Summary
The United States District Court for the Southern District of California grants Smith Interface Technologies, LLC’s motion for judgment on the pleadings concerning Apple Inc.’s affirmative defenses of inequitable conduct and unclean hands. The court holds that Apple’s allegations do not satisfy the heightened pleading requirements of Federal Rule of Civil Procedure 9(b), while granting Apple leave to amend subject to stated limitations.
Topics
Practice areas
Questions Presented
- Whether Apple's inequitable-conduct affirmative defense was adequately pleaded under Federal Rule of Civil Procedure 9(b).
- Whether Apple's false-priority theory could support an inequitable-conduct defense when the allegedly new matter had been disclosed in and incorporated by reference to the prior provisional application.
- Whether Apple's unclean-hands defense based on inequitable conduct and alleged fraud on the court satisfied Rule 9(b).
- Whether Apple's unclean-hands defense based on prosecution laches provided sufficient notice under Rule 8.
- Whether Smith Interface's Rule 12(c) motion was untimely or prejudicial because it was filed after substantial discovery.
- Whether Apple should receive leave to amend its affirmative defenses.
Holdings
- A Rule 12(c) motion is properly granted when, accepting the pleadings' allegations as true, the moving party is entitled to judgment as a matter of law and no material factual issue remains on the face of the pleadings.
- An inequitable-conduct affirmative defense must satisfy Rule 9(b), including particularized allegations of the who, what, when, where, and how of the alleged misconduct and facts supporting materiality and specific intent to deceive the PTO.
- Apple could not maintain an inequitable-conduct theory based on the allegation that the '754 Patent was falsely designated as a continuation rather than a continuation-in-part because the allegedly added paragraphs and figures had already been disclosed in the '918 Provisional Application and incorporated by reference.
- An unclean-hands defense based on inequitable conduct or other fraudulent conduct must satisfy Rule 9(b), and Apple's conclusory allegations did not identify with particularity who committed the alleged misconduct or the circumstances of the alleged fraud.
- An unclean-hands defense based on prosecution laches is subject to Rule 8 notice pleading rather than Rule 9(b), but Apple's conclusory assertion that the '754 Patent was unenforceable did not provide sufficient notice of the prosecution-laches theory.
- The court may consider a Rule 12(c) motion filed after substantial discovery when doing so will not delay trial or prejudice the nonmoving party.
- Leave to amend should be freely given absent undue delay, bad faith, repeated failure to cure, undue prejudice, futility, or another apparent reason; amendment was allowed for the remaining defenses but denied for the false-priority theory because amendment would be futile.
Key quotations
“A Rule 12(c) motion for judgment on the pleadings is properly granted when, “taking all the allegations in the pleadings as true, the moving party is entitled is entitled to judgment as a matter of law.”” (at 2)
““Fair notice” only requires describing a defense in “general terms.”” (at 4)
“Moreover, as explained by the Federal Circuit: [A]lthough “knowledge” and “intent” may be averred generally, a pleading of inequitable conduct under Rule 9(b) must include sufficient allegations of underlying facts from which a court may reasonably infer that a specific individual (1) knew of the withheld material information or of the falsity of the material misrepresentation, and (2) withheld or misrepresented this information with a specific intent to deceive the PTO.” (at 5)
“In sum, the Court FINDS Apple’s inequitable conduct defense, as currently plead, fails to meet the Rule 9(b) standard.” (at 10)
“The Court notes that inequitable conduct and unclean hands are two materially different affirmative defenses.” (at 24)
“In light of the foregoing, the Court GRANTS Smith Interface’s Motion for Judgment on the Pleadings.” (at conclusion)
Factual background
Apple asserted that the applicants for the asserted patents engaged in inequitable conduct by falsely designating the '754 Patent as a continuation rather than a continuation-in-part, withholding material information about Apple iOS 12 and iOS 13, and burying the examiner with more than 1,000 prior-art references. Apple also asserted unclean hands based on alleged inequitable conduct, prosecution laches, perjury, and schemes to defraud the PTO and the court. The court took judicial notice of the '754 Patent and the '918 Provisional Application and concluded that the allegedly added material had already been disclosed in and incorporated by reference to the provisional application.
Procedural history
Smith Interface filed its operative Third Amended Complaint on March 19, 2024. Apple filed an Amended Answer on August 7, 2025, asserting inequitable-conduct and unclean-hands defenses. Smith Interface moved for judgment on the pleadings on August 14, 2025. The court granted the motion, denied leave to amend the false-priority theory, granted leave to amend the remaining inequitable-conduct allegations and the unclean-hands defense, and ordered Apple to file a Second Amended Answer by February 27, 2026.