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International Business Machines Corp. v. The Priceline Group Inc.

United States District Court, D. Delaware

April 10, 2017

INTERNATIONAL BUSINESS MACHINES CORPORATION, Plaintiff/Counterclaim-Defendant,
v.
THE PRICELINE GROUP INC., KAYAK SOFTWARE CORPORATION, OPENTABLE, INC. AND PRICELINE.COM LLC, Defendants/Counterclaim-Plaintiffs.

REPORT AND RECOMMENDATION

          CHRISTOPHER J. BURKE UNITED STATES MAGISTRATE JUDGE.

         Pending before the Court in this patent case is a motion filed pursuant to Federal Rules of Civil Procedure 12(b)(6) and 12(f) by Plaintiff/Counterclaim-Defendant International Business Machines Corporation ("IBM"), seeking dismissal of Defendants'/Counterclaim-Plaintiffs' The Priceline Group, Inc., priceline.com LLC (collectively, "Priceline"), Kayak Software Corporation ("Kayak") and OpenTable, Inc.'s ("OpenTable") (collectively, "Defendants") Amended Counterclaims and to strike Defendants' Affirmative Defenses directed to inequitable conduct (the "Motion"). (D.I. 120) For the reasons that follow, the Court recommends that the Motion be GRANTED-IN-PART and DENIED-IN-PART.

         I. BACKGROUND

         A. Procedural History

         This is a patent case arising from IBM's allegations that Defendants infringe IBM's United States Patent Nos. 7, 631, 346 (the '"346 patent"), 5, 961, 601 (the '"601 patent"), 5, 796, 967 (the '"967 patent") and 7, 072, 849 (the '"849 patent") (collectively, the "Asserted Patents" or the "patents-in-suit"). IBM filed the action on February 9, 2015. (D.I.I) Chief Judge Leonard P. Stark has referred to the Court for resolution certain types of motions in the case, including the instant Motion. (D.I. 9; D.I. 125; D.I. 126; July 13, 2016 Order)

         Defendants each answered IBM's original Complaint on April 13, 2016, and therein each asserted an affirmative defense and counterclaim relating to inequitable conduct. (D.I. 77-80) In response, on May 23, 2016, IBM moved to dismiss those counterclaims and to strike the corresponding affirmative defenses. (D.I. 88) In response to that, Defendants each amended their Answers and Counterclaims on June 16, 2016. (D.I. 103-06)

         The Defendants' First Amended Answers and First Amended Counterclaims are nearly identical. Each include a nearly identical Fourteenth Affirmative Defense of Inequitable Conduct as to the '967 patent and the '849 patent ("Fourteenth Affirmative Defense"), as well as a nearly identical Ninth Counterclaim seeking a "Declaratory Judgment of Unenforceability of the '967 and '849 Patents Due to Inequitable Conduct" (the "Ninth Counterclaim"). (Id.; see, e.g., D.I. 103 at ¶¶ 65-66, 95-228)[1]

         IBM filed the instant Motion on July 5, 2016. (D.I. 120) Briefing on the Motion was complete as of August 1, 2016. (D.I. 149)

         B. Defendants' Inequitable Conduct-Related Defenses and Counterclaims

         As noted above, the inequitable conduct allegations at issue relate to the '967 patent and the '849 patent. The '967 patent application was filed on November 26, 1993 and the patent issued on August 18, 1998; the '849 patent application was filed on November 26, 1993 and the patent issued on July 4, 2006. (D.I. 1 at ¶¶ 29, 34; id., ex. A at 1; id., ex. B at 1; D.I. 121 at 5)

         In its Complaint, IBM alleges that the inventors of those two patents developed the patented technology as part of IBM's efforts to launch the PRODIGY online service ("Prodigy"), a forerunner to today's Internet, in the late 1980s. (D.I. 1 at ¶ 17) The inventors, as part of their work on Prodigy, developed allegedly novel methods for presenting applications and advertisements in an interactive service that would take advantage of the computing power of each user's personal computer ("PC"), and thereby reduce demand on host servers, such as those used by Prodigy. (Id. at ¶ 18) This technology, patented in the '967 patent and the '849 patents, is alleged to have been utilized in and embodied by Prodigy when it launched in the late 1980s. (Id. at ¶ 19; D.I. 103 at ¶ 105)

