Judge Sue L. Robinson recently considered plaintiff’s renewed motion to dismiss defendant’s counterclaim of inequitable conduct. Quest Integrity USA, LLC v. Cokebusters USA Inc., C.A. No. 14-1483-SLR (D. Del. July 22, 2015). Judge Robinson previously denied defendants’ request to transfer to the Southern District of Texas and plaintiff’s motion for a preliminary injunction.
Plaintiff’s motion argued that defendant’s counterclaim did not adequately show “but-for materiality” or “intent to deceive.” Id. at 7. As a preliminary matter, in their opposition, defendant argued that because plaintiff attached an exhibit to its motion containing a portion of the prosecution history, plaintiff’s motion to dismiss was converted to a summary judgment motion. Id. at 2 fn.4. Judge Robinson disagreed, noting that the prosecution history is a “public record,” and public records can be considered on a motion to dismiss. Id.
As to the merits of the motion, Judge Robinson noted that because the counterclaim was based on nondisclosure of prior art, defendant had to prove by clear and convincing evidence that “the applicant knew of the information, ‘knew that it was material, and made a deliberate decision to withhold it.'” Id. at 7 (quoting Therasense v. Becton, Dickinson & Co., 649 F.3d 1276, 1290 (Fed. Cir. 2011). Defendant alleged that the invention claimed in the patent in suit “was not new, was obvious from existing technology, and had been sold before the bar date.” Id. at 8. If the PTO had known of the prior art, it would not have issued the patent. Id. Judge Robinson, noting that the Court need not decide “the merits of the claim, only whether materiality had been alleged with sufficient particularity,” found that defendant’s claims passed muster. Id. at 8-9. Regarding intent to deceive, Judge Robinson also found the pleading sufficient because defendant pled adequate evidence of lack of candor with the PTO, from which intent to deceive “is the ‘single most reasonable inference  to be drawn from the evidence.” Id. at 10 (quoting Therasense, 649 F.3d at 1290).