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Inequitable Conduct Defense Dismissed, With Leave to Replead Consistent with Exergen

By Michael C. Smith

ACQIS LLC v. Appro International, Inc. et al, 6:09cv00148 (E.D. Tex. 7/22/10)

Holding: Motion to Strike Pleading GRANTED

Judge: Leonard Davis

Plaintiff sought an order striking defendants' inequitable conduct defense.  Judge Davis denied the motions to dismiss under FRCP 12(b)(6) and for judgment on the pleadings under 12(c), but granted the motion to strike the inequitable conduct defense with leave to replead within fifteen days. 

"Taken as whole," the Court wrote, "Defendants' allegations of inequitable conduct fail to satisfy the pleading requirements of Rule 9(b) as set forth in Exergen [Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009)]. Specifically, Defendants' pleadings fail to satisfy the 'what' requirement-that is, 'the pleading[s] fail[] to identify which claims, and which limitations in those claims, the withheld references are relevant to' .  Although Defendants' briefing includes an attachment comparing the rejected elements in the [Office Action of the patent-in-suit] with the elements of exemplary claims of the patents-in-suit . . . greater specificity is required within Defendants' actual pleadings."  (Internal citation omitted).

Judge Davis also observed that "although ACQIS also asserts various other grounds to dismiss Defendants? inequitable conduct allegations, the proper focus at this stage of the litigation is on the sufficiency of Defendants? pleadings under the Federal Rules, rather than the merits of Defendants? claims.  ACQIS will have an opportunity to re-urge its challenges to Defendants? inequitable conduct case at the dispositive motion stage or at trial."

From Docket Navigator

Full post as published by Eastern District of Texas Federal Court Practice on July 26, 2010 (boomark / email).