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