         In the Ninth Counterclaim, [2] Defendants explain that the '967 patent and the '849 patent are related patents that are divisions of an application that resulted in a common parent patent: non-asserted United States Patent No. 5, 347, 632 (the '"632 patent"). (D.I. 103 at ¶¶ 96-97) They allege that the earliest possible priority date that the '967 patent and the '849 patent can claim is July 15, 1988. (Id. at ¶ 98) Thus, they assert, any (1) public use of or (2) commercial offers to sell or (3) printed publications describing the claimed subject matter of those two patents, prior to July 15, 1987 (the "critical date"), would render the claimed subject matter invalid. (Id. at ¶¶ 98-104)

         Defendants allege that the technology that IBM describes as being patented in the '967 patent and the '849 patent (set out above) was initially developed by IBM's Trintex venture, which was an IBM venture with Sears and CBS. (Id. at ¶ 105) They then assert that IBM and Trintex, prior to July 15, 1987, [3] aimed to and did: (1) commercialize the Trintex technology through advertising (that is, through commercial offers to perform the processes claimed in the two patents at issue); (2) publicly used and disclosed the Trintex technology in sufficient detail to allow one of ordinary skill in the art make and use the patented invention; and (3) disseminated printed publications that allowed for the same. (Id. at ¶¶ 106-08, 114)

         With regard to the commercial offers referenced above, it is alleged that some of them resulted in the actual sale of advertising services. (Id. at ¶ 116) In total, these are said to have amounted to approximately $1.25 million in financial commitments from Trintex's initial advertising clients, made prior to June 15, 1987. (Id. at ¶ 150) Defendants allege that the named inventors of these patents "had knowledge of IBM's pre July 15, 1987 commercialization of Prodigy[, ]" but that "Trintex, IBM, the prosecuting attorneys, and the named inventors withheld these commercial offers for sale from the [United States Patent and Trademark Office, or 'PTO'] during the prosecution of the '967 Patent and the '849 Patent and related patents and applications." (Id. at ¶¶ 121-22) More specifically, Defendants' allege that prosecuting attorney Paul Scifo withheld, with the intent to deceive the PTO, information about these financial commitments. (Id. at ¶ 131) As one example of such conduct, it is alleged that Mr. Scifo intentionally drafted an October 21, 1994 Information Disclosure Statement ("Disclosure Statement") in such a way as to misleadingly "omit the details of any pre-July [15], 1987 commercialization of Prodigy to advertisers and, instead, focus [] solely on end-user purchases through the Prodigy system that occurred after July [15], 1987." (Id. at ¶ 154)

         Defendants also allege that Trintex and IBM published a number of articles (and also made public presentations) describing the technology at issue here, prior to July 15, 1987. The articles will be referred to as the "Trintex NEXIS Articles." (Id. at ¶ 126) It is alleged that these articles were unknown to the PTO until the Board of Patent Appeals and Interferences ("BPAI") independently located certain of them them during the prosecution of the '849 patent. (Id.) Defendants assert that (1) the BPAI recognized that the Trintex NEXIS Articles were material to patentability; (2) after locating the articles, the BPAI rejected numerous pending claims of what became the '849 patent in light of the articles; and (3) had the articles previously been disclosed to the PTO, the '967 patent would not have issued (since the articles anticipated the claimed subject matter of that patent or rendered it obvious). (Id. at ¶ 127) The BPAI thereafter expressed concern not only that the Trintex NEXIS Articles were not previously disclosed, but that their discovery '"raise[s] questions of what else may have been publicly disclosed or on sale that has not been disclosed to the [PTO, ]" (id. at ¶ 128), such as "what else was disclosed at the [public] presentations" that are described in those Trintex NEXIS articles, (id. at ¶ 129 (emphasis in original)). In response, it is alleged that IBM replaced its prosecuting attorney, Mr. Scifo, and filed a petition to expunge the BPAI's expressed concerns relating to these articles and public use from the file history. (Id. at ¶ 130)

