Inequitable conduct counterclaim is allowed where there was no delay or prejudice to the plaintiff
Roquette Freres v. SPI Pharma, Inc., et al., C.A. No. 06-540-MPT, May 21 , 2009.
Thynge, M. J. Defendant’s motion to amend its answer to add a defense and counterclaim based on inequitable conduct is granted. Plaintiff’s motion for leave to file a sur-reply is also granted and the arguments set forth therein were considered by the Court.
The Magistrate considers defendant’s motion to amend its Answer to the Second Amended Complaint seven months after the deadline in the scheduling order. The schedule was subsequently extended for fact and expert discovery. Defendant seeks to add an affirmative defense and counterclaim based on inequitable conduct that plaintiff knowingly and intentionally misled the PTO regarding the content of prior art and withheld material information. Plaintiff opposes the motion and seeks permission to file a sur-reply brief. Plaintiff’s amendments plead a new theory of inequitable conduct which is based on the additional information that was provided through the depositions of the inventors which took place 6 months after the deadline to amend the pleadings. Therefore, there is no delay. Moreover, plaintiff is not prejudiced by the proposed amendments since the information which forms the basis of the new theory would have been in its control. Thus, defendant’s motion to amend is granted.
