How Much is Enough? – A Well-Pled Counterclaim

How specific must the allegations be in a counterclaim for inequitable conduct or affirmative defense of patent misuse to withstand a motion to strike? That was the issue recently before Judge Robinson in the matter. C.A. 06-164, Memorandum Order (D. Del. Jan. 26, 2007) (Robinson, J.). It is well-established that inequitable conduct and patent misuse must be pled with particularity. The Court held that in order to be so pled, the allegation must “‘ specify the time, place and content of any alleged misrepresentations made to the PTO or otherwise ‘give the defendant [d] notice of the precise misconduct alleged.”” Id. (internal citations omitted). Because the defendants identified the misrepresentation and “the basis for asserting knowledge on the part of the applicants� there is nothing vague about ‘time, place or content’ vis a vis [the inequitable conduct allegation]” and therefore the Court denied the motion to strike.

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