UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF TEXAS 

FORT WORTH DIVISION 

BRIDGESTONE AMERICAS TIRE 

OPERATIONS, LLC, 

Plaintiff,

v. No. 4:22-cv-0145-P

SPEEDWAYS TYRES LIMITED ET AL.,

Defendants.

MEMORANDUM OPINION & ORDER

Before the Court are Plaintiff’s Motion to Dismiss Defendants

Speedway Rubber Co. Ltd.’s, SWT Americas, SWT North American 

Operations, Speedways Tyres SWT Global Sales, and Route 66 Tire and 

Rubber’s (“SWT Defendants”) and Speedways Tyres Limited’s 

(collectively “Defendants”) Unenforceability Counterclaim Based on 

Inequitable Conduct and Strike the Corresponding Defense and Motion 

to Strike Certain Portions of Defendants’ Pleadings (ECF Nos. 88, 90, 

and 93, respectively).1 Defendants filed a collective response (ECF No. 

100). And Plaintiff filed a collective reply (ECF No. 110). Having 

considered the Motions, related docket entries, and applicable law, the 

Court GRANTS Plaintiff’s Motions. 

LEGAL STANDARD

A. Failure to State a Claim 

To survive a motion to dismiss for failure to state a claim under Rule 

12(b)(6) of the Federal Rules of Civil Procedure, a plaintiff’s complaint 

“must contain sufficient factual matter, accepted as true, to ‘state a 

claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 

662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 

1 Because Plaintiff’s Motions to Dismiss and Motions to Strike are substantively 

the same, the Court will only refer to ECF No. 88.

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(2007)). The Court accepts all well-pleaded facts as true, drawing all 

inferences in favor of and viewing all facts in the light most favorable to 

the nonmoving party. Club Retro, L.L.C. v. Hilton, 568 F.3d 181, 194 

(5th Cir. 2009).

B. Motion to Strike

Under Rule 12(f) of the Federal Rules of Civil Procedure, the Court

may strike “from a pleading an insufficient defense or any redundant, 

immaterial, impertinent, or scandalous matter.” FED. R. CIV. P. 12(f).

Striking a defense is a drastic remedy and is generally disfavored.

United States v. Coney, 689 F.3d 365, 379 (5th Cir. 2012). That said, 

striking “a defense is proper when the defense is insufficient as a matter 

of law.” Kaiser Aluminum & Chem. Sales, Inc. v. Avondale Shipyards, 

Inc., 677 F.2d 1045, 1057 (5th Cir. 1982). And the decision to do so is 

within the Court’s discretion. S.E.C. v. Cuban, 798 F. Supp. 2d 783, 787 

(N.D. Tex. 2011) (Fitzwater, J.).

ANALYSIS

A. Bridgestone’s Motion to Dismiss

Bridgestone moves to dismiss Defendants’ unenforceability 

counterclaim based on inequitable conduct and strike the corresponding 

defense. ECF No. 88 at 6–10. The basis of Defendants’ inequitable 

conduct claim is that Bridgestone failed to “disclose” three prior art 

documents to the Patent and Trademark Office (“PTO”) in an 

“intentional effort to hide the most relevant patent references among a 

sea of less relevant material” from the Examiner and that Bridgestone 

intentionally improperly identified the inventors during the prosecution 

of the application that resulted in the issuance of U.S. Patent No. 

9,873,291 (“the ’291 Patent”). ECF No. 88 at 8, 10.

Inequitable conduct is an equitable defense to patent infringement 

that, if proved, bars enforcement of a patent. Therasense, Inc. v. Becton, 

Dickinson & Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011). The elements of 

inequitable conduct are intent and materiality. Id. at 1287. For the 

latter, the Federal Circuit has held that “the materiality required to 

establish inequitable conduct is but-for materiality[,]” e.g., “[w]hen an 

applicant fails to disclose prior art to the PTO, that prior art is but-for 

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material if the PTO would not have allowed a claim had it been aware 

of the undisclosed prior art.” Id. at 1291.

The Federal Circuit explained that “‘inequitable conduct, while a 

broader concept than fraud, must be pled with particularity’ under Rule 

9(b).” Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. 

