Judge Brinkema Allows Inequitable Conduct Claims to Go to Trial
After Exergen v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009) (summarized here), it appeared that claims of inequitable conduct would fail at the pleading stage because of the requirements of a specific “who, what, when, where and how” of the alleged misrepresentation and specific facts that permitted an inference of an intent to deceive.
A recent case before Judge Brinkema, though, breathes some new life into inequitable conduct claims in the EDVA. Rolls-Royce PLC v. United Tech’s. Corp., 1:10CV457, 2011 U.S. Dist. LEXIS 20679 (E.D.Va. March 2, 2011) (Brinkema, J.) (found here). The key is the specificity of the allegations. If a defendant's allegations state a plausible claim of inequitable conduct, Judge Brinkema concluded, questions of materiality and intent are merely issues of disputed fact unsuitable for resolution on either a motion to dismiss or a motion for summary judgment.
In her decision on the motion to dismiss in Rolls-Royce, Judge Brinkema addressed four theories of inequitable conduct:
- First, the defendant claimed the inventor had filed a false inventor declaration. Judge Brinkema held that the inventor’s deposition testimony presented a plausible claim of a false statement and “would lead to a reasonable inference that Rolls-Royce intended to deceive the PTO by filing the declaration.”
- Second, the defendant alleged that Rolls-Royce had falsely claimed a priority date in a continuation-in-part application in order to avoid disclosure of material prior art. Judge Brinkema held that the defendant’s specific identification of material prior art and its explanation of Rolls-Royce's reasons for its conduct date were sufficient. Whether the application contained new subject matter, the Court held, was a question of fact.
- Third, the defendant asserted that Rolls-Royce failed to disclose several pieces of prior art and proffered reasons why the art was material, not cumulative and might have impacted the examiner’s review. Rolls-Royce claimed that the art was cumulative, but Judge Brinkema held that it could not make that determination on a motion to dismiss.
- Finally, the defendant claimed that Rolls-Royce misrepresented the defendant’s patent during prosecution. Rolls-Royce conceded that it had mischaracterized the patent but claimed its statements were immaterial. Again, Judge Brinkema held that the allegations satisfied Rule 9(b)’s standard of specificity and that whether Rolls-Royce’s statement was material required evidence beyond the scope of a motion to dismiss.
In essence, Judge Brinkema concluded at the motion to dismiss stage that the defendant had established a prima facie case of inequitable conduct, particularly on issue of intent to deceive. Indeed, Judge Brinkema denied Rolls-Royce’s motion for summary judgment based on a lack of intent to deceive on April 8. Thus, the lesson for litigants may be that if claims of inequitable conduct are sufficiently fact-based to overcome a motion to dismiss, they will also create a genuine issue of fact to defeat summary judgment.
