Case 6:21-cv-00642-ADA Document 38 Filed 02/08/22 Page 1 of 19
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`FLYPSI, INC. (D/B/A FLYP),
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`Plaintiff,
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`Civil Action No. 6:21-cv-642-ADA
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`vs.
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`DIALPAD, INC.,
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`Defendant.
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`JURY TRIAL DEMANDED
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`PLAINTIFF’S MOTION TO DISMISS AND STRIKE DEFENDANT’S
`INEQUITABLE CONDUCT COUNTERCLAIM AND DEFENSE
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`Case 6:21-cv-00642-ADA Document 38 Filed 02/08/22 Page 2 of 19
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`I.
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`II.
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`III.
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`TABLE OF CONTENTS
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`INTRODUCTION .............................................................................................................. 1
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`FACTUAL BACKGROUND ............................................................................................. 2
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`LEGAL STANDARD ......................................................................................................... 3
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`A.
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`B.
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`Rule 12(b)(6) ........................................................................................................... 3
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`Inequitable Conduct ................................................................................................ 4
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`IV.
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`ARGUMENT ...................................................................................................................... 5
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`A.
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`The Court should dismiss Dialpad’s inequitable conduct counterclaim because
`Dialpad has not pled a plausible claim. .................................................................. 5
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`1.
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`2.
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`3.
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`Dialpad has failed to plead “what” or “where” of any alleged inequitable
`conduct. ....................................................................................................... 5
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`Dialpad has failed to plead “how” or “why” of any alleged inequitable
`conduct. ....................................................................................................... 8
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`Dialpad has failed to plead any facts supporting an inference of intent to
`deceive. ..................................................................................................... 11
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`B.
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`The Court should strike Dialpad’s inequitable conduct defense. ......................... 13
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`CONCLUSION ................................................................................................................. 13
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`V.
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`i
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`Case 6:21-cv-00642-ADA Document 38 Filed 02/08/22 Page 3 of 19
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ...................................................................................................................4
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`Bell Atl. Corp. v. Twombly,
`550 U.S. 544 (2007) ...................................................................................................................4
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`Cutsforth, Inc. v. LEMM Liquidating Co., LLC,
`No. 12-CV-1200 SRN/JSM, 2013 WL 2455979 (D. Minn. June 6, 2013) .............................10
`
`Exergen Corp. v. Wal-Mart Stores, Inc.,
`575 F.3d 1312 (Fed. Cir. 2009)........................................................................................ passim
`
`Kaiser Aluminum & Chem. Sales, Inc. v. Avondale Shipyards, Inc.,
`677 F.2d 1045 (5th Cir. 1982) .................................................................................................13
`
`Mobility Workx, LLC v. Unified Patents, LLC,
`15 F.4th 1146 (Fed. Cir. 2021) ..................................................................................................8
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`NobelBiz, Inc. v. Global Connect, LLC,
`No. 6:12-cv-244-MHS, 2014 WL 11497796 (E.D. Tex. Oct. 27, 2014) .................................10
`
`Tafas v. Doll,
`559 F.3d 1345 (Fed. Cir. 2009)............................................................................................7, 11
`
`Tafas v. Kappos,
`586 F.3d 1369 (Fed. Cir. 2009)............................................................................................7, 11
`
`Theta IP, LLC v. Samsung Elecs. Co.,
`No. 20-cv-00160-ADA, 2021 WL 2322936 (W.D. Tex. June 7, 2021) ..................................13
`
`Uniloc USA, Inc. v. ADP, LLC,
`772 F. App’x 890 (Fed. Cir. 2019) ............................................................................................8
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`Other Authorities
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`Fed. R. Civ. P. 9(b) ......................................................................................................................4, 6
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`Fed. R. Civ. P. 12(b)(6)................................................................................................................3, 4
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`Fed. R. Civ. P. 12(f) .............................................................................................................3, 13, 14
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`Case 6:21-cv-00642-ADA Document 38 Filed 02/08/22 Page 4 of 19
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`MPEP § 2001.06(c) ..................................................................................................................6, 7, 8
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`iii
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`I.
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`INTRODUCTION
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`Dialpad’s new inequitable conduct counterclaim is based on a misstatement of fact belied
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`by the public record and a misstatement of law belied by the Patent Office’s own positions. It
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`should be dismissed.
