SURFCAST, INC. Plaintiff, Represented by Amy Araya Gianni Minutoli DLA Piper LLP (US) Benjamin S. Piper Timothy J. Bryant Preti, Flaherty LLP Amy H. Walters Erica Judith Pascal John Allcock Kathryn Riley Grasso Tiffany Carol Miller James M. Heintz DLA Piper LLP (US)
MICROSOFT CORPORATION, Defendant Represented by Peter J. Brann Stacy O. Stitham Brann & Isaacson Rishi Preet Chhatwal Scott M. Border Joseph A. Micallef Wonjoo Suh Sidley Austin LLP Dan K. Webb Raymond C. Perkins Winston & Strawn, LLP Ellen S. Robbins Herman Fitzgerald Webley Jr. John Weatherby McBride Richard Alan Cederoth Sidley Austin LLP
REDACTED  ORDER DENYING DEFENDANT’S MOTION TO DISMISS FOR WITNESS TAMPERING
Jon D. Levy U.S. District Judge
SurfCast, Inc. claims that Microsoft Corporation directly and willfully infringed its patent, “System and Method for Simultaneous Display of Multiple Information Sources, ” U.S. Patent No. 6, 724, 403 (the “‘403 Patent”). Microsoft has moved to dismiss SurfCast’s complaint on the basis of witness tampering. Def.’s Mot. to Dismiss, ECF No. 122-1. The motion has been fully briefed and oral argument was held on June 4, 2014.
Microsoft asserts that___ Def.’s Mot. at 10. Microsoft asks that I exercise the court’s equitable authority to dismiss the case for witness tampering, arguing that dismissal in this case would be consistent with “Supreme Court precedent and the ancient doctrine of unclean hands.” Id. Because I am not persuaded that dismissal is justified under the circumstances presented, I DENY the Motion to Dismiss.
There are no serious disputes between the parties as to the facts that are material to Microsoft’s motion.
Lagermann was SurfCast’s co-founder and Chief Technology Officer. Def.’s Mot. at 3; Plaintiff’s Response 5, ECF No. 132-1. In 1998, Lagermann and Ovid Santoro, SurfCast’s Chief Executive Officer, invented the “System and Method for Simultaneous Display of Multiple Information Sources, ” for which they obtained a patent in 2000. Claim Construction Order 4, ECF No. 158. The ‘403 Patent describes a computerized method of presenting information from a variety of sources on a display device; this method organizes content into a grid of tiles which can independently refresh its content. See Id . at 4–5.
Santoro is the focus of Microsoft’s inequitable conduct defense to SurfCast’s infringement claim. Def.’s Mot. at 5. Microsoft contends, and SurfCast does not dispute, that “Lagermann . . . has detailed knowledge about the most relevant prior art and of SurfCast’s awareness of that prior art during the prosecution of the [‘403 Patent].” Id. at 4.____In short, it is undisputed that Lagermann possesses detailed personal knowledge regarding the validity and enforceability of the ‘403 Patent. Id. At 5.
A. The Parties’ Positions
Microsoft claims that the complaint should be ordered dismissed with prejudice on the basis of unclean hands. Def.’s Mot. at 9. Alternatively, Microsoft asks the Court to preclude SurfCast from eliciting or relying on Lagermann’s testimony, to compel SurfCast to produce Lagermann at trial and permit Microsoft to examine him, and to instruct the jury on the effect of SurfCast’s alleged witness tampering. Def.’s Mot. At 14–16.
SurfCast’s response is twofold. First, SurfCast argues that the court need not address the merits of Microsoft’s motion because the motion is not authorized by the Federal Rules of Civil Procedure in that: (1) it cannot be treated as a motion for sanctions pursuant to Fed.R.Civ.P. 11 because Microsoft failed to comply with the rule’s service requirement; (2) it does not qualify as a motion to dismiss pursuant to Fed.R.Civ.P. 12(b) because Microsoft fails to present a defense ...