InMode Ltd. v. BTL Industries, Inc.

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UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
___________________________________
)
INMODE LTD., 	)
)
Plaintiff, 	)
) 	Civil Action
v. 	) 	No. 24-cv-12955-PBS
)
BTL INDUSTRIES, INC. d/b/a BTL 	)
AESTHETICS, 	)
)
Defendant. 	)
______________________________ 	)
ORDER
April 9, 2026
Saris, J.
In 	this 	patent 	infringement 	suit 	regarding 	U.S. 	Patent 	No.
8,961,511 	(“the 	’511 	patent”), 	Plaintiff 	InMode 	Ltd. 	(“InMode”)
moves 	to 	dismiss 	the 	third 	counterclaim 	and 	fifth 	affirmative
defense raised by BTL Industries, Inc. (“BTL”), in which BTL raises
the defense of inequitable conduct. After hearing, the Court DENIES
InMode’s motion to dismiss (Dkt. 174).
Contrary 	to 	InMode’s 	arguments, 	BTL 	has 	pled 	with
particularity 	“the 	specific 	who, 	what, 	when, 	where, 	and 	how 	of
the . . . [alleged] omission committed before the” U.S. Patent and
Trademark 	Office 	(the 	“PTO”). 	Exergen 	Corp. 	v. 	Wal-Mart 	Stores,
Inc., 	575 	F.3d 	1312, 	1327 	(Fed. 	Cir. 	2009); 	see 	Fed. 	R. 	Civ. 	P.
9(b). 	As 	to 	the 	“who” 	and 	“when,” 	BTL 	alleges 	that 	Dr. 	Richard
Shoop, a prosecuting attorney for the ’511 patent who concurrently
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had 	power 	of 	attorney 	over 	U.S. 	Patent 	No. 	6,463,331 	(“the 	’331
patent”), withheld material information regarding the ’331 patent
from 	the 	PTO 	between 	June 	9, 	2014, 	and 	February 	24, 	2015. 	See
Exergen, 575 F.3d at 1329 (holding that the pleader must “name the
specific individual” who allegedly committed inequitable conduct).
As to the “what” and “where,” BTL cites specific information from
the ’331 patent that allegedly would have been material to the PTO
in 	considering 	the 	’511 	patent’s 	independent 	claims 	directed 	to
the treatment of female genital tissue. See id. (holding that the
pleader must “identify which claims, and which limitations in those
claims, the withheld references are relevant to, and where in those
references 	the 	material 	information 	is 	found”); 	’511 	patent 	at
15:48-52, 	17:13-17 	(limitations 	referring 	to 	“target 	tissue,”
whose 	definition 	includes 	reference 	to 	“female 	genital 	tissue”).
And as to the “why” and “how,” BTL alleges that the patent examiner
believed that the record included no prior references directed to
the 	treatment 	of 	female 	genital 	tissue 	and 	that 	the 	addition 	of
the 	’331 	patent 	therefore 	would 	have 	changed 	the 	outcome 	of 	the
PTO’s decision whether to issue the ’511 patent. See Exergen, 575
F.3d 	at 	1329-30 	(requiring 	allegations 	of 	what 	limitations 	“are
supposedly 	absent 	from 	the 	information 	of 	record” 	and 	how 	“an
examiner 	would 	have 	used 	this 	information 	in 	assessing 	the
patentability of the claims”).
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Further, 	BTL 	has 	adequately 	alleged 	“underlying 	facts 	from
which [the] [C]ourt may reasonably infer that [Dr. Shoop] (1) knew
of the withheld material information . . . , and (2) withheld . . .
this 	information 	with 	a 	specific 	intent 	to 	deceive 	the 	PTO.” 	Id.
at 	1328-29; 	see 	id. 	at 	1328 	(“‘[K]nowledge’ 	and 	‘intent’ 	may 	be
averred 	generally 	. 	. 	. 	.”). 	BTL 	alleges 	that 	Dr. 	Shoop
simultaneously 	had 	power 	of 	attorney 	over 	the 	’331 	patent 	and
communicated 	with 	the 	PTO 	as 	a 	prosecuting 	attorney 	for 	the 	’511
patent. 	The 	Court 	thus 	may 	draw 	the 	reasonable 	inference 	that 	a
“specific 	individual” 	-- 	Dr. 	Shoop 	-- 	knew 	of 	the 	“specific
information” 	in 	the 	’331 	patent 	regarding 	treatment 	of 	female
genital tissue yet withheld that information from the PTO. Id. at
1330. 	And 	BTL 	alleges 	that 	these 	factual 	allegations 	and 	future
evidence will collectively reflect that, as required under Federal
Circuit 	precedent, 	“the 	single 	most 	reasonable 	inference 	able 	to
be 	drawn” 	is 	that 	Dr. 	Shoop 	specifically 	intended 	to 	deceive 	the
PTO. 	Therasense, 	Inc. 	v. 	Becton, 	Dickinson 	& 	Co., 	649 	F.3d 	1276,
1290 	(Fed. 	Cir. 	2011) 	(en 	banc) 	(quoting 	Star 	Sci., 	Inc. 	v. 	R.J.
Reynolds 	Tobacco 	Co., 	537 	F.3d 	1357, 	1366 	(Fed. 	Cir. 	2008)).
Although BTL will be held to a higher standard in subsequent stages
of 	the 	litigation, 	see, 	e.g., 	id. 	(“[A] 	district 	court 	may 	not
infer 	intent 	solely 	from 	materiality.”), 	its 	allegations 	are
sufficient at the pleading stage, given that “a district court may
infer intent from indirect and circumstantial evidence,” id.; see
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also 	Exergen, 	575 	F.3d 	at 	1329 	n.5 	(discussing 	difference 	in
inequitable conduct analysis between pleading stage and merits).
InMode points out that in a recent inter partes review (“IPR”)
decision 	by 	the 	Patent 	Trial 	and 	Appeal 	Board 	(the 	“PTAB”), 	the
PTAB rejected BTL’s contention that all claims of the ’511 patent
were 	obvious 	in 	light 	of 	the 	’331 	patent 	and 	other 	prior 	art
references. See Dkt. 152-1 at 23-35. But InMode does not press the
issue of whether the IPR decision necessarily precludes this Court
from finding a plausible allegation of inequitable conduct at the
pleading 	stage, 	and 	at 	the 	hearing, 	InMode 	expressly 	disclaimed
making such an argument. See Chervon (HK) Ltd. v. One World Techs.,
Inc., No. 19-1293, 2025 WL 2630497, at *6-7 (D. Del. Jan. 13, 2025)
(collecting 	cases 	with 	differing 	approaches 	to 	this 	issue). 	The
Court 	will 	not 	wade 	into 	this 	undeveloped 	territory 	absent
invitation 	or 	briefing, 	particularly 	given 	that 	the 	IPR 	decision
is currently on appeal.
Accordingly, InMode’s motion to dismiss (Dkt. 174) is DENIED.
SO ORDERED.
/s/ PATTI B. SARIS________________
Hon. Patti B. Saris
United States District Judge
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