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`Even though Dialpad expressly admits that Flyp disclosed the material and relevant prior
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`art references, Dialpad has incorrectly asserted that Flyp committed inequitable conduct by failing
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`to disclose (1) this litigation and (2) certain claim charts. Dialpad’s allegations fail. First,
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`consistent with this Court’s Standing Orders, this litigation was reported to the Patent Office
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`almost immediately after filing. This litigation was thus plainly disclosed. Second, there is no
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`general requirement to disclose claim charts to the Patent Office, and Dialpad cannot contend
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`otherwise. Indeed, the Patent Office regulations that Dialpad relies on only specifically request
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`the disclosure of the prior art itself, which Dialpad concedes Flyp provided. Moreover, while the
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`Patent Office at one time considered imposing a requirement that applicants disclose information
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`about how prior art references read on the claims (as in claim charts), those rules were enjoined
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`and then expressly rescinded by the Patent Office. Dialpad cannot manufacture on its own a
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`disclosure burden that the Patent Office itself has rejected.
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`Due to these errors and its otherwise conclusory pleadings, Dialpad failed to state a
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`plausible claim of inequitable conduct under the Federal Circuit’s seminal decision in Exergen
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`Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009). First, Dialpad has failed to
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`plead the “what” or “where” of any inequitable conduct because it has not identified anything
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`specific in the claim charts or litigation that was disclosed, and the prosecution history shows the
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`examiner was aware of the litigation. Second, Dialpad has failed to plead the “how” or “why” of
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`any inequitable conduct because it has not pled any facts showing how the claim charts would
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`Case 6:21-cv-00642-ADA Document 38 Filed 02/08/22 Page 6 of 19
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`have been material to patentability. Specifically, Dialpad has failed to plead that the claim charts
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`are anything more than cumulative of the prior art references themselves. Third, Dialpad has failed
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`to plead facts supporting an inference of intent to deceive. It has not pled facts specific to any
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`individual, nor has it pled any fact showing a deliberate decision to withhold information from the
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`Patent Office. The Court should therefore dismiss Dialpad’s inequitable conduct counterclaim
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`under Rule 12(b)(6).
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`Dialpad’s inequitable conduct defense is based on the same facts and thus fails to state a
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`viable defense for the same reasons. The Court should therefore strike the inequitable conduct
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`defense under Rule 12(f).
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`II.
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`FACTUAL BACKGROUND
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`On June 21, 2021, Flyp filed its Original Complaint alleging infringement of four related
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`patents: U.S. Patent Nos. 9,667,770 (the “’770 patent”), 10,051,105 (the “’105 patent”),
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`10,334,094 (the “’094 patent”), and 11,012,554 (the “’554 patent”). See Dkt. No. 1. That same
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`day, consistent with this Court’s November 22, 2019 Standing Order, Flyp filed the required AO
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`Form 120 reporting on the filing on this Action (Report on the Filing or Determination of an Action
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`Regarding a Patent or Trademark), which was timely submitted to the Patent Office. Dkt. No. 2.
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`On Friday, November 5, 2021 at 11:27 p.m., Dialpad served invalidity contentions for the
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`four asserted patents in accordance with the Court’s Scheduling Order. See Dkt. No. 23. On
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`Tuesday, November 9, approximately 36 business hours later, Flyp submitted a Request for
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`Continued Examination along with an Information Disclosure Statement listing the invalidity
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`references cited by Dialpad in the then-pending and already-allowed Application Number
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` 2
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`Case 6:21-cv-00642-ADA Document 38 Filed 02/08/22 Page 7 of 19
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`17/243401. Ex. A.1 One month later, in response, the examiner re-issued a new Notice of
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`Allowability. Ex. B. That application issued as U.S. Patent No. 11,218,585 (the “’585 patent”).
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`Flyp then filed its First Amended Complaint asserting infringement of the ’585 patent. See Dkt.
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`No. 30.
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`Dialpad then filed its Answer and Counterclaims to the First Amended Complaint. See
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`Dkt. No. 34. In its Counterclaim, Dialpad pleads for the first time a defense of inequitable conduct
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`for the ’585 patent as follows: “The claims of the ’585 Patent are unenforceable due to inequitable
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`conduct during prosecution of the ’585 Patent before the U.S. Patent and Trademark Office.” Id.