Cir. 2009) (quoting Ferguson Beauregard/Logic Controls, Div. of Dover 

Resources, Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1344 (Fed. Cir. 2003)).

The Federal Circuit also held that pleading inequitable conduct under 

Rule 9(b) “requires identification of the specific who, what, when, where, 

and how of the material misrepresentation or omission committed before 

the PTO.” Exergen, 575 F.3d at 1328 (emphasis added). The Federal 

Circuit further held that:

Moreover, although “knowledge” and “intent” may be 

averred generally, a pleading of inequitable conduct under 

Rule 9(b) must include sufficient allegations of underlying 

facts from which a court may reasonably infer that a 

specific individual (1) knew of the withheld material 

information or of the falsity of the material 

misrepresentation, and (2) withheld or misrepresented this 

information with a specific intent to deceive the PTO.

Id.

Bridgestone argues that Defendants’ inequitable conduct pleadings 

are deficient for five reasons: (1) “why” and “how”: they do not identify 

particular claim limitations that are absent from the record; (2) “what” 

and “where”: they fail to identify which claim limitations the withheld 

references are relevant to and where in those references the material is 

found; (3) “who”: it does not specifically name a person who defrauded 

the PTO, but only refers to “Plaintiff’s patent prosecution counsel”; (4) 

“but-for materiality”: Defendants’ pleadings contain “no substance 

whatsoever regarding ‘but-for materiality’ of the three references”; and 

(5) “intent to mislead”: Defendants only allege that prosecution counsel 

attempted to bury the Examiner with less relevant references, but that 

is insufficient to show that any person “acted with the requisite state of 

mind.” ECF No. 88 at 8–10. 

Defendants respond to each point as follows: (1) “who”: it is not 

necessary to identify the prosecution counsel by his proper name; (2) 

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“what”: prosecution counsel submitted over 150 patent references and 

50 other publications; (3) “when”: “when” is during prosecution and 

specific calendar dates are unnecessary; (4) “where”: submitting those 

references to the PTO; (5) “intent to mislead”: may be pled “generally” 

and, in this case, prosecution counsel knew of these references as they 

were cited in related patents; and (6) “but-for materiality”: the Examiner 

would have “lost sight of” the three material references “among a sea of 

less relevant material[,]” and “therefore would have been unlikely to 

have focused on them in deciding to issue the patent, which otherwise 

would not have issued.” ECF No. 100 at 5–6.

In its reply, Plaintiff responds to each point as follows: (1) “who”: it 

is insufficient to only refer to “Plaintiff’s patent prosecution counsel” at 

one of three law firms without further specificity; (2) “how”: Defendants 

do not attempt to rebut Bridgestone’s argument that their pleadings do 

not identify which claim limitations the withheld references are relevant 

to; (3) “what and where”: this requirement is not concerned with what 

counsel did or where references were submitted, but which claim 

limitations the withheld references are relevant to and where in those 

references the material is found; (4) “intent to mislead”: Defendants’ 

pleadings fail to address this factor; and (5) “but-for materiality”: 

Defendants’ argument that prosecution counsel “made what appears to 

be an intentional effort to hide the most relevant patent references 

among a sea of less relevant material,” is “rank speculation with no 

supporting facts, and unsupported by any legal authority.” ECF No. 110 

at 4–6.

For improper inventorship, Bridgestone points out that Defendants 

do not address this issue in their response. Id. at 6.

After reviewing the parties’ arguments and the applicable law, the 

Court concludes that Defendants have failed to adequately plead the 

elements required for inequitable conduct for four reasons.

First, Defendants fail to adequately plead “what and where.” The 

former focuses on which claim limitations the withheld references are 

relevant to, while the latter focuses on where in those references the 

relevant information is found. Exergen, 575 F.3d at 1329 (“the pleading 

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fails to identify which claims, and which limitations in those claims, the 

withheld references are relevant to, and where in those references the 

material information is found—i.e., the ‘what’ and ‘where’ of the 

material omissions.”). In other words, the “what and where” focuses on 

the asserted patent and the allegedly relevant prior art, not what 

counsel did or where references were submitted as Defendants argue. 