         Defendants also assert that Mr. Scifo withheld other material information during "the prosecution of the '967 Patent, '849 Patent and related patents and applications[.]" (Id. at ¶ 161) For example, they allege that during prosecution of the '967 patent, Mr. Scifo had knowledge of United States Patent No. 4, 688, 167 ("Agarwal" or the "Agarwal reference"), a prior art reference that was allegedly material to the patentability of the '967 patent. (Id. at ¶¶ 161-63) Mr. Scifo became aware of the Agarwal reference in October 1997, when the examiner of the '849 patent application rejected certain claims in light of Agarwal. (Id. at ¶ 164) But despite having received that rejection several months before the '967 patent issued in 1998, Mr. Scifo did not disclose the Agarwal reference to the PTO during prosecution of the '967 patent. (Id. at ¶ 165)

         Additionally, it is alleged that Mr. Scifo "hid office actions rejecting similar claims in copending applications from the examiner of the '967 Patent with the intent of deceiving the [PTO]." (Id. at ¶ 167) More specifically, it is explained that the '967 patent and the '849 patent have similar claims, and thus, "information that is material to the patentability of one is material to the patentability of the other." (Id. at ¶ 172) However, the '967 patent and '849 patent applications were "examined by different examiners" at the PTO, and Mr. Scifo did not disclose to the examiner of one application the existence of the other application, and vice versa. (Id. at ¶¶ 171, 176-77, 188) Therefore, for example, Mr. Scifo did not disclose to the examiner of the '967 patent a number of office actions that rejected the '849 patent application's claims, though these office actions (including the one relating to the Agarwal reference) were issued prior to the issuance of the '967 patent. (Id. at ¶¶ 177-82) Defendants allege that by hiding the co-pending patent applications from the respective examiners, Mr. Scifo acted with "the intent of deceptively avoiding a double patenting rejection and extending IBM's monopoly power over the same invention for years longer than permitted by statute." (Id. at ¶ 185) And they claim that Mr. Scifo withheld and misrepresented this material information with the intent to deceive. (Id. at ¶ 194)

         It is also alleged that Mr. Scifo prosecuted United States Patent No. 5, 758, 072 (the '"072 patent"), [4] a related patent to the '967 patent, and one that contains claims that are "not patentably distinct" from claim 1 of the '967 patent. (Id. at ¶¶ 197-204) Mr. Scifo is alleged to have not disclosed to the examiner of the '967 patent application the existence of the '072 patent application, and vice versa (as again, the applications were examined by different examiners). (Id. at ¶¶ 200-01, 203) It is asserted that: (1) office actions rejecting the claims of the '967 patent application were material to the patentability of the '072 patent application (and vice versa), but that Mr. Scifo did not disclose any such office actions to the respective examiners; and (2) Mr. Scifo intentionally did not disclose the notice of allowance of the '967 patent to the examiner of the '072 patent, and because the claims of the co-pending applications covered the same subject matter, the '072 patent would not have issued but for Mr. Scifo's non-disclosure of the existence of the '967 patent. (Id. at ¶¶ 205-11) It is asserted that the inequitable conduct associated with '072 patent "stems in part from [Mr.] Scifo's handling of the co-pending '967 Patent application" and so his hiding of information regarding the '967 patent application from the examiner of the '072 patent application "creates an immediate and necessary relation between the inequitable conduct associated with the '072 Patent and the enforcement of the related '967 and '849 Patents." (Id. at ¶ 227) Thus, it is alleged that "the inequitable conduct associated with the '072 Patent renders the '967 and '849 Patents unenforceable under the doctrine of inequitable conduct." (Id.)