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`at 49 (Ninth Defense). Dialpad also pled a counterclaim seeking a declaratory judgment of
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`unenforceability of the ’585 patent. Id. at 59–66 (Counterclaim Count X).
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`III. LEGAL STANDARD
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`A.
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`Rule 12(b)(6)
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`Under Federal Rule of Civil Procedure 12(b)(6), a district court must dismiss a complaint
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`if it fails to state a claim upon which relief can be granted. Fed. R. Civ. P. 12(b)(6). To survive a
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`Rule 12(b)(6) motion to dismiss, the plaintiff must allege “enough facts to state a claim to relief
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`that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 556 (2007). A claim is
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`facially plausible when the plaintiff pleads facts that “allow the court to draw the reasonable
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`inference that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662,
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`678 (2009) (citation omitted). There must be “more than a sheer possibility that a defendant has
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`1 Application Number 17/243401 was filed on April 28, 2021, before this action was commenced.
`Id.
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`acted unlawfully.” Id. A plaintiff must allege facts sufficient to “raise a right to relief above the
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`speculative level.” Twombly, 550 U.S. at 555, 570.
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`B.
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`Inequitable Conduct
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`Inequitable conduct “must be pled with particularity under Rule 9(b).” Exergen Corp. v.
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`Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009). Federal Circuit law applies to the
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`question of whether inequitable conduct has been pled in accordance with Rule 9(b). Id.
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`To state a claim for inequitable conduct, the pleadings must “identify the specific who,
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`what, when, where, and how of the material misrepresentation or omission committed before the
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`PTO.” Id. at 1328. To meet the “what” and “where” prongs, the pleading must “identify which
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`claims, and which limitations in those claims, the withheld references are relevant to, and where
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`in those references the material information is found.” Id. at 1329. To meet the “how” and “why”
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`prongs, the pleading must “identify the particular claim limitations, or combination of claim
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`limitations, that are supposedly absent from the information of record. Such allegations are
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`necessary to explain both ‘why’ the withheld information is material and not cumulative, and
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`‘how’ an examiner would have used this information in assessing the patentability of the claims.”
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`Id. at 1329–30.
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`To meet the intent prong, the pleading “must include sufficient allegations of underlying
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`facts from which a court may reasonably infer that a specific individual (1) knew of the withheld
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`material information … and (2) withheld … this information with a specific intent to deceive the
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`PTO.” Id. at 1328–29. “A reasonable inference is one that is plausible and that flows logically
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`from the facts alleged, including any objective indications of candor and good faith.” Id. at 1329
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`n.5.
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`IV. ARGUMENT
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`A.
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`The Court should dismiss Dialpad’s inequitable conduct counterclaim
`because Dialpad has not pled a plausible claim.
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`1.
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`Dialpad has failed to plead “what” or “where” of any alleged
`inequitable conduct.
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`In order to plead the “what” and “where” prongs of inequitable conduct, Dialpad must
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`“identify which claims, and which limitations in those claims, the withheld references are relevant
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`to, and where in those references the material information is found.” Exergen, 575 F.3d at 1329
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`(emphasis added). Dialpad’s Counterclaim entirely fails to meet this standard, instead alleging
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`that Flyp should have disclosed the litigation and/or the claim charts without any allegation that
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`such are relevant to any particular claim limitation. Indeed, these alleged omissions cannot form
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`the basis for any inequitable conduct allegation related to any particular limitation because this
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`litigation was disclosed, and the Patent Office does not require the disclosure of claim charts.
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`In its pleading for the “what” and “where” prongs, Dialpad never identifies any specific
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`claim limitations to which the allegedly withheld claim charts are relevant. See Dkt. No. 34 at 61–
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`64. Instead, Dialpad simply points to the entirety of claim 1 of the ’585 patent. Id., ¶ 83. Dialpad
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`also fails to identify where in the references the allegedly material information is found. Instead,
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`it simply contends that it mapped the prior art to the claims in the charts. Id., ¶ 82. These are
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`exactly the sort of high-level, conclusory pleadings that fail to plead inequitable conduct with
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`specificity as required by Exergen and Rule 9(b). The Court could end its analysis here.
