Bone Care Int’l, LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Apr. 23, 2010) (Dow, Jr.).

Judge Dow granted in part plaintiffs’ motion to dismiss plaintiff’s inequitable conduct affirmative defenses and corresponding counterclaim in this patent case related to a treatment for hyperthyroidism. The Court dismissed defendants’ defenses and claims based upon infectious unenforceability. Defendants showed a relationship between the patents-in-suit and the earlier patents. But defendants did not meet the Fed.R.Civ.P. 9(b) pleading standards because they did not plead an "immediate and necessary" relationship between the patents-in-suit and the earlier patents in the family.

The Court denied the motion to dismiss as to prior art references that had been disclosed in earlier, related patent prosecutions, but not the prosecutions of the patents-in-suit. Defendants’ allegations were sufficient to allow the Court to infer that the prior art references were intentionally withheld to avoid rejections similar to those from the earlier prosecutions based upon that prior art. It did not matter that defendants did not allege that the prior art references were not cumulative. Rule 9(b) pleading is designed to put the opposing part on notice, not to require the recitation of "certain magic words." The Court dismissed defendants’ allegations regarding allegedly false statements to the PTO because other writings requested the applicant did not believe the statements to be false. 

Defendants’ allegations regarding certain of plaintiffs’ undisclosed articles were sufficiently plead. Defendants identified specific articles written by patentee, and plead that they were relevant and that patentee failed to disclose them. 

Finally, defendants sufficiently pled that plaintiff’s submitted article made misleading statements about the state of the art. Among other reasons, the Court noted that the truth of the contested statements could not be decided upon a motion to dismiss.