         II. STANDARD OF REVIEW

         A. Motion to Dismiss Under Rule 12(b)(6)

         When presented with a Rule 12(b)(6) motion to dismiss for failure to state a claim, a court conducts a two-part analysis. Fowler v. UPMC Shadyside, 578 F.3d 203, 210 (3d Cir. 2009). First, the court separates the factual and legal elements of a claim, accepting "all of the complaint's well-pleaded facts as true, but [disregarding] any legal conclusions." Id. at 210-11. Second, the court determines "whether the facts alleged in the complaint are sufficient to show that the plaintiff has a 'plausible claim for relief.'" Id. at 211 (quoting Ashcroft v. Iqbal, 556 U.S. 662, 679 (2009)). "A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Iqbal, 556 U.S. at 678 (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 556 (2007)). In assessing the plausibility of a claim, the court must "construe the complaint in the light most favorable to the plaintiff, and determine whether, under any reasonable reading of the complaint, the plaintiff may be entitled to relief." Fowler, 578 F.3d at 210 (quoting Phillips v. Cnty. of Allegheny, 515 F.3d 224, 233 (3d Cir. 2008)). As such, a well-pleaded complaint may not be dismissed simply because "it strikes a savvy judge that actual proof of [the alleged] facts is improbable, and that a recovery is very remote and unlikely." Twombly, 550 U.S. at 556 (internal quotation marks and citation omitted). Determining whether a claim is plausible is '"a context-specific task that requires the reviewing court to draw on its judicial experience and common sense.'" Fowler, 578 F.3d at 211 (quoting Iqbal, 556 U.S. at 679).

         B. Motion to Strike Under Rule 12(f)

         As was noted above, Defendants have asserted inequitable conduct in two substantively identical but procedurally distinct forms-as both an affirmative defense and as a counterclaim. Rule 12(b)(6) does not offer a mechanism for dismissing an affirmative defense, and instead refers only to "claim[s]." Fed.R.Civ.P. 12(b)(6). However, pursuant to Rule 12(f), the Court "may strike from a pleading an insufficient defense[.]" Fed.R.Civ.P. 12(f). When ruling on a motion to strike, the Court must construe all facts in favor of the nonmoving party and deny the motion if the defense is sufficient under law. Senju Pharm. Co., Ltd. v. Apotex, Inc., 921 F.Supp.2d 297, 301 (D. Del. 2013). Further, a court should not grant a motion to strike a defense unless the insufficiency of the defense is clearly apparent. Id. (citing Symbol Techs., Inc. v. Aruba Networks, Inc., 609 F.Supp.2d 353, 356 (D. Del. 2009)).

         C. Pleading Inequitable Conduct Under Rule 9(b)

         An individual associated with the filing and prosecution of a patent application commits inequitable conduct when he or she (1) makes an affirmative misrepresentation of a material fact, fails to disclose material information, or submits false material information to the PTO; (2) with the specific intent to deceive the PTO. Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir. 2008); Micron Tech., Inc. v. Rambus Inc., 917 F.Supp.2d 300, 321-22 (D. Del. 2013). If both of these elements-materiality and intent-are proven by clear and convincing evidence, this equitable defense bars enforcement of a patent. Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1287 (Fed. Cir. 2011); Micron Tech., 917 F.Supp.2d at 322-23.

         A claim of patent unenforceability premised upon inequitable conduct is a claim sounding in fraud. Senju, 921 F.Supp.2d at 306. Under Federal Rule of Civil Procedure 9(b), fraud is a clear exception to the otherwise broad notice-pleading standards. Id. A party alleging unenforceability, therefore, must plead with particularity those facts which support the claim that the patent holder acted fraudulently before the PTO. Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009); Senju, 921 F.Supp.2d at 306. Just as a claim for inequitable conduct must meet the heightened pleading requirements of Rule 9(b), a defendant is also required to plead this affirmative defense with particularity under Rule 9(b). Senju, 921 F.Supp.2d at 306. As a result, Defendants' counterclaim and affirmative defense for inequitable conduct rise and fall together. Id. (citing cases).

         In Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1328 (Fed. Cir. 2009), the United States Court of Appeals for the Federal Circuit established the standard for evaluating the sufficiency of inequitable conduct allegations. Exergen held that:

[T]o plead the "circumstances" of inequitable conduct with the requisite "particularity" under Rule 9(b), the pleading must identify the specific who, what, when, where and how of the material misrepresentation or omission committed before the PTO. Moreover, although "knowledge" and "intent" may be averred generally, a pleading of inequitable conduct under Rule 9(b) must include sufficient allegations of underlying facts from which a court may reasonably infer that a specific individual (1) knew of the withheld material information or of the falsity of the material misrepresentation, and (2) withheld or misrepresented this information with a specific intent to deceive the PTO.

