Mobile Pixels, Inc. v. The Partnerships and Unincorporated Associations Identified on Schedule A (D. Mass. 23-cv-12587).

Mobile Pixels sued a number of entities selling on Amazon, asserting that each sold accessory monitors that infringe Mobile Pixels’ D920,975 design patent.  The accused monitors can be attached to the back of a laptop monitor and extend to the left or right of the laptop to provide a secondary screen.  Several groups of defendants responded with counterclaims of invalidity and an affirmative defense of inequitable conduct (among other things).  Mobile Pixels moved to dismiss the counterclaim and strike the affirmative defense with respect to a first group of defendants.  Judge Burroughs granted this motion in July, finding the bare-bones inequitable conduct defense failed to meet the required heightened pleading standard for alleging fraud pursuant to Fed. R. Civ. P. 9(b) and the invalidity counterclaim, which merely pled the statute, failed to allege sufficient facts (such as what prior art reference(s) were being relied upon or how the claims read on the prior art) to state a claim on which relief could be granted.  The dismissal was without prejudice, meaning that these defendants could try to amend the counterclaim to more properly set forth the invalidity allegations.

Recently, a second group of defendants filed a similar affirmative defense of inequitable conduct and a counterclaim of invalidity, and Mobile Pixels again moved to dismiss. Judge Burroughs found that this pleading likewise failed to plead any of the necessary inequitable conduct facts – the specific who, what, where, when or how of the alleged misconduct – such that the defense might meet the Rule 9(b) standard, and dismissed the defense.  Likewise, she granted dismissal of the invalidity counterclaim for failing to set forth sufficient facts to support the claim – the counterclaim indicated that “prior art exists” without specifying what that prior art consisted of, for example, and simply stated that the claimed design was dictated by its function without articulating factually why this was the case.

Judge Burroughs further dismissed the counterclaim with prejudice, noting both that the counterclaim plaintiffs did not provide a proposed amended complaint and that, despite having awareness of the result of the prior motion to dismiss, these defendants still failed to provide any of the necessary detail to set forth a proper claim.  Accordingly, she determined that any further amendment would be futile.

Full disclosure – the author of this blog represents Mobile Pixels in this litigation.