Inequitable conduct claims survive but false marking claims are ruled untimely
Venetec International, Inc., v. Nexus Medical, LLC, C.A. No. 07-57-MPT, March 28, 2008.
Thynge, M.J. Court denies plaintiff’s motion for partial judgment on the pleadings and grants defendant’s motion in part to amend its answer and counterclaim to expand on its unenforceability defense.
Plaintiff moved for partial judgment on the pleadings to dismiss defendant’s inequitable conduct claim. Defendant sought to amend its answer and counterclaim to add false marking claims against plaintiff and to further expand its inequitable conduct claim by including allegations that plaintiff fraudulently withheld notice of the existence of this litigation from the PTO. The motion was brought eight weeks after the deadline for amending pleadings, and within ten months of the filing of the lawsuit. On the inequitable conduct claims, the Court finds that defendant’s proposed amendments suffice to place plaintiff on notice of the alleged inequitable conduct and therefore satisfies the requirement of Rule 9(b). Because inequitable conduct is material to patentability, at a minimum the PTO should have been advised of the existence and/or nature of any allegations relating to validity and/or inequitable conduct relating to the original patent and the nature of the litigation materials relating to these issues. Because there is no dispute that Plaintiff failed to notify the PTO of these proceedings in a timely manner, the Court holds that there is sufficient support for the amendment of its unenforceability defense. In contrast the Court denies defendant’s request to amend its answer and counterclaim to add new false marking claims after the deadline set forth in the Scheduling Order, finding defendant’s delay in investigating these claims prior to the deadline to be fatal. Having found defendant’s unenforceability defense sufficient to state a claim, the Court denies plaintiff’s motion for partial judgment on the pleadings.
A copy of the full opinion is available here.
