Judge Andrews strikes inequitable conduct and unclean hands defenses against prosecuting attorneys, but allows them to proceed against inventors

In EMC Corp., et al. v. Pure Storage, Inc., C.A. No. 13-1985-RGA (D. Del. Nov. 5, 2014), Judge Richard G. Andrews recently struck affirmative defenses of inequitable conduct and unclean hands against prosecuting attorneys of one of the patents-in-suit, but denied plaintiffs’ motion to strike these defenses against the inventors of this patent.  Defendant alleged that the patent’s inventors and two prosecuting attorneys failed to disclose a certain prior art patent to the PTO with the intent to deceive.  The focus of plaintiffs’ motion was on what defendant had alleged with respect to intent to deceive.

The Court first held that the prosecuting attorneys’ appointment of power of attorney for the prosecution of the patent (along with five other lawyers) was insufficient to show their “substantial[] involve[ment]” in the prosecution of that patent, nor was this fact sufficient to adequately plead an intent to deceive by these individuals.  Id. at 3.

However, as to the patent’s inventors, the Court denied the motion to strike these defenses, finding that the allegations were sufficient.  Defendant had alleged that the inventors of the patent not disclosed to the PTO were colleagues of the inventors of the patent-in-suit and that both “sets of inventors worked on the same family of products at the same company.”  Id. at 4.  Furthermore, defendant also alleged that the patent-in-suit’s inventors were familiar with and cited other works by at least one of the prior art patent’s inventors.  Id. As a result, the Court granted the motion to strike in part and denied it in part.

In the Order, the Court also clarified that the legal standard for intent to deceive at the pleading stage was governed by Exergen Corp. v. Wal-Mart Stores, Inc., 575 F. 3d 1213 (Fed. Cir. 2009) rather than the higher standard articulated at a bench trial in Therasense, Inc. v. Becton, Dickinson Co., 649 F.3d 1276 (Fed. Cir. 2011).  Plaintiff had cited Therasense for the legal standard.   Id. at 2 n.2.


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