575 F.3d at 1328-29.

         However, roughly 18 months after the Federal Circuit's decision in Exergen, an en banc Federal Circuit altered and clarified the elements for proving inequitable conduct in Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011). Unlike Exergen, which specifically outlined the requirements for pleading inequitable conduct, Therasense involved the review of a district court decision as to inequitable conduct made after a bench trial. Id. at 1285. In Therasense, the Federal Circuit retained the two-pronged construct requiring a showing of both materiality and intent to deceive. However, in various ways, it elected to "tighten[] the standards for finding both intent and materiality in order to redirect a doctrine that has been overused to the detriment of the public." Id. at 1290.

         For example, the Therasense Court overruled a separate series of decisions that placed the materiality and intent prongs on a "sliding scale, " in which a weak showing of intent could be found sufficient based on a strong showing of materiality, or vice versa. Id. at 1288, 1290. In addition, as to the first prong regarding materiality, Therasense held that absent evidence of "affirmative egregious misconduct, " this prong requires a "but-for" showing. Id. at 1291-92. In other words, the party making an inequitable conduct claim must show that but for an omission or misrepresentation by the patent applicant, the PTO would not have allowed a patent claim to issue. Id.

         As for the intent prong, Therasense expressly overruled a series of decisions holding that if a misrepresentation or omission at issue amounted to gross negligence or mere negligence, this would be sufficient to satisfy the intent prong; instead, a deliberate decision to make the misrepresentation or omission would be required. Id. at 1287-90. Lastly, the Federal Circuit re-emphasized its prior holding that although "a district court may infer intent from indirect and circumstantial evidence . . .., to meet the clear and convincing evidence standard, the specific intent to deceive must be 'the single most reasonable inference and able to be drawn from the evidence.'" Id. at 1290 (quoting Star Scientific, 537 F.3d at 1366). At the pleading stage of the case, however, "the claimant need only allege facts from which the Court could reasonably infer that the patent applicant made a deliberate decision to deceive the PTO." Wyeth Holdings Corp. v. Sandoz, Inc., Civ. Action No. 09-955-LPS-CJB, 2012 WL 600715, at *7 (D. Del. Feb. 3, 2012) (emphasis in original); see also Exergen, 575 F.3d at 1328-29.

         III. DISCUSSION

         In resolving IBM's Motion, the Court will first address two threshold issues regarding its approach to and the potential scope of Defendants' counterclaim. Next, it will assess IBM's challenges to Defendants' counterclaim premised on Defendants' asserted failure to plead sufficient facts regarding materiality or intent. Third, it will address IBM's assertion that Defendants have not sufficiently alleged that inequitable conduct from other patent applications "infects" the patents at issue. And lastly, it will take up the question of whether Defendants' inequitable conduct affirmative defense should be stricken.

         A. Threshold Issues

         1. BBL v. City of Angola and the Partial Dismissal of Claims

         As was noted above, Defendants base their inequitable conduct counterclaim on several different alleged misrepresentation or omissions-in essence, on a number of different subsets of allegations, or "theories, " of inequitable conduct. These theories involve allegations relating to (1) certain prior art references against the '849 and '967 patents, (D.I. 103 at ¶¶ 101, 104, 108, 126-30, 160-66, 212-218, 223(a), 224); (2) commercialization efforts, (id. at ¶¶ 99-100, 102-03, 105-07, 109-117, 121-25, 130-159, 212-222); and (3) co-pending patent applications and office actions related to those applications, (id. at ¶¶ 131, 167-211, 223(b)-(c)).

         IBM addresses each theory separately, (see D.I. 121 at 9-18; D.I. 149 at 4-9), and argues that "Defendants' counterclaim should be dismissed in its entirety" because "Defendants cannot identify any set of allegations (i.e., any of them) where 'a specific individual both knew of invalidating information that was withheld from the PTO and withheld that information with a specific intent to deceive the PTO, '" (D.I. 149 at 2 (quoting Delano Farms Co. v. California Table Grape Comm 'n, 655 F.3d 1337, 1350 (Fed. Cir. 2011))). Defendants, for their part, assert that "[t]he inequitable conduct counterclaims must be evaluated as a whole under Rules 12(b) and 9(b), " (D.I. 138 at 7), and that '"Rule 12(b)(6) doesn't permit piecemeal dismissals of parts of claims[, ]'" (id. at 5-6 (citing BBL v. City of Angola, 809 F.3d 317, 325 (7th Cir. 2015))). In other words, Defendants seem to contend that if any one theory of inequitable conducts passes muster under Rule 9(b), then all of Defendants' theories set out in the counterclaim should survive, even if some are clearly insufficiently pleaded.