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`But Dialpad’s argument on the claim charts is also based, fatally, on a misreading of the
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`regulatory requirements. Dialpad cites to MPEP Section 2001.06(c), which describes information
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`to disclose when a patent is involved in litigation. Dkt. No. 34, ¶ 80. But Dialpad’s pleading only
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`cites to one sentence of 2001.06(c). Glaringly, Dialpad omits the very next sentence, which
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`includes the Patent Office’s very specific instructions on what to submit:
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`In particular, material information that is raised in trial
`proceedings that is relevant to related applications undergoing
`examination should be submitted on an Information Disclosure
`Statement for the examiner’s consideration. Examples of such
`material information include evidence of possible prior public use
`or sales, questions of inventorship, prior art, allegations of “fraud,”
`“inequitable conduct,” and “violation of duty of disclosure.”
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`MPEP § 2001.06(c) (emphasis added). The regulation states that information should be submitted
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`on an IDS, and requests that the prior art itself be submitted. The regulation does not request that
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`attorney argument relating to prior art (e.g., invalidity claim charts) be disclosed at all. As such,
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`the regulation cannot support Dialpad’s argument that Flyp had any obligation to disclose
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`Dialpad’s attorney argument in the form of claim charts.
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`Moreover, any such argument by Dialpad would be legal error as it seeks to impose
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`disclosure rules that the Patent Office itself has rejected. Over a decade ago, the Patent Office
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`proposed regulations requiring applicants to “explain how each independent claim is patentable
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`over the references” in certain situations. Tafas v. Doll, 559 F.3d 1345, 1350 (Fed. Cir. 2009).
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`Those proposed rules, however, were enjoined by the court as improper. Id. at 1350–51. And
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`thereafter, the proposed rules were explicitly withdrawn by the Patent Office. Tafas v. Kappos,
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`586 F.3d 1369, 1371 (Fed. Cir. 2009). Now, Dialpad’s inequitable conduct allegations attempt to
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`reimpose this previously enjoined and withdrawn requirement (to disclose attorney argument
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`mapping a prior art reference to a claim). Dialpad cannot by fiat impose a disclosure burden that
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`both the Patent Office and the Federal Circuit have rejected. The Court should not permit such an
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`inequitable conduct claim and should instead rule consistently with the Patent Office’s actual
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`Case 6:21-cv-00642-ADA Document 38 Filed 02/08/22 Page 11 of 19
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`regulations, which, as noted above, only specifically require disclosure of prior art but make no
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`mention of claim charts.
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`Dialpad also alleges that the information withheld was “this Litigation and fact that the
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`prior art references submitted to the USPTO were produced in litigation mere days earlier and
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`were part of an extensive set of Invalidity Claim Charts associated with the the [sic] ongoing
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`litigation involving members of the ’585 Patent family, namely the ’770, ’105, ’094 and ’554
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`Patents.” Id., ¶ 81. This allegation, however, fails to link any of this information to any particular
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`claim limitation, and thus fails to satisfy Exergen’s “what” or “where” prongs. Indeed, Dialpad
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`cites no authority suggesting any obligation to disclose “that the prior art references submitted to
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`the USPTO were produced in litigation mere days earlier,” and any such suggestion would be
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`contrary to MPEP § 2001.06(c).
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`Moreover, the evidence shows the examiner actually was aware of this litigation. Pursuant
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`to this Court’s Standing Order Regarding Patent/Trademark Cases, Flyp filed AO Form 120 along
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`with its original Complaint on June 21, 2021. Dkt. No. 3. The Court promptly sent it to the Patent
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`Office, who recorded the filing of this form three days later on June 24, 2021 in the file histories
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`of the ’770, ’105, and ’554 patents.2 See Exs. C, D, E. The same examiner, Nam Trung Huynh,
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`examined all of Flyp’s patents, including the four originally asserted and the ’585 patent. See Exs.
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`B, F, G, H, I. Thus, this examiner was aware of the litigation by virtue of the filing of this Report.
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`Additionally, the evidence is clear that the examiner was still looking at the original patents, at
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`
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`2 It is unclear why the Patent Office did not file this form in the ’094 file history, as the ’094 patent
`is correctly identified on the form. See Dkt. No. 3. In any event, such a clerical oversight by the
`Patent Office cannot be the basis for a claim of inequitable conduct.
