Judge Sue L. Robinson recently denied defendant’s motion “seeking to amend its answer and counterclaims to include an affirmative defense and counterclaim of inequitable conduct.” Butamax™ Advanced Biofuels LLC v. Gevo, Inc., C.A. No. 11-54-SLR, at 2 (D. Del. Feb. 13, 2013). Because defendant filed its motion three months after the scheduling order’s deadline to amend the pleadings, defendant was required to show “good cause under Rule 16(b) for its delay.” Id. at 4. Judge Robinson found that defendant had shown good cause, as the information relevant to its inequitable conduct defense and counterclaim was not produced until March 29, 2012—one day before the deadline to amend the pleadings—and defendant was required to sift through the large volume of documents produced to confirm with “particularity” its inequitable conduct theory. Id. at 5-6. Judge Robinson further found that plaintiff would not be prejudiced by this amendment, as “[i]nformation regarding its own inequitable conduct lies largely with plaintiff.” Id. at 6.
Despite these findings, Judge Robinson ultimately concluded that defendant failed to plead inequitable conduct with sufficient particularity and defendant’s amendment was therefore futile. Id. at 7-9. When pleading inequitable conduct, as Judge Robinson explained, the heightened pleading standard of Fed. R. Civ. P. 9(b) applies, which requires a party to identify “the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO.” Id. at 4 (quoting Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 (Fed. Cir. 2009)). This standard requires the “knowledge” and the “intent to deceive” elements of inequitable conduct to be attributed to a specific individual. See id. at 7-8. Judge Robinson found that the “relationship between the general knowledge allegedly depicted on internal presentation slides” upon which defendant intended to rely “and the named individuals is too tenuous to show ownership of the knowledge or attribute a specific intent to deceive.” Id. at 9. That the named individuals did not withhold this general knowledge was corroborated by “the availability of such general knowledge in other publications, at least one of which was cited in the patent specifications.” Id. Accordingly, defendant’s motion for leave to amend its pleading was denied. Id.