A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: Inequitable Conduct

Inequitable conduct is, in my humble opinion, the most disappointing claim. Whenever I see it in a pleading, I have a fleeting moment of excitement—maybe the patentee kidnapped the examiner's dog, maybe hypnotism will play a roll, maybe just a classic honeypot?

Roof of rife!
Roof of rife! AI-Generated, displayed with permission

But it's never that. 9 times out of 10, its a reference that wasn't disclosed, but it probably should have been disclosed, yadda, yadda, yadda.

Despite the high standard for pleading IC (and how boring I find it), the claim tends to be fairly resilient. A quick look at recent opinions shows that Delaware Courts have denied the last 7 motions for summary of judgment of no inequitable conduct. You have to go all the way back to February of 2022 to find a success (Extang Corp. v. Truck Accessories Group, LLC, C.A. No. 19-923-KAJ (D. Del. Feb. 8, 2022) (Order)).

Judge Williams' decision last month (unsealed last week) in EIS, Inc. v. Intihealth Ger GmbH, C.A. No. 19-1227-GBW (D. Del Aug. 23, 2023), shows just hard it can be to get rid of inequitable conduct. The inequitable conduct claim there was based on the failure to effectively disclose an allegedly material reference. The reference was in a foreign language, but the applicant had only translated the abstract for the examiner.

The plaintiff moved for summary judgment of no inequitable conduct alleging all of the usual grounds—insufficient evidence of intent to deceive, lack of materiality, all the elements. The argument on lack of materiality was particularly strong because ...

"Hmm, I wonder if the Court would do two trials..." Juan Rumimpunu, Unsplash

Defendants are often looking for ways to resolve cases early—§ 101 motions to dismiss, motions for judgment on the pleadings, early summary judgment motions, and so on. Sometimes these can succeed, but it can vary a lot depending on the judge and the circumstances.

Here is one I haven't seen before: In Ravgen, Inc. v. Biora Therapeutics, Inc., C.A. No. 20-1734-RGA-JLH (D. Del.), the defendant moved for the Court to schedule a one-day bench trial on inequitable conduct just after the close of expert discovery, and before the summary judgment deadline—around 7-10 months before trial.

Their logic was that a "single one-day …

Attorney searching for factual support for their inequitable conduct allegations
Attorney searching for factual support for their inequitable conduct allegations Agence Olloweb, Unsplash

Yesterday, in Intercept Pharmaceuticals v. Apotex Inc., C.A. No. 20-1105-MN (D. Del. Sept. 1, 2022), Judge Hall granted a motion to amend to add inequitable conduct allegations almost a year after the deadline for amendment in the scheduling order.

Most D. Del. scheduling orders include a deadline for motions to amend or to join additional parties. Normally, the standard for motions to amend in the Third Circuit is relatively easy to meet. But when there is a scheduling order deadline for amendment, the Courts has held that parties must show "good cause" under Rule 16 if they move to amend after the …