pleaded claim for inequitable conduct must allege facts 15 supporting that “(1) an individual associated with the filing and prosecution of a 16 patent application made an affirmative misrepresentation of a material fact, 17 failed to disclose material information, or submitted false information; and 18 (2) the individual did so with a specific intent to deceive the PTO.” Id. at 1327 19 n.3. “A pleading that simply avers the substantive elements of inequitable 20 conduct, without setting forth the particularized factual bases for the allegation, 21 does not satisfy Rule 9(b).” Id. at 1326-27. 22 With respect to materiality, “[w]here a patent applicant fails to disclose 23 prior art to the PTO, the prior art is but-for material if the PTO would not have 24 allowed a claim had it been aware of the undisclosed prior art.” Therasense, 649 25 F.3d at 1292. 26 27 28 -4- Case 2:20-cv-11177-JWH-GJS Document 92 Filed 02/22/22 Page 5 of 8 Page ID #:662

1 III. DISCUSSION 2 A. Summary of Arguments 3 Benchmade Knife moves to strike Hogue’s affirmative defense of 4 inequitable conduct. According to Benchmade Knife, “Hogue’s allegations of 5 inequitable conduct, which meander for pages, obfuscate what is missing, and 6 fail to satisfy virtually every requirement of Rule 9(b).”9 For the “who” 7 requirement, Benchmade Knife asserts that “Hogue vaguely points to a panoply 8 of actors,” including “Mentor, Benchmade, their employees [including Dave 9 Maxey and Jason Boyd], their patent attorneys, and/or others associated with 10 the filing and prosecution of the patent application for the D’900 Patent,” 11 which Benchmade Knife argues is insufficient.10 Benchmade Knife also 12 contends that Hogue fails to plead with sufficiency the “what” and “where” 13 requirements—Benchmade Knife asserts that the allegedly withheld prior art 14 information was disclosed to the PTO—and that “Hogue has failed to include a 15 single image of any knife in its pleading.”11 Additionally, Benchmade Knife 16 argues that Hogue cannot satisfy the “why” and “how” requirements because 17 the alleged withheld prior art is both immaterial and cumulative to the photos 18 already produced to the PTO.12 Finally, Benchmade Knife asserts that “Hogue 19 has failed to plead sufficient facts from which an intent to device the Patent 20 Office can be reasonably inferred.”13 21 Hogue responds that it “has pled the ‘who, what, when, where and how’ 22 of Plaintiff’s material omission of the reverse side of the Beshara Orcinas 23 24

25 9 See Motion 15:12-14. 26 10 See id. at 15:16-17:23. 11 See id. at 17:24-19:14. 27 12 See id. at 19:15-21:11. 28 13 See id. at 21:12-22:25. -5- Case 2:20-cv-11177-JWH-GJS Document 92 Filed 02/22/22 Page 6 of 8 Page ID #:663

1 knife.”14 For the “who” requirement, Hogue argues that it specifically alleged 2 that Jason Boyd and Dave Maxey “knew the Beshara Orcinas knife was designed 3 with opposing bevels, and deliberately withheld that information from the PTO 4 with intent to deceive.”15 Hogue asserts that whether “Messrs. Boyd and 5 Maxey’s supervisory responsibilities and roles in selecting images for the 6 D’900 Patent application” established that they each owed a duty to the PTO is 7 “a question of fact that must be resolved in favor of the non-moving party at the 8 pleading stage.”16 9 With respect to the “what” and “where” requirements, Hogue cites its 10 allegations that Benchmade Knife’s “use of a cropped and blurry image of the 11 Beshara Orcinas knife design ‘would and did mislead the USPTO during its 12 examination of the patent claim to erroneously conclude that the D’900 Patent’s 13 sole claimed novel feature of opposing bevels on the blade was not anticipated 14 and made obvious by prior art.’”17 Hogue asserts that those same allegations 15 meet the “why” and “how” requirements as well and that an uncropped and 16 undistorted image of the Beshara Orcinas knife would have been both material 17 and non-cumulative of the prior art submitted to the PTO.18 Finally, Hogue 18 maintains that the allegations that Benchmade Knife intentionally submitted a 19 cropped and distorted image of the Beshara Orcinas knife creates a plausible 20 inference that Benchmade Knife did so with intent to deceive the PTO.19 21 22 23 14 See Opposition 10:20-11:2. 24 15 Id. at 11:10-12:2 (citing Answer 9:14-17). 25 16 See id. at 12:12-13:4 (citing CertusView Techs, LLC v. S&N Locating Servs., LLC. 198 F. Supp. 568, 597 (E.D. Va. 2016); Summit 6 LLC v. Research in Motion 26 Corp., 2013 WL 12124321, at *1 (N.D. Tex. June 26, 2013)). 17 Id. at 14:5-14 & 15:8-16:4 (citing Answer 8:17-20 & 9:14-19). 27 18 See id. at 16:10-17:16. 28 19 See id. at 18:14-20:15. -6- Case 2:20-cv-11177-JWH-GJS Document 92 Filed 02/22/22 Page 7 of 8 Page ID #:664

1 Benchmade Knife replies that Hogue’s allegations fail to show that Hogue 2 never alleged that Boyd and Maxey “saw the back side of [the Beshara Orcinas] 3 knife, whether in person, as a prototype, or in a photograph.”20 According to 4 Benchmade Knife, “Mr. Beshara’s website has a picture only of the front of that 5 knife” and includes several knives without opposing bevels.21 6 B. Analysis 7 The Court finds that Hogue sufficiently pleaded its affirmative defense of 8 inequitable conduct. In its Reply, Benchmade Knife no longer disputes that 9 Hogue’s allegations satisfy the “what,” “when,” “where,” “why,” “how,” 10 and intent to deceive requirements.22 Instead, Benchmade Knife focuses its 11 argument on Hogue’s failure to allege that Boyd and Maxey ever saw the back of 12 the Beshara Orcinas knife. Contrary to Benchmade Knife’s assertion, however, 13 Hogue expressly avers that “Mr. Boyd met Mr. Beshara while attending at least 14 one trade show and received from Mr. Beshara a set of wooden mock-ups or 15 prototypes of his” “Opposing Bevel” design.23 Thus, Hogue has sufficiently 16 alleged the “who” requirement for its inequitable conduct defense. 17 18 19 20 20 Reply 1:5-6. 21 21 See id. at 1:7-14. 22 22 Regarding Benchmade Knife’s initial disputes, the Court notes that the Federal Circuit has found that “[p]artial disclosure of material information 23 about the prior art to the PTO cannot absolve a patentee of intent if the disclosure is intentionally selective.” Am. Calcar, Inc. v. Am. Honda Motor Co., 24 768 F.3d 1185, 1190 (Fed. Cir. 2014). 23 Answer 7:10-16. Additionally, Beshara’s website—of which both parties 25 agree the Court may take judicial notice—includes a rotating knife with what appears to be the opposing bevel design and a tab titled “BESH WEDGE,” 26 which defines “BESH Wedge” as “a revolutionary knife grind composed of diagonally opposing bevels converging to create a third cutting edge.” See 27 Motion 5 n.2 (citing http://www.beshknives.com/gallery_category.php?newCategoryID=68 (last 28 accessed February 19, 2022)); Opposition 3 n.2. -7- Case 2120-cv-11177-JWH-GJS Document 92 Filed 02/22/22 Page 8of8 Page ID #:665

1 IV. CONCLUSION 2 For the foregoing reasons, the Court hereby DENIES the Motion. 3 IT IS SO ORDERED. : VY 5|| Dated: February 22, 2022

6 GRITED STATES DISTRICT JUDGE 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -8-