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Eastern District of New York (E.D.N.Y.)
Judge Locke Adds Inequitable Conduct Counterclaim “To the Mix” in Patent and Trademark Case Against Dental Product Mixer
May 16, 2023
Lewis V. Popovski
On May 2, 2023, Judge Steven I. Locke (E.D.N.Y) granted Kettenbach GmbH & Co. KG and Kettenbach LP’s (together, “Kettenbach”) motion to bring a defense and counterclaim that a patent Kettenbach is alleged to have infringed is unenforceable due to inequitable conduct. See Sulzer Mixpac AG v. Kettenbach GmbH, No. 21-CV-6613, 2023 BL 148409 (E.D.N.Y. May 2, 2023).
Plaintiff Mixpac is the manufacturer of a proprietary patented system for mixing dental products, known as the Mixpac Cartridge Mixing System. Kettenbach manufactures dental materials and sells them in Mixpac’s cartridges. Kettenbach created a company, Xinial, that competes with Mixpac by selling mixing cartridges containing Kettenbach’s materials. Thenafter, Mixpac brought state and federal claims for patent and trademark infringement, false advertising, unfair competition, and deceptive trade practices. Mixpac alleged that Xinial infringes on its patent (the “‘578 Patent”), and that Kettenbach falsely advertised that the Xinial system uses less waste than the Mixpac system. Mixpac also alleges that Kettenbach intentionally misled customers by implying in advertisements that its system was the same as or compatible with the Mixpac system, and that the Xinial system infringes Mixpac’s trademark by using a logo that is confusingly similar to Mixpac’s.
Kettenbach moved to amend its answer to add a defense and counterclaim that the ‘578 Patent is unenforceable due to inequitable conduct, alleging that the inventor of the ‘578 Patent, Wilhelm A. Keller, knew of but intentionally failed to disclose prior art which would have caused Claim 1 of the ‘578 Patent to be rejected as obvious. Mixpac opposed the motion, arguing that amendment would be (1) belated, given that Kettenbach knew of the prior art at issue (the “Yu Reference”) for nine months before moving to amend, and (2) futile, given that Kettenbach had not pleaded inequitable conduct with particularity as required under Federal Rule of Civil Procedure 9(b).
Judge Locke granted Kettenbach’s motion to amend. He found that the motion was not belated because Kettenbach brought it before the parties’ agreed-upon deadline to amend pleadings in the scheduling order. He also found that amendment would not be futile because Kettenbach had pleaded intentional misconduct with particularity. Specifically, he found that Kettenbach’s proposed defense and counterclaim sufficiently alleged that (1) Keller failed to disclose the Yu Reference to the USPTO; (2) the Yu Reference would have been material information in the prosecution of the ‘578 Patent, and (3) Keller failed to disclose the Yu Reference with specific intent to defraud the USPTO, especially because the USPTO rejected a similar patent claim submitted by Keller as obvious in light of the Yu Reference. Op. 11-12 (citing Exergen Corp. v. Wal-Mart Stores, Inc, 575 F.3d 1312, 1327 n.3 (Fed. Cir. 2009). The Court found that Kettenbach’s defense and counterclaim was well-pleaded even though it used “and/or” language (“Keller and/or his prosecution counsel”). Although other cases have found “and/or” language to be insufficiently particular under Rule 9(b), Judge Locke found that here, the “allegations against Keller alone are sufficient under Rule 9(b) for an inequitable conduct claim.” Op. 11 (distinguishing cases).
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To learn more, please click here.
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The dispute concerned a retrospective scientific study sponsored by J&J that compared the real-world efficacy of both companies’ prostate cancer medications, concluding that J&J’s ERLEADA was associated with a reduction in overall risk of death approximately 50% greater than Bayer’s NUBEQA. Bayer alleged that the study was methodologically flawed, and that J&J’s publication of the study results therefore constituted “false advertising.” The statements at issue included a presentation given by the study authors at a medical...
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Onboarding Compliance Checklist
Before work can begin, employers must check an ever-growing number of compliance boxes:
Register to Do Business: Register your company in each state where you have employees (e.g., the local departments of tax, labor, state, etc.).
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New Hire Reporting:...
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To continue reading Daniel Lowenthal's article in The Bankruptcy Strategist, click here (a subscription may be required to view).
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To learn more, please click here.