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`least because there was a terminal disclaimer filed and approved on July 9, 2021 (just 15 days after
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`the AO 120 report was filed) in the ’585 patent file history, disclaiming over the originally asserted
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`’094 patent. See Ex. J. Thus, the evidence from the prosecution history, of which the Court can
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`take judicial notice,3 shows the examiner was aware of the litigation.4
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`Dialpad has thus failed to plead the “what” and “where” prongs of inequitable conduct,
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`because it has not pled any facts linking the allegedly withheld information to any specific claim
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`limitations, as required by Exergen. 575 F.3d at 1329. The Court should therefore dismiss the
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`inequitable conduct counterclaim.
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`2.
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`Dialpad has failed to plead “how” or “why” of any alleged inequitable
`conduct.
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`Dialpad has further failed to plead the “how” and “why” prongs of an inequitable conduct
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`claim. Dialpad’s pleading must “identify the particular claim limitations, or combination of claim
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`limitations, that are supposedly absent from the information of record. Such allegations are
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`necessary to explain both ‘why’ the withheld information is material and not cumulative, and
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`‘how’ an examiner would have used this information in assessing the patentability of the claims.”
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`Id. at 1329–30. Dialpad does not meet this standard.
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`
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`3 E.g., Uniloc USA, Inc. v. ADP, LLC, 772 F. App’x 890, 898 n.3 (Fed. Cir. 2019) (taking judicial
`notice of file history); Mobility Workx, LLC v. Unified Patents, LLC, 15 F.4th 1146, 1151–52 (Fed.
`Cir. 2021) (taking judicial notice of documents on USPTO’s website)
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` 4
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` Furthermore, allowing this claim to proceed would be futile, given that the examiner was further
`informed of the litigation in the context of the ’585 prosecution by the prosecuting attorney in at
`least one phone call. Dialpad’s pleading is based on nothing more than mere speculation, and the
`Court should not allow this claim to go forward without more, lest the Court and the parties be
`forced to waste time and resources on a theory that has no factual basis.
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`Dialpad’s only pleading for the “how” and “why” prongs is four conclusory paragraphs.
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`Dkt. No. 34, ¶¶ 91–94. These allegations do not reference any claim language, and thus plainly
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`fail to “identify the particular claim limitations, or combination of claim limitations, that are
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`supposedly absent from the information of record” as required by Exergen. 575 F.3d at 1329–30.
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`With respect to materiality and cumulativeness, Dialpad only pleads the conclusion that these were
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`“material challenges” (Dkt. No. 34, ¶ 93) and “material, non-cumulative information” (id., ¶ 81).
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`But these are the type of allegations that were deemed insufficient in Exergen. 575 F.3d at 1329
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`(held pleading insufficient where “the pleading states generally that the withheld references are
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`‘material’ and ‘not cumulative to the information already of record,’ Answer ¶¶ 41–42, but does
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`not identify the particular claim limitations, or combination of claim limitations, that are
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`supposedly absent from the information of record”).
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`Most problematically, Dialpad does not plead a single fact that would support explaining
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`“‘why’ the withheld information is material and not cumulative” as required by Exergen.5 Id.
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`Specifically, Dialpad does not plead any fact that would show that the claim charts are not
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`cumulative of the prior art references themselves. Dialpad expressly admits that the underlying
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`prior art references were submitted to the Patent Office. Dkt. No. 34, ¶ 77. Claim charts contain
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`citations to and/or quotes from the references, and thus would be cumulative of the references
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`themselves. Dialpad does not plead any facts to the contrary—for example, Dialpad does not plead
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`
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`5 Dialpad may attempt to rely on Cutsforth, Inc. v. LEMM Liquidating Co., LLC, No. 12-CV-1200
`SRN/JSM, 2013 WL 2455979, at *7 (D. Minn. June 6, 2013). In Cutsforth, the court permitted an
`inequitable conduct claim, but Cutsforth did not address the issue of whether the party had
`sufficiently pled the information was not cumulative under Exergen. See generally id. (no
`reference to “cumulative” in entire opinion).
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`that the charts referenced any prior art not submitted to the Patent Office, nor does Dialpad contend
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`that the charts contain any information not disclosed in the prior art references themselves. Cf.
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`NobelBiz, Inc. v. Global Connect, LLC, No. 6:12-cv-244-MHS, 2014 WL 11497796, at *3 (E.D.
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`Tex. Oct. 27, 2014) (permitting inequitable conduct claim where “some facts were only in the
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`claim chart for the 2004 System (not disclosed to examiner)”) (emphasis added). Instead, Dialpad
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`merely alleges that the charts contain “specific and detailed challenges to the validity” (Dkt. No.
