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

Defendant demands documents concerning drugs other than cyclobenzaprine, which is the subject of plaintiffs’ NDA, defendant’s ANDA and the patent-in-suit.  Defendant asserts inequitable conduct based on the failure to disclose the prior art patent to the patent examiner during the prosecution of the ‘739 patent.  Plaintiff objects to the requests on relevance grounds.  The parties have been before the Court before on similar issues at which time the Court granted and denied certain requests.  Defendant now claims that it has more narrowly focused its earlier discovery by limiting its document requests to those materials “evidencing the two inventors’ awareness and understanding of” certain purported prior art that was not submitted to the PTO during “a defined period of time.  The Court finds defendant’s new requests to be nothing more than an “end run” around the Court’s prior decision.  Defendant is requesting substantial discovery under Rule 34 on subjective intent related to prior art not yet plead as a basis for inequitable conduct to figure out whether it has any basis for inequitable conduct in relation to that prior art.  It is improper to use discovery in search of a factual predicate required to be pled in the first instance.  However, the failure to disclose the ‘215 patent during the prosecution of the ‘793 patent as inequitable conduct has been alleged.  The Court orders limited discovery to address this issue only.