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Motion to Dismiss Inequitable Conduct Defense for Failure to Satisfy FRCP 9 Denied

By Michael C. Smith

Mediostream, Inc. v. Microsoft, et al., 2:08cv369 (Oct. 27, 2010)

Judge: Chad Everingham

Holding: Motion to Dismiss Defendants' Inequitable Conduct Defense DENIED

Plaintiff sought to dismiss all Defendants? inequitable conduct affirmative defenses and counterclaims under Rule 12(f) and Rule 12(b)(6), respectively, for failure to comply with Rule 9.

The Court noted that the asserted patents are directed generally to digital video processing technology, and describe the conversion of digital video between formats and authoring of digital video to optical media.  In their answers to Plaintiff?s complaints, Defendants have asserted an inequitable conduct affirmative defense and counterclaim premised on several acts that Defendants allege constitute inequitable conduct. Specifically, Defendants allege that Plaintiff engaged in inequitable conduct by failing to disclose neoDVD, CAMpeg RT, Ulead, and Sonic Solutions prior art, failing to disclose prior rejections in related applications, failing to disclose cited references from related applications, and generally failing to disclose any material information to the patent office.

Judge Everingham reviewed the defendants' allegations regarding inequitable conduct and concluded that "Defendants have pled with particularity as required by Rule 9(b) and have met the heightened pleading standard of Exergen. For each individual alleged act of inequitable conduct, Defendants
have identified at least one individual knew of the withheld information and/or withheld the information, and supported those allegations with facts. Defendants? factual allegations are sufficient to infer a specific intent to deceive."

Full post as published by Eastern District of Texas Federal Court Practice on October 27, 2010 (boomark / email).