SAN DIEGO (LN) — U.S. District Judge Todd W. Robinson found Apple's amended answer fell short of Rule 9(b) requirements in multiple respects, though he permitted Apple to file a second amended answer curing some deficiencies while barring amendment of others as futile.
On Apple's theory that the patent applicants falsely designated U.S. Patent No. 10,656,754 as a continuation rather than a continuation-in-part of an earlier provisional application, Robinson held the allegation legally defective at its foundation. The '754 patent expressly incorporates by reference the contents of the earlier provisional application, and under patent office rules, replacing incorporated material with actual text is not new matter. The 71 paragraphs Apple characterized as newly added were already disclosed in the provisional application to which the '754 patent claims priority, meaning the continuation designation Apple called fraudulent was not false at all. Robinson found amendment on this point futile and barred further pleading of this theory.
On Apple's "burying the examiner" theory—that applicants filed over 1,000 prior art references to hide relevant prior art—Robinson found Apple cleared some hurdles but stumbled on the most basic one: who. Apple's amended answer named at least Michael S. Smith and attorney Patrick E. Caldwell of The Caldwell Law Firm, LLC, either alone or with others at The Caldwell Firm, LLC as the responsible parties. Robinson found that formulation, hedged with "at least" and "either alone or with others," did not permit the court to reasonably infer which specific individuals knew of the material information and intended to deceive the PTO. He also noted that the duty of candor applies to individuals, not law firms.
Robinson found Apple adequately pled what was withheld—products running Apple's iOS 12 and iOS 13 operating systems—and why it was material, accepting Apple's allegation that those systems would have anticipated or rendered obvious the '754 patent's claims. But the failure on the "who" element was fatal to the defense as pleaded.
Apple's unclean hands defense fared no better. Its amended answer alleged the applicants engaged in particularly egregious misconduct, including perjury and planned and executed schemes to defraud the PTO and this Court. Robinson found the fraud-court allegation entirely unsupported, noting Apple fails to explain the who, what, when, how, and why the applicants defrauded this Court. The prosecution-laches variant of the defense was insufficient even under the more lenient Rule 8 standard because a bare assertion of unenforceability provides no notice of the theory.
Robinson gave Apple leave to amend its inequitable conduct allegations regarding the "burying the examiner" theory and its unclean hands defense, but drew a hard line on the priority-date theory, finding any amendment on that point futile. The order does not bar Apple from pursuing a written-description invalidity argument through the district's Patent Local Rules.
Apple must file its second amended answer by February 27, 2026.