Wednesday, May 22, 2013

Failure to Disclose Parent Patent Lawsuits Insufficient for Inequitable Conduct Claim

The court granted defendant's motion to dismiss plaintiff's inequitable conduct claims that were based on a failure to disclose prior parent patent lawsuits. "[Plaintiff's complaint] alleges that '[t]he district court [in the [parent] litigation] construed terms in the [parent] Patent that are also present in the [patents-in-suit].' [Plaintiff's] Third Amended Complaint includes no explanation, however, of which terms in the [parent] Patent the court construed, or of how the court’s construction of those terms relates to the PTO’s decision to issue the [patents-in-suit]. That omission is fatal in light of [Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009)]'s requirement that the pleadings 'explain both ‘why’ the withheld information is material and . . . ‘how’ an examiner would have used this information in assessing the patentability of the claims.’”

CoStar Realty Information, Inc. v. CIVIX-DDI, LLC, 1-12-cv-04968 (ILND May 15, 2013, Order) (Holderman, J.).

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