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`34, ¶ 92) or “detailed arguments” (id., ¶ 94). But these conclusory allegations do not show that
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`the claim charts were not cumulative of the prior art references themselves. Dialpad does not, and
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`cannot, contend that the claim charts include more detail than the reference themselves. Instead,
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`Dialpad appears to be contending that its own contentions and attorney argument provided some
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`“detail,” but Dialpad fails to contend that this attorney argument (which is not itself prior art)
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`would render the claim charts not cumulative of the prior art references themselves.
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`Again, Dialpad’s arguments are based on a disclosure burden that the Patent Office itself
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`has rejected. See Tafas v. Doll, 559 F.3d at 1350; Tafas v. Kappos, 586 F.3d at 1371. And again,
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`Dialpad incorrectly contends that Flyp did not disclose the existence of litigation. Setting aside
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`that the Examiner was aware of the litigation as set forth above, Dialpad does not plead that the
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`mere existence of litigation is material to the patentability of the ’585 patent. See Dkt. No. 34,
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`¶¶ 91–94. It thus failed to plead “‘how’ an examiner would have used this information in assessing
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`the patentability of the claims” as required by Exergen. 575 F.3d at 1329–30.
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`Therefore, Dialpad has failed to plead the “how” and “why” prongs of inequitable conduct
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`required by Exergen, and the Court should dismiss the counterclaim.
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`3.
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`Dialpad has failed to plead any facts supporting an inference of intent
`to deceive.
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`To plead intent, Dialpad “must include sufficient allegations of underlying facts from
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`which a court may reasonably infer that a specific individual (1) knew of the withheld material
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`information … and (2) withheld … this information with a specific intent to deceive the PTO.”
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`Exergen, 575 F.3d at 1328–29. Dialpad fails to meet either of these prongs.
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`Dialpad’s pleading only mentions intent three times, in the following highly conclusory
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`allegations:
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`By providing the USPTO the Invalidity Contention Prior Art charted
`in
`the Invalidity Claim Charts from
`this Litigation while
`intentionally concealing the Invalidity Claim Charts, the Flpysi [sic]
`Patent Prosecutors individually or collectively violated their duties
`of candor, good faith, and honesty to the USPTO.
`
`The circumstances indicate that the intent of the Flypsi Patent
`Prosecutors, individually or collectively, was to file at the USPTO
`the Invalidity Contentions Prior Art with no context on the litigation
`or the Invalidity Charts, in order to quickly get the ’585 Patent to
`issue and then subsequently add the ’585 Patent into This Litigation.
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`The Flpysi [sic] Patent Prosecutors’ withholding of information
`about This Litigation constitutes deception intended to mislead the
`USPTO.
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`Dkt. No. 34, ¶¶ 79, 85, and 91.
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`These allegations are entirely conclusory and not tied to any specific person, and thus
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`plainly fail to meet the Exergen standard of showing that the individual “knew of the withheld
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`material information.” 575 F.3d at 1328–29. The Federal Circuit’s reasoning in Exergen is highly
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`instructive. There, the pleading alleged awareness of certain undisclosed references, but “provides
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`no factual basis to infer that any specific individual … knew of the specific information in the
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`[undisclosed references] that is alleged to be material to the claims of the [asserted] patent. A
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`reference may be many pages long, and its various teachings may be relevant to different
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`Case 6:21-cv-00642-ADA Document 38 Filed 02/08/22 Page 16 of 19
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`applications for different reasons. Thus, one cannot assume that an individual, who generally
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`knew that a reference existed, also knew of the specific material information contained in that
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`reference.” 575 F.3d at 1330. Similarly here, Dialpad has, at most, alleged that certain individuals
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`were aware of the existence of the claim charts. But Dialpad has not pled any factual basis to infer
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`that a specific individual knew of any specific information within the nearly 100 pages of claim
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`charts that was material.
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`Furthermore, Dialpad fails to plead any fact supporting that any individual “withheld …
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`this information with a specific intent to deceive the PTO.” Exergen, 575 F.3d at 1328–29.
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`Dialpad does nothing more than plead the ultimate conclusion of intent to deceive. See Dkt. No.