         For that proposition, Defendants cite primarily to BBL, Inc. v. City of Angola, 809 F.3d 317 (7th Cir. 2015). (D.I. 138 at 5-6) In that case, the United States Court of Appeals for the Seventh Circuit affirmed a lower court's decision to deny a motion for preliminary injunction based on a First Amendment claim. In doing so, the Seventh Circuit stated that there was "reason to question [the district court's] approach" in the case of "split[ting] a single claim into multiple components based on the elements of the applicable constitutional test." BBL, 809 F.3d at 324-25. The BBL Court then stated that a "motion to dismiss under Rule 12(b)(6) doesn't permit piecemeal dismissals of parts of claims; the question at this stage is simply whether the complaint includes factual allegations that state a plausible claim for relief." Id. at 325 (citations omitted) (emphasis in original).

         For a few reasons, the Court does not agree with Defendants' approach and will address each of Defendants' disparate inequitable conduct "theories" separately, despite the fact that they are all lumped together within a single 134-paragraph counterclaim.

         First, the Court notes that the relevant statement from BBL appears to be dicta, as the Seventh Circuit nevertheless proceeded to affirm the lower court's ruling without further reference to its approach.

         Second, the situation that presented itself to the BBL Court was of a different nature than that at issue here. There, the plaintiffs raised a First Amendment challenge to the defendant city's ("Angola") zoning ordinance, which indisputably restricted expressive conduct. See BBL v. City of Angola, Cause No. 1:13-CV-76-RLM, 2014 WL 26093, at *12 (N.D. Ind. Jan. 2, 2014), aff'd, 809 F.3d 317 (7th Cir. 2015) ("£££"). In order for such an ordinance to comport with the First Amendment, it had to (1) be aimed at reducing negative secondary effects of the expressive conduct; (2) be narrowly tailored to serve that purpose; and (3) leave open reasonable alternative sites for expression. See BBL, 809 F.3d at 323. The district court held that Angola was entitled to judgment on the pleadings as to the first two of these three elements, but not as to the third element. Id. While it may be wrong to grant a motion for judgment on the pleadings (or a motion to dismiss) as to certain legal elements of a claim, instead of as to the whole claim, that is different than the situation here. Here, IBM is asking the Court to consider granting its Motion as to separate sets of operative facts making up what should be separate claims of inequitable conduct, and nothing in BBL expressly speaks to that kind of request.[5]

         Third, several courts, including this one, have in fact dismissed portions of inequitable conduct counterclaims, or stricken portions of affirmative defenses based on inequitable conduct, while allowing other portions of the claim/defense to survive. See, e.g., EMC Corp. v. Pure Storage, Inc., C.A. No. 13-1985(RGA), 2014 WL 5795557, at *2 (D. Del. Nov. 5, 2014); CertusView Techs., LLC v. S & N Locating Servs., LLC, 107 F.Supp.3d 500, 509-23 (E.D. Va. 2015); Zvelo, Inc. v. SonicWall, Inc., Civil Action No. 06-cv-00445-PAB-KLM, 2013 WL 5443858, at *2-10 (D. Colo. Sept. 30, 2013); cf. Aha Corp. v. Par Pharm., Inc., Civil Action No. 13-1104-RGA (D. Del. May 27, 2014), (D.I. 149, ex. 2 at 3) ("The insufficiency of the present allegations is principally that they allege a mishmash of facts without sorting them out in relation to particular acts of particular individuals. The Defendants need to identify by name the individuals who did things constituting affirmative misconduct or contrary to the duty of candor, and material to the issuance of the patents, on particular dates, with the intent to deceive the PTO.").[6] These cases suggest that the Court's approach here is the appropriate way to assess one "claim" that, in reality, includes within it many disparate fact-based theories as to why various individuals connected to IBM are guilty of inequitable conduct.

