In a recent memorandum opinion, Judge Andrews considered the sufficiency of a defendant’s defensive pleadings, and most notably dismissed inequitable conduct counterclaims for failure to sufficiently plead the “who” and “when” of the alleged misconduct. XpertUniverse, Inc. v. Cisco Systems, Inc., C.A. No. 09-157-RGA (D. Del. June 19, 2012). The Court explained, “[i]n order to adequately plead inequitable conduct, the claimant must ‘recite facts from which the court may reasonably infer that a specific individual both knew of invalidating information that was withheld from the PTO and withheld that information with a specific intent to deceive the PTO.’” Id. at 4 (quoting Delano Farms Co. v. Ca. Table Grape Comm’n, 655 F.3d 1337, 1350 (Fed. Cir. 2011)). Cisco’s allegations included repeated references to one individual, Zelkin, whom Cisco labeled “an officer or employee of XU during prosecution”. Id. at 4. Each reference to this officer or employee was further qualified by the inclusion of the language “or one or more of the other individuals listed as an inventor”. Id. at 4-6. The Court explained, “Cisco’s allegations that Zelkin was an XU ‘officer or employee’ and that he ‘knew or should have known’ of the prior sales and prior art fall short of concretely alleging that he actually knew of the invalidating information.” Id. at 6. Further, the Court added, “[t]hese scant allegations are further diluted by the qualifiers that either Zelkin, or ‘one or more’ of the other inventors, knew about the prior sales and art and their materiality – affording the possibility that Zelkin, the only specific individual named, did not know about them at all.” Id. Cisco was given seven days to amend its pleadings to the extent possible to sufficiently allege inequitable conduct. Id. at 14.
XpertUniverse, Inc. v. Cisco Systems, Inc., C.A. No. 09-157-RGA (D. Del. June 19, 2012).[scribd id=98660381 key=key-1sajzq65m57kqozj9mbu]