The intent prong of inequitable conduct was properly pled
Wyeth Holdings Corporations, et al. v. Sandoz, Inc., Civ. Action No. 09-955-LPS-CJB, February 3, 2012.
Burke, M. J. Report and recommendation denying motion to dismiss or strike counterclaim and affirmative defense of inequitable conduct.
Plaintiffs in this ANDA case involving a generic injectable form of tigecycline moved to dismiss or strike defendant’s inequitable conduct counterclaim and affirmative defense. Briefing was completed on December 8, 2011, and an oral argument held January 31, 2012. Defendant first asserted the defense two days after the close of fact discovery. In lieu of answering, plaintiffs moved to dismiss the counterclaim and/or strike the affirmative defense of unenforceability based on inequitable conduct. Defendant maintained that the patent applicants made certain claims to the PTO Examiner that amounted to “affirmative misrepresentations of material fact” in an effort to continue examination and overcome a rejection. Plaintiffs asserted that defendant failed to properly plead the counterclaim/defense. The motions were denied. To adequately plead the intent prong of inequitable conduct following Therasense and Exergen, a claimant need only allege facts from which the Court could reasonably infer that the applicant made a deliberate decision to deceive the PTO. Further, materiality could be satisfied by attorney argument that amounts to material mischaracterizations of the prior art.
