Judge Richard Andrews recently considered a motion for leave to file an amended and supplemental answer and counterclaim that would set out various invalidity, inequitable conduct, and other defenses and claims that the defendant wanted to add after obtaining discovery from the plaintiff. See Inventio AG v. Thyssenkrupp Elevator Ams. Corp., C.A. No. 08-874-RGA, Order at 1-2 (D. Del. Jan. 29, 2013). Judge Andrews granted the motion with respect to invalidity defenses that were previously pleaded with less specificity and failure to mark and best mode claims that could be raised without prejudice to further proceedings. With respect to inequitable conduct, however, Judge Andrews found the question to be somewhat more complicated and allowed some claims but denied others. Id.
Judge Andrews focused on the specificity with which a claim was alleged in the proposed amended and supplemental complaint. He found that inequitable conduct claims related to prior art “are the sort that are easily made, recycling the obviousness defenses as inequitable conduct defenses.” Id. at 2. Accordingly, he found that the defendant had not met its burden by claims such as accusations that the inventor “cited prior art to the PTO but did not separately cite the prior art contained within the cited prior art.” Id. Similarly, Judge Andrews denied one best mode claim because it did not make specific allegations but allowed another best mode claim that made “very specific allegations of what the inventor knew about the best mode . . . intent to deceive, materiality, and a reason why the inventor wanted to deceive the PTO.” Id.