Chief Judge Stark Allows A Portion Of Defendants’ Counterclaim And Affirmative Defense Of Inequitable Conduct To Proceed After Considering Plaintiffs’ Motion To Dismiss And Motion To Strike

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By Memorandum Opinion entered by The Honorable Leonard P. Stark in Diebold Nixdorf, Inc. et al. v. Hyosung TNS, Inc. et al., Civil Action No. 19-1695-LPS (D.Del. March 4, 2021), the Court granted in part and denied in part Plaintiffs’ motion to dismiss Defendants’ counterclaim, pursuant to Federal Rule of Civil Procedure 12(b)(6), and motion to strike Defendants’ affirmative defense of inequitable conduct, pursuant to Federal Rule of Civil Procedure 12(f), in a patent infringement action.

The counterclaim and affirmative defense of inequitable conduct at issue related to U.S. Patent No. 6,082,616 (“the ‘616 patent”) and were based on: (1) failure by a list of named inventors to disclose to the United States Patent Office (“the PTO”) the 1064i automated teller machine (“ATM”); and (2) failure by two named inventors of the ‘616 patent to disclose to the PTO four prior art patents.  Id. at *2.  After evaluation of the motions, the Court decided to allow the Defendants’ counterclaim and affirmative defense of inequitable conduct to proceed only on the theories based on the non-disclosure of the 1064i ATM and one of the four prior art patents asserted, U.S. Patent No. 5,788,348 (“the ‘348 patent”).  Id. at *2-9.

A copy of the Memorandum Opinion is attached.

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