D. Mass. Patent Litigation Update: January 2025

This is part of a series of articles discussing recent orders of interest issued in patent cases by the United States District Court for the District of Massachusetts.

In Mobile Pixels, Inc, v. The Partnerships and Unincorporated Associations Identified on Schedule “A”, No. 23-cv-12587, Judge Burroughs granted Plaintiff’s motion to strike an affirmative defense of inequitable conduct and to dismiss an invalidity counterclaim.

Of note, the Court began its discussion of the procedural history by noting that it “would typically begin by drawing background facts from the Counterclaim Complaint. Counterclaim Plaintiffs, however, offer almost no factual allegations to support their counterclaims . . . .”

The Court granted Plaintiff’s motion to strike Counterclaim Plaintiffs’ inequitable conduct defense. The Court observed that allegations of inequitable conduct must satisfy the requirements for alleging fraud and, after quoting the full six-line allegation in full, found that it fails to identify the particularized factual basis for the allegation and thus should be stricken.

The Court next granted Plaintiff’s motion to dismiss Counterclaim Plaintiffs’ invalidity counterclaim. Counterclaim Plaintiffs asserted the patent is invalid under 35 U.S.C. and for being dictated entirely by function. The Court observed that while the instant counterclaim is “a bit more developed than [a separate] counterclaim that this Court previously dismissed,” the Counterclaim Plaintiffs had not identified a single prior art reference allegedly bearing on the issue of validity. Finding that Counterclaim Plaintiffs provided “no support for the idea that a bareboned factual assertion that ‘prior art exists’ or that a patent’s ‘design is dictated by its function’ is sufficient to survive a motion to dismiss,” the Court dismissed the invalidity counterclaim. Finally, noting that Counterclaim Plaintiffs had not provided a proposed amended cause of action and that the counterclaim at issue was filed despite the Court’s earlier dismissal of a different counterclaim on similar grounds, the Court declined to allow leave to amend and thus made its dismissal with prejudice.

Accordingly, the Court granted Plaintiff’s motion to strike and dismiss.