Second, Defendants’ “but-for materiality” allegation is insufficient 

because Defendants do not plead any facts that indicate that “but-for” 

the prosecuting attorney’s actions, “the PTO would [] have allowed a 

claim.” Therasense, 649 F.3d at 1291. Although Defendants argue the 

prosecuting attorney tried to hide the most relevant patent references 

among a sea of less relevant material, an applicant also has a duty to 

disclose “all information known to that individual to be material to 

patentability[.]” 37 C.F.R. § 1.56. In other words, Defendants’ 

allegations that the prosecuting attorney attempted to bury the 

Examiner with less relevant references is not persuasive because 

disclosure of hundreds of patents and publications is also entirely 

consistent with the Applicants fulfilling their duty to disclose “all 

information known . . . to be material to patentability[.]” Nor do 

Defendants allege any facts that the Examiner would not have allowed 

the claim upon reviewing these references. Because Defendants allege 

no other facts beyond what the Applicants had a duty to do or that the 

PTO would not have issued these claims otherwise, the Court concludes 

that the allegation in Defendants’ pleading on “but-for materiality” is 

inadequate.

Third, while “intent to mislead” may be pled “generally,” Defendants 

neither allege that the prosecuting attorney “withheld or 

misrepresented [the three prior art references] with a specific intent to 

deceive the PTO.” Exergen, 575 F.3d at 1328. More specifically, 

Defendants do not allege that the prosecuting attorney did not disclose 

the three references in question nor that the prosecuting attorney 

misrepresented their contents. Rather, the basis for Defendants’ “intent 

to mislead” allegation is that the prosecuting attorney attempted to hide

these three prior art references in a sea of less material references.

Because hiding references in a sea of other references is not 

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“with[olding] or misrepresent[ing]” prior art references and because 

Defendants do not provide any legal authority for the proposition that 

hiding material prior art references in a sea of other prior art references

satisfies the “intent to mislead” element, the Court concludes that 

Defendants’ allegation is inadequate.

Defendants’ allegations are also inadequate for the reasons related 

to the “but-for materiality.” As described above, because Defendants do 

not allege any facts beyond what the Applicants had a duty to do—let 

alone that would even generally show an intent to deceive—the Court 

concludes the allegation in Defendants’ pleading regarding “intent to 

deceive” is inadequate.

Fourth, concerning the incorrect inventorship allegation, Defendants

do not respond to Bridgestone’s arguments in its response. As a result, 

the Court concludes that Defendants have abandoned that particular

theory as a basis for their inequitable conduct allegation. Arkansas v. 

Wilmington Tr. Nat’l Ass’n, No. 3:18-CV-1481-L, 2020 WL 1249570, at * 

5 (N.D. Tex. Mar. 16, 2020) (Lindsey, J.) (“[f]ailure of a party to respond 

to arguments raised in a motion to dismiss constitutes waiver or 

abandonment of that issue at the district court level.”).

* * *

For the reasons above, the Court thus GRANTS Plaintiff’s Motion to 

Dismiss Defendants’ Unenforceability Counterclaim Based on 

Inequitable Conduct and Strike the Corresponding Defense (ECF Nos. 

88, 90, 93).

B. Bridgestone’s Motion to Strike

Bridgestone moves to strike specific passages in Defendants’ 

pleadings, under Rule 12(f), as “immaterial and/or impertinent

allegations that have nothing to do with patent infringement issue or 

any sufficiently-pleaded defense.” ECF No. 88 at 11.

A court should only grant a motion to strike “when the pleading to be 

stricken has no possible relation to the controversy.” Veranda Assocs., 

L.P. v. Hooper, 496 F. App’x 455, 458 (5th Cir. 2012) (quoting Augustus 

v. Bd. of Pub. Instruction, 306 F.2d 862, 868 (5th Cir. 1962)).

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Bridgestone argues that while Paragraph 10 (or Paragraph 11)2 in 

Defendants’ pleadings purports to relate to willful infringement, 

subsections d–f, j, k, m, and n are unrelated to this issue. ECF No. 88 at 

11. Rather, Bridgestone asserts that these subsections “describe 

Bridgestone’s alleged knowledge of the accused product and interactions 

between [Defendants] and Bridgestone relating to a potential 

commercial relationship, none of which is concerned with [Defendants’] 

knowledge of the patent or specific intent to infringe the ’291 Patent.” 