         Fourth, as a practical matter, it seems that following Defendants' proposed path would frustrate the very purpose of Rule 9(b)'s requirement than an inequitable conduct claim be pleaded with particularity. Defendants' approach could permit a single viable theory to "carry" otherwise wholly deficient theories of liability through to the summary judgment stage, so long as all of the theories were pressed into a single counterclaim. This would surely undermine Rule 9(b)'s goal of "provid[ing] defendants with notice of the precise nature of the claim against them[.]" Johnson v. Ace Cash Express Inc., Civ. Act. No. 13-1186-LPS, 2015 WL 4397482, at *2 (D. Del. July 17, 2015) (emphasis added) (citing Seville Indus. Mack Corp. v. Southmost Mack Corp., 742 F.2d 786, 791 (3d Cir. 1984)). Indeed, there are plenty of circumstances in which defendants have broken out their multiple theories of inequitable conduct into separate counterclaims, and where courts have assessed whether each individual counterclaim should rise or fall, depending on whether it satisfies the requirements of Rule 9(b). See, e.g., EMC Corp. v. Zerto, Inc., C.A. No. 12-956-GMS, 2014 WL 3809365, at *3-4 (D. Del. July 31, 2014); Xpert Universe, Inc. v. Cisco Sys., Inc., 868 F.Supp.2d 376, 379-83 (D. Del. 2012); Moore U.S.A., Inc. v. Standard Register Co., 139 F.Supp.2d 348, 359-60 (W.D.N.Y.2001). To countenance Defendants' approach here would penalize the defendants in these other cases for having clearly organized their claims so as to put the respective plaintiffs on notice. It would also give defendants a perverse incentive to lump together every possible disparate theory of inequitable conduct into one unwieldy counterclaim, in the hopes that a single theory with wings would carry other theories past the Rule 12(b)(6) stage, when in fact those other theories should never have gotten off the ground.

         With this in mind, the Court will address each of Defendants' inequitable conduct theories in turn in Section III.B, infra.

         2.Defendants' Counterclaim May Only Survive as it Pertains to Mr. Scifo

         In portions of their pleadings, Defendants have not properly and specifically identified the "who, what, where, when, and how" of alleged material misrepresentations or omissions, as required to make out an inequitable conduct claim under Exergen. This is most clear as to the deficiency of the allegations that are made against persons who are not specifically referred to by their name, or against corporate entities. This relates to Defendants' assertions that (1) certain unnamed "individuals at IBM, who will be identified during discovery, " (2) "IBM [and] and its agents[, ]" or "Trintex[, ]" (3) "prosecuting attorneys[, ]" and (4) the "named inventors" all intentionally withheld certain materials from the BPAI during prosecution of the patents-in-suit. (See D.I. 103 at ¶¶ 122, 130, 212, 219-21)

         IBM argues that Defendants' allegations against such unidentified persons or corporate entities should be dismissed because "[n]one of those allegations identify the specific individuals Defendants allege failed to disclose material information." (D.I. 121 at 8) It contends that such allegations do not meet the heightened pleading standard of Rule 9(b) "because a 'broadly cast net around the inventors and those acting on their behalf does not allow the court to reasonably infer that a specific individual both knew of the invalidating information and had a specific intent to deceive the PTO."' (D.I. 149 at 3-4 (quoting Senju, 921 F.Supp.2d at 307); see also D.I. 121 at 7)

         Certain of these allegations clearly do not meet the "who" requirement. To satisfy that requirement, the pleading at issue must clearly identify "the specific individual associated with the filing or prosecution of the application issuing as the .. . patent, who both knew of the material information and deliberately withheld or misrepresented it." Exergen, 575 F.3d at 1329 (emphasis added). Indeed, the Federal Circuit and this Court have regularly dismissed inequitable conduct claims that failed to meet this burden. See, e.g., Exergen, 575 F.3d at 1329 (finding allegations regarding "Exergen, its agents and/or attorneys" deficient) (internal quotation marks and citation omitted); Senju, 921 F.Supp.2d at 307 (finding allegations as to omissions and misrepresentations made by "Senju [Pharma], Kyorin, the inventors and/or those acting on their behalf deficient) (internal quotation marks and citation omitted); XpertUniverse, 868 F.Supp.2d at 381 (finding ...


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