Delaware Patent Litigation Report : Delaware Intellectual Property Lawyer & Attorney : Morris James Law Firm : Delaware Patent Litigation Report

Defendants seek to amend their Answer, Affirmative Defenses, Counterclaim and Jury Demand to assert claims and defenses of inequitable conduct and patent exhaustion and/or license.  Because there is no opposition to add the affirmative defenses leave is granted.  Defendants’ motion is timely and is based on conduct arising during the course of reexamination proceedings before the PTO.  Plaintiff argues that defendants waived their inequitable conduct defense by failing to pursue it in prior litigation between the parties.  Defendants’ defense and counterclaim of inequitable conduct are well pled. Issues of waiver are factual and not suited for disposition at this juncture.  Moreover, the Court is skeptical that waiver principles necessarily apply to the new patents involved in this litigation or to inequitable conduct that is alleged to have occurred during the reexamination proceedings during the prior litigation.  Finally, principles of claim preclusion are not applicable because inequitable conduct was not previously litigated.