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`34, ¶¶ 79, 85, 91. But Dialpad makes no allegations specific to any individual. Nor does it plead
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`any fact suggesting a “‘deliberate decision to withhold a known material reference’ . . . a necessary
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`predicate for inferring deceptive intent.” Exergen, 575 F.3d at 1331. As the Federal Circuit
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`cautioned, vague allegations such as Dialpad’s should not be permitted, “lest inequitable conduct
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`devolve into ‘a magic incantation to be asserted against every patentee’ and its ‘allegation
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`established upon a mere showing that art or information having some degree of materiality was
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`not disclosed.’” Id.; see also Theta IP, LLC v. Samsung Elecs. Co., No. 20-cv-00160-ADA, 2021
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`WL 2322936, at *2 (W.D. Tex. June 7, 2021) (Albright, J.) (“The bare allegations made in
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`Samsung’s complaint must be dismissed because a heightened pleading standard is applied to
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`inequitable conduct claims. … The circumstances alleged by Samsung ‘do not plausibly suggest
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`any deliberate decision to withhold a known material reference or to make a knowingly false
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`misrepresentation—a necessary predicate for inferring deceptive intent.’”). Moreover, the facts
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`here suggest the exact opposite of an intent to deceive, as Flyp filed the required prior art with the
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`Patent Office a mere four days (and only two business days) after receiving it.
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`Case 6:21-cv-00642-ADA Document 38 Filed 02/08/22 Page 17 of 19
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`Dialpad has therefore failed to adequately plead any facts supporting an inference of intent
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`to deceive under Exergen. The Court should thus dismiss the counterclaim.
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`B.
`
`The Court should strike Dialpad’s inequitable conduct defense.
`
`Under Federal Rule of Civil Procedure 12(f), a motion to dismiss a defense should be
`
`granted “when the defense is insufficient as a matter of law.” Kaiser Aluminum & Chem. Sales,
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`Inc. v. Avondale Shipyards, Inc., 677 F.2d 1045, 1057 (5th Cir. 1982).
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`Dialpad has pled its inequitable conduct defense in a single conclusory sentence: “The
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`claims of the ’585 Patent are unenforceable due to inequitable conduct during prosecution of the
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`’585 Patent before the U.S. Patent and Trademark Office.” Answer at 49 (Ninth Defense). Dialpad
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`does not allege any facts specific to this defense, and appears to rely on the same factual allegations
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`as its inequitable conduct counterclaim. As explained above, Dialpad has failed to plead a legally
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`viable inequitable conduct counterclaim. Thus, for the same reasons discussed above, Dialpad’s
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`inequitable conduct defense is insufficient as a matter of law, and the Court should strike this
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`defense under Rule 12(f).
`
`V.
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`CONCLUSION
`
`For the above reasons, the Court should dismiss Dialpad’s inequitable conduct
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`counterclaim and strike its inequitable conduct defense.
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`Case 6:21-cv-00642-ADA Document 38 Filed 02/08/22 Page 18 of 19
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`DATED: February 8, 2022
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`Respectfully submitted,
`
`/s/ Thomas M. Melsheimer
`Thomas M. Melsheimer
`Texas Bar No. 13922550
`tmelsheimer@winston.com
`M. Brett Johnson
`Texas Bar No. 00790975
`mbjohnson@winston.com
`Michael A. Bittner
`Texas Bar No. 24064905
`mbittner@winston.com
`Chad Walker
`Texas Bar No. 24056484
`cbwalker@winston.com
`WINSTON & STRAWN LLP
`2121 North Pearl Street, Suite 900
`Dallas, TX 75201
`Telephone: (214) 453-6500
`
`Matthew R. McCullough
`California Bar No. 301330
`mrmccullough@winston.com
`WINSTON & STRAWN LLP
`275 Middlefield Road, Suite 205
`Menlo Park, CA 94025
`Telephone: (650) 858-6500
`
`William M. Logan
`Texas Bar No. 24106214
`wlogan@winston.com
`WINSTON & STRAWN LLP
`800 Capitol Street, Suite 2400
`Houston, TX 77002
`Telephone: (713) 651-2766
`
`ATTORNEYS FOR PLAINTIFF
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`Case 6:21-cv-00642-ADA Document 38 Filed 02/08/22 Page 19 of 19
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`/s/ Michael A. Bittner
`Michael A. Bittner
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`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing document was filed electronically in
`compliance with Local Rule CV-5. Therefore, this document was served on all counsel who are