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Geoffrey Potter to Speak at National Association of Boards of Pharmacy 122nd Annual Meeting
On Wednesday, May 13, Partner Geoffrey Potter will present a program at the National Association of Boards of Pharmacy's 122nd Annual Meeting on the illegal importation of pharmaceuticals by alternative funding programs for employer-sponsored health plans. He will open a panel presentation titled "The Increasing Complexity of the Supply Chain: Shining a Light on Alternative Funding Programs and Prescription Drug Facilitators/Non-Dispensing 'Pharmacies.'" He will speak about how millions of insured workers and their families are forced to use dangerous and illegal misbranded medications paid for by their healthcare plans and what pharmacy boards can do to stop it.
To learn more, please click here.
Firm News
Firm Secures Appellate Victory on Behalf of Brita Products Company
On April 16, 2026, the firm secured an appellate victory on behalf of Brita Products Company ("Brita"), a unit of The Clorox Company, in a putative class action challenging the labeling of Brita's water filtration products. The U.S. Court of Appeals for the Ninth Circuit upheld a lower court ruling dismissing the complaint, agreeing that the product labeling contained no misstatements and would not mislead a reasonable consumer.
Plaintiff originally sued Brita in the U.S. District Court for the Central District of California, alleging that certain representations on the products’ labels, such as “Cleaner, Great-Tasting Water,” implied that the filters fully remove all contaminants from tap water or reduce them to levels below lab detection limits. The district court granted Brita’s motion to dismiss...
Blog Post
Bankruptcy Court Denies Motions to Convert Case and to Appoint an Examiner
A bankruptcy judge has ruled that a debtor can satisfy the Bankruptcy Code’s rehabilitation standard by selling its assets as a going concern and thereby avoid conversion from chapter 11 to chapter 7. In the same decision, the court denied a motion seeking the appointment of what the movants called an “examiner with expanded powers.” In re Deqser, LLC, Case No. 25-10687, 2026 Bankr. LEXIS 1004 (Bankr. D. Del. Apr. 22, 2026).
The debtors operated a laundry business that serviced hotels located in New York City. The business suffered a downturn following an electrical fire at its facility as well as problems with its software. The debtors filed chapter 11 in early 2025.
During their case, the debtors lost about $200,000 a...
Blog Post
It’s All Relative: Judge Komitee Holds That an Infringing Sale Can Take Place at Multiple Times Both Before and After a Patent Issues
Judge Eric Komitee recently denied a motion to dismiss patent infringement claims accusing flood prevention products sold pursuant to a contract that was entered into before the patent issued but delivered and installed after issuance.
In 2013, plaintiff FloodBreak, LLC filed its patent application for a device that prevents flooding in subway systems. In 2016, while that application was pending, defendants T. Moriarty & Son, Inc. and James P. Moriarty, Jr. (collectively, “TMS”) contracted with the Metropolitan Transportation Authority (“MTA”) to supply flood-mitigation devices for the New York City subway. After the patent issued in 2017, FloodBreak sued TMS’s supplier and obtained a stipulated judgment that its devices infringe. FloodBreak then filed suit against TMS alleging infringement by TMS’s offer...
Blog Post
SEC Enforcement Results for FY 2025: “Unique Period of Transition”
The Securities and Exchange Commission issued a press release on April 7, 2026, announcing the agency’s enforcement results for transitional period under the new presidential administration.[1]
Describing FY 2025 as “a unique period of transition,” the statement pointed to a pulse of enforcement actions initiated between October and December 2024 [2] under outgoing SEC Chair Gary Gensler, critiquing the activity as “unprecedented rush” and the focus as an “aggressive pursuit of novel legal theories.”[3]. Current SEC Chair Paul S. Atkins described the shift as having “redirected resources toward the types of misconduct that inflict the greatest harm—particularly fraud, market manipulation, and abuses of trust.”[4]
During FY 2025, the SEC brought 303 standalone enforcement actions, a combination of civil suits and administrative procedures that...
Firm News
Firm Achieves Significant Lanham Act Win for Johnson & Johnson
On April 17, 2026, Patterson Belknap secured a significant victory for our clients, Johnson & Johnson and Janssen Biotech, Inc. (“J&J”), when the U.S. District Court for the Southern District of New York denied a preliminary injunction in a Lanham Act suit filed by Bayer HealthCare LLC (“Bayer”).
The dispute concerned a retrospective scientific study sponsored by J&J that compared the real-world efficacy of both companies’ prostate cancer medications, concluding that J&J’s ERLEADA was associated with a reduction in overall risk of death approximately 50% greater than Bayer’s NUBEQA. Bayer alleged that the study was methodologically flawed, and that J&J’s publication of the study results therefore constituted “false advertising.” The statements at issue included a presentation given by the study authors at a medical...
