Magistrate Judge Stark recently issued a memorandum order in Aerocrine AB v. Apieron Inc., C. A. 08-787-LPS (D. Del. Mar. 30, 2010). The order granted a motion by plaintiff Apieron to amend their complaint to add inequitable conduct allegations, and denied defendant Aerocrine’s motion for judgment on Apieron’s pleadings alleging inequitable conduct.
The inequitable conduct allegations arose from the deposition of a non-party scientist in the field of the patents. The scientist explained that he had performed research directed to the same subject matter of the patents, and prior to their earliest filing date. The scientist also stated that he had presented his research at a conference attended by the inventors of the asserted patents, and that “it would be ‘hard for [him] to imagine’ that [one of the inventors] was not aware of his work, because [they] went to meetings together between 1993 and 1999, ‘knew each other and talked about [the research].'” Id. at 5. According to the proposed amendment to the complaint, the inventors knew of the research presented at the conference, and the research anticipates every element of at least one (specific) claim of each of the patents. None of the inventors disclosed the research to the patent office.
The Court granted the motion to amend the complaint, because it “was filed less than a month after Apieron took [the scientist's] deposition and became aware of the basis for its allegations of inequitable conduct,” and there was no undue prejudice or evidence of bad faith or a dilatory motive in their conduct. The Court also denied Plaintiff’s opposing motion for judgment on the pleadings, holding that that these allegations, laid out with detail in the amended complaint, were enough to plead inequitable conduct with particularity as required by the Federal Circuit’s Exergen decision. Id. at 22.