InMode Ltd. v. BTL Industries, Inc. (D. Mass. 24-cv-12955).

InMode accused BTL of infringing a patent related to vaginal remodeling technology and methods.  Following a stay pending a decision on the institution of an inter partes review, BTL responded to the complaint with an affirmative defense and counterclaim of inequitable conduct, which InMode moved to dismiss.

Judge Saris denied the motion.  She noted that an inequitable conduct defense must be pled with particularity under Fed. R. Civ. P. 9(b), but found that BTL’s pleading sufficiently included the “specific who, what, when, where and how” of the alleged inequitable conduct to meet the Rule 9(b) standard.  The counterclaim asserts that a named attorney who prosecuted the patent-in-suit failed to provide information to the PTO concerning an earlier patent on which he held power of attorney at the time the patent-in-suit was being examined.  BTL further identified the specific information from the earlier patent that would have been material to the examination, and asserted that the examiner was misled by the omission into believing that no prior art existed that was directed to the treatment of female genital tissue.  Judge Saris determined that, at this early phase of the litigation, the inference could be drawn that the failure to disclose this information was intended by the prosecuting attorney to deceive the PTO, although she noted that in subsequent phases of the litigation, BTL would have to come up with evidence of intent beyond mere materiality of the withheld reference.

InMode pointed out that the Patent Trial and Appeal Board (“PTAB”) had determined that the patent-in-suit was not obvious over the withheld reference, which would cast doubt on how material the reference actually was.  Judge Saris found that InMode had not briefed the issue of whether the IPR decision would preclude acceptance of plausible inequitable conduct claim at the pleading state, and that the existing case law varied considerably.  She decided not to “wade into this undeveloped territory,” particularly as the IPR decision is presently being appealed.  Accordingly, she denied the motion to dismiss.