Judge Stark recently considered Defendants’ Motion to Strike and Dismiss in his Report and Recommendation in Power integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., et al., C.A. No. 08-309-JJF-LPS (D. Del. Dec. 18, 2009). Plaintiff filed this patent infringement action alleging that defendants infringed three of plaintiff’s patents. Defendants subsequently filed counterclaims alleging that plaintiff infringed three of defendants’ patents. Plaintiff’s answer, filed simultaneously with the Federal Circuit’s issuance of an opinion in Exergen, included “defenses and counterclaims based on [defendants’] allegedly inequitable conduct during the prosecution of the asserted [defendants’] patents.” Id. at 2. Both plaintiff and defendants subsequently filed various amended answers and amended counterclaims. Id.
Defendants’ pending motion was directed at plaintiff’s counterclaims alleging inequitable conduct. Id. Plaintiff’s counterclaim alleged that “‘at least one of the named inventors and at least one of the patent agents of records, with knowledge of the withheld material information and the specific intent to deceive, failed to disclose to the PTO material, non-cumulative prior art known to them during prosecution.’” Id. at 3 (citation omitted). Defendants argued that plaintiff failed to meet the heightened pleading standard under Exergen because plaintiff failed to prove “a particularized basis for its claims of inequitable conduct or the inferences that must be drawn with respect to knowledge and intent.” Id. at 14. Judge Stark agreed, “to a limited extent.” Id. For example, plaintiff’s counterclaim related to its ‘972 patent against a patent agent that prosecuted co-pending patents, but not the one in question, failed to be pled with particularity because “[the patent agent] was not the patent agent who prosecuted the ‘972 patent . . . and [plaintiff] does not allege any facts to show that [the patent agent] was otherwise an “‘individual associated with the filing or prosecution of’ the ‘972 patent.” Id. at 15 (citing Exergen). With regard to plaintiff’s ‘780 patent, Judge Stark found that plaintiff failed “to allege the ‘what’ and ‘where’ of its inequitable conduct allegations. Id. at 16.