Id.

Bridgestone also argues that Paragraph 6 is dedicated to “making 

inflammatory allegations regarding Bridgestone’s patent filing and 

prosecution that are unrelated to any issue still pending in the current 

litigation[,]” and appear to be a leftover from Defendants’ patent-misuse 

arguments. Id. Defendants did not respond to this argument.

Defendants did, however, respond to Bridgestone’s arguments about

the subsections in Paragraph 10. They claim that these allegations are 

relevant as they “set out the ‘history of how and when the Accused 

Product’s design, manufacture, and consignment sales transpired before

being notified by [Bridgestone] of the patent and [Bridgestone’s] 

allegation of infringement, and the circumstances of that allegation 

being made” and whether this is an exceptional case. ECF No. 100 at 7 

(emphasis in Defendants’ brief). 

In its reply, Bridgestone argues that it is only seeking to strike the 

portions that are unrelated to willful infringement. Bridgestone 

contends that (1) “knowledge and acquisition of the accused product 

(subparagraphs d and e) and the timing of these events as it relates to 

the filing of the application leading to the asserted patent 

(subparagraph f) have nothing to do with Defendants’ specific intent to 

infringe,” and (2) “[i]interactions between [the parties] regarding a 

Request for Quote (subparagraphs j, k, and m) and “Bridgestone’s 

2 Paragraph 10 of Speedways Rubber Co. Ltd.’s First Amended Answer and 

Counterclaims, Paragraph 11 of SWT Defendants’ Second Amended Answer and 

Counterclaims, and Paragraph 11 of Speedways Tyres Ltd.’s Answer and 

Counterclaims.

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request for an organizational chart (subparagraph n) also have nothing

with Defendants’ intent to infringe. ECF No. 110 at 7–8.

After reviewing the parties’ arguments and the applicable law, the 

Court concludes that subsections d–f, j, k, m, and n in Paragraph 10 (or 

Paragraph 11) and Paragraph 6 in Defendants’ pleadings “ha[ve] no 

possible relation to the controversy.” Veranda, 496 F. App’x at 458. For 

Paragraph 10 (or Paragraph 11), subsections d–f, j, and m, and n all 

describe actions that Bridgestone took, which is irrelevant to the 

elements of Defendants’ willful infringement—(1) Defendants’ 

knowledge of the ’291 Patent or (2) Defendants’ specific intent to infringe 

the patent. The only remaining subsection, subsection k, describes that 

Defendants’ sent Bridgestone an “RFQ filled with sensitive, confidential 

details about [the Defendants].” While that subsection relates to an 

action Defendants took, it does not relate to either of the elements of 

willful infringement. For these reasons, the Court concludes that 

because subsections d–f, j, k, m, and n in Paragraph 10 (or Paragraph 

11) “ha[ve] no possible relation to the controversy[,]” they should be 

stricken.

For Paragraph 6, Defendants do not respond to Bridgestone’s 

arguments in its response. Thus, the Court concludes that Defendants 

have waived whether these paragraphs have a possible relation to the 

controversy. Wilmington Trust, No. 3:18-CV-1481-L, 2020 WL 1249570, 

at * 5 (“[f]ailure of a party to respond to arguments raised in a motion to 

dismiss constitutes waiver or abandonment of that issue at the district 

court level.”).

* * *

For the reasons above, the Court thus GRANTS Plaintiff’s Motion to 

Strike subsections d–f, j, k, m, and n in Paragraph 10 (or Paragraph 11) 

and Paragraph 6 (ECF Nos. 88, 90, 93).

CONCLUSION

Accordingly, the Court GRANTS-IN-PART ECF Nos. 88, 90, 93 as 

to Plaintiff’s Motion to Dismiss Inequitable Conduct and Motion to 

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Strike Certain Paragraphs and DENIES-IN-PART as to Plaintiff’s

Motion to Strike Prosecution Laches.

SO ORDERED on this 9th day of August 2023.

Mark T. Pittman

UNITED STATES DISTRICT JUDGE

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