My name is Lindsey Gellar, and I am an associate at Shaw Keller, posting for the first time here. Yes, Andrew has finally managed to rope another lackey (associate) into writing for the blog. Today, I'm going to look at what it takes to plead equitable defenses in the District of Delaware.
When it comes to pleading most affirmative defenses, the bar is on the floor. An affirmative defense does not need to be plausible to survive; it must merely provide fair notice of the issue involved. Internet Media Corp. v. Hearst Newspapers, LLC, C.A. No. 10-690-SLR, 2012 U.S. Dist. LEXIS 126788, at *7 (D. Del. Sept. 6, 2012). But at least one affirmative defense requires more:
[I]n pleading inequitable conduct in patent cases, Rule 9(b) requires identification of the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO.
Exergen Corp. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 (Fed. Cir. 2009).
The Federal Circuit was specific in Exergen—inequitable conduct is held to the heightened 9(b) standard—but its reasoning could be extended to other defenses that allege "circumstances constituting fraud or mistake." Id. at 1326. So the question for today is: do our District of Delaware judges agree?
I searched for opinions in which District of Delaware judges analyzed whether other affirmative defenses are held to the heightened pleading standard of Rule 9(b), and I found that several of our judges applied the more stringent 9(b) standard.
Judge Andrews has applied the Rule 9(b) standard to other affirmative defenses, including unclean hands, waiver, estoppel, and patent misuse. See, e.g., Bench Walk Lighting LLC v. Everlight Elecs. Co., C.A. No. 20-49-RGA, 2020 U.S. Dist. LEXIS 157701, at *2 (D. Del. Aug. 31, 2020); Allergan Holdings Unlimited Co. v. MSN Labs. Priv. Ltd., C.A. No. 23-794-RGA, 2024 U.S. Dist. LEXIS 126557, at *11 (D. Del. July 17, 2024). However, Judge Andrews has made an important distinction for an unclean hands defense: whether Rule 8 or 9(b) controls depends on the specific conduct alleged. Equil IP Holdings LLC v. Akamai Techs., Inc., 722 F. Supp. 3d 450, 457 (D. Del. 2024). Where the specific conduct alleged sounds in fraud, Rule 9(b) controls. Id. If the specific conduct alleged does not sound in fraud, Rule 8 controls.
In at least one case, Judge Williams has stricken an equitable defense alleging equitable estoppel, waiver, acquiescence, implied license, patent misuse, and unclean hands (yes, this was alleged as a single defense) because the defendant failed to plead each defense with the requisite particularity under Rule 9(b). Tigo Energy Inc. v. SMA Solar Tech. Am. LLC, C.A. No. 22-915-GBW, 2024 U.S. Dist. LEXIS 38094, at *9-11 (D. Del. Mar. 4, 2024).
Judge Connolly has applied the 9(b) standard to an unclean hands defense. Cephalon, Inc. v. Slayback Pharma LLC, C.A. No. 17-1154-CFC, 2019 U.S. Dist. LEXIS 129020, at *4 (D. Del. Aug. 1, 2019).
On several occasions, Judge Fallon analyzed an unclean hands defense under Rule 9(b). See, e.g., Jackson v. Seaspine Holdings Corp., C.A. No. 20-1784-RGA, 2023 U.S. Dist. LEXIS 140794, at *23 (D. Del. Aug. 11, 2023). In following Judge Andrews, Judge Fallon relies on the specific conduct alleged in determining the appropriate pleading standard. See, e.g., Barry v. Stryker Corp., 2023 U.S. Dist. LEXIS 54436, at (D. Del. Mar. 20, 2023).
Judge Hatcher saw this issue once but declined to decide it because the pleadings were adequate under either standard. Pipstek, LLC v. Biolase Inc., C.A. No. 23-011, D.I. 36 (D. Del. July 11, 2023).
To my knowledge, Judge Noreika, Judge Hall, Judge Burke, and Judge Tennyson have not addressed this issue.
Ultimately, enough of our District of Delaware judges have applied the heightened Rule 9(b) standard to equitable defenses that you're probably better off pleading your equitable defenses with particularity.
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