IP Law Daily, PATENT—S.D. Cal.: Apple’s inequitable conduct, unclean hands defenses dismissed in user interface patent case, (Jan 30, 2026)

By Ravindra Kumar Singh, B.L.

Court found defenses inadequately pleaded under Rule 9(b) or based on legally deficient theories; granted limited leave to amend.

A federal district court in California has granted Smith Interface Technologies LLC’s motion for judgment on the pleadings, striking Apple Inc.’s affirmative defenses of inequitable conduct and unclean hands in a patent infringement suit. The court held that Apple failed to plead either defense with the specificity required by Federal Rule of Civil Procedure 9(b), and that one key allegation, concerning misrepresentation of priority, was legally insufficient. However, the court granted Apple leave to amend most parts of its answer, excluding the priority-related allegation, which it found futile (Smith Interface Technologies, LLC v. Apple Inc., No. 3:23-cv-01187-TWR-BJW (S.D. Cal. Jan. 28, 2026)).

Infringement dispute. Smith Interface filed the instant lawsuit alleging that Apple’s devices using iOS infringed its patent on switching between graphical user interfaces based on input context. Smith Interface’s asserted U.S. Patent No. 10,656,754 (’754 patent) is titled “System and Method for Switching Between User Interfaces.” It covers methods for enabling seamless switching between input modalities (e.g., touch and non-touch) on computing devices.

Smith Interface filed its Third Amended Complaint in March 2024. Apple filed an Amended Answer in August 2025, asserting affirmative defenses of inequitable conduct and unclean hands. Smith Interface then moved under Rule 12(c) for judgment on the pleadings, arguing that Apple’s defenses were legally and factually deficient.

Misrepresented priority. Apple alleged that the ’754 patent was improperly designated as a continuation, rather than a continuation-in-part, of a 2011 provisional application. According to Apple, this misdesignation misled the USPTO about the appropriate priority date, misdirecting the prior art search. The court rejected this theory entirely. It found that the so-called “new matter” Apple identified had been disclosed in the provisional application and was expressly incorporated by reference into the ’754 patent. Citing PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1304 n.3 (Fed. Cir. 2008), the court explained that incorporation by reference of earlier disclosures does not constitute new matter and cannot serve as a basis for inequitable conduct. Because the argument was legally flawed, the court granted Smith Interface’s motion and denied Apple leave to amend this aspect of its pleading.

Inequitable conduct with particularity. Further, Apple alleged that Smith Interface’s inventor and patent counsel withheld material prior art, specifically, information regarding Apple’s iOS 12 and 13 operating systems, and attempted to bury relevant disclosures among over 1,000 references submitted during prosecution. The court held that Apple’s pleading failed to identify with particularity the “who” behind the misconduct. It emphasized that Rule 9(b) requires a party to allege the “who, what, when, where, and how” of the alleged fraud, citing Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1329 (Fed. Cir. 2009). Apple’s use of vague qualifiers such as “at least” and “either alone or with others” did not meet this standard. The court further noted that organizations, such as law firms, cannot satisfy the duty of candor to the USPTO, which applies only to individuals. Accordingly, the court struck this defense but granted Apple leave to amend it.

Unclean hands defense. The court held that Apple’s unclean hands defense, to the extent it was based on the same inequitable conduct allegations, likewise failed under Rule 9(b). Because the defense was grounded in alleged fraud before the USPTO, it was subject to the heightened pleading standard. Citing PetEdge, Inc. v. Yahee Tech. Corp., No. 1:15-CV-13171-ADB, 2017 WL 1702276, at *3 (D. Mass. May 2, 2017), the court held that Apple’s conclusory assertion that Smith Interface engaged in “particularly egregious misconduct” was unsupported by specific factual allegations. The court also found that Apple’s failure to clearly identify who committed the alleged misconduct rendered the pleading defective. This portion of the unclean hands defense was dismissed with leave to amend.

Prosecution laches. Further, Apple asserted unclean hands based on prosecution laches, claiming that Smith Interface unreasonably delayed prosecution to gain a competitive advantage. Because this theory does not involve fraud, the court applied the more lenient Rule 8 pleading standard. Nevertheless, it held that Apple’s generic assertion that the ’754 patent was “unenforceable” failed to provide fair notice of the factual basis for the defense. Citing Hyatt v. Hirshfeld, 998 F.3d 1347, 1362 (Fed. Cir. 2021), the court struck this portion of the defense but permitted amendment.

Fraud on the court. Additionally, Apple alleged that the applicants had “planned and executed schemes to defraud this Court.” The court found no facts pleaded to support this claim and noted that fraud on the court must be pleaded with particularity under Rule 9(b). Apple failed to explain who committed the alleged fraud, when or how it occurred, or why it constituted fraud. The court granted Smith Interface’s motion with respect to this allegation as well.

Rule 12(c) motion. Apple argued that Smith Interface’s Rule 12(c) motion was untimely, noting that it was filed almost a year after Apple’s original answer and after the parties had engaged in substantial discovery. Referencing General Elec. Co. v. Sargent & Lundy, 916 F.2d 1119, 1131 (6th Cir. 1990), the court emphasized that Rule 12(c) motions should be adjudicated when they are well-supported and do not prejudice the opposing party, even if raised later in the pleadings stage. The court found that the trial had not been delayed and that Apple failed to show prejudice, and it exercised its discretion to consider the motion on the merits.

Leave to amend. The court granted Apple leave to amend its affirmative defenses of inequitable conduct and unclean hands, but it denied leave to amend its theory concerning the patent’s priority designation. It held that further pleading of the priority issue would be futile because the relevant matter had been properly incorporated by reference. Apple was directed to file a Second Amended Answer by February 27, 2026.

The case is No. 3:23-cv-01187-TWR-BJW.

Judge: Robinson, T.

Attorneys: Brett Christopher Govett (Norton Rose Fulbright US LLP) for Smith Interface Technologies, LLC. Erik R. Fuehrer (DLA Piper LLP) for Apple Inc.

Companies: Smith Interface Technologies, LLC; Apple Inc.

Cases: Patent CaliforniaNews