In Robert Bosch LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR (D. Del. Oct. 19, 2009), Judge Robinson applied the Federal Circuit Exergen decision to Plaintiff’s motion to amend its complaint to add a claim of inequitable conduct. Plaintiff based its motion to amend on the assertion that one of the patent-in-issue’s inventors submitted an affidavit to the PTO containing a misrepresentation regarding the affiant’s review of the related application. Id. at 3. While agreeing with Plaintiff that submitting a false affidavit to the PTO “establishes at least a threshold level of materiality,” Judge Robinson noted that “there was no allegation that the affiant at bar did not contribute to the invention, or that the application that matured into the ‘380 patent contains otherwise false representations.” Id. at 4. Judge Robinson denied Plaintiff’s motion to amend because, under Exergen, she will not allow an inequitable conduct claim “to be pursued after the close of discovery when there are insufficient allegations of underlying facts from which [she] may reasonably infer that the material misrepresentation was made with a specific intent to deceive the PTO.” Id. (emphasis added).
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