The court denied in part plaintiffs' motion to dismiss defendants' inequitable conduct defenses for failing to plead that the undisclosed references were not cumulative. "Plaintiffs . . . Argue that the affirmative defense and counterclaim . . . Merit dismissal because Defendants do not allege why the omitted references . . . Are not cumulative of any other prior art, as required by [Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009)]. . . . This Court does not read Exergen as imposing a strict requirement that pleadings include the word 'non-cumulative' in order to plead inequitable conduct with the requisite particularity. . . . In light of Rule 9(b)’s goals, the pertinent inquiry on Plaintiffs’ motion to dismiss is not whether Defendants used certain magic words, but whether Defendants pled the who, what, when, where, why, and how of the allegedly material omissions in sufficient detail to give Plaintiffs fair notice of the basis for their inequitable conduct claims. With respect to materiality and non-cumulativeness, the pleading must put Plaintiffs on notice as to what information Defendants contend should have been before the examiner but wasn’t and how that information would have changed the examiner’s decision regarding the patentability of the claims in the [patent-in-suit]."
Bone Care International LLC et al v. Pentech Pharmaceuticals, Inc., 1-08-cv-01083 (ILND April 23, 2010, Memorandum Opinion & Order) (Dow, J.)