In a recent Report and Recommendation, Magistrate Judge Mary P. Thynge found the court should deny plaintiff’s motion to dismiss and strike defendant’s counterclaim and affirmative defense of inequitable conduct. Andrulis Pharmaceuticals Corp. v. Celgene Corp., C.A. No. 13-1644-RGA (D. Del. Jul. 16, 2015). Defendant averred that an inventor and prosecution attorney of the asserted patent engaged in inequitable conduct when they submitted a “December 27, 1999 Response to the PTO, which omitted . . . substantive conclusions of [a] 1996 NYU interim report, and purported to show the ‘enhanced’ effect of thalidomide and carboplatin” for cancer treatment. Id. at 5.
Denying plaintiff’s motion, Judge Thynge first found that defendant pled inequitable conduct with particularity, explaining that defendant provided “the specific who, what, when, where and how” of the material omission. Specifically, Judge Thynge explained that defendant identified that the inventor and prosecuting attorney omitted substantive conclusions from the 1996 NYU interim report from its response to the PTO on December 27, 1999 (i.e., “who,” “what,” “when,” and “where”). Further, Judge Thynge found that defendant identified “how a reasonable examiner would have used the information allegedly concealed”: to determine that the claimed combination “did not have [an] enhanced effect relative to the effect of [carboplatin] alone.” Id. at 8-9 (emphasis added).
Judge Thynge next concluded that defendant sufficiently alleged underlying facts from which the court could infer but-for materiality, explaining that defendant pointed to: (i) “the conclusion by the researchers that the response rate for the combination was similar to the administration of carboplatin alone”; and (ii) the fact that “plaintiff [omitted] that conclusion and represent[ed] that the interim results instead showed an enhanced effect, on which the examiner relied in deciding to issue [the asserted patent].” Id. at 10. Judge Thynge also found that defendant sufficiently alleged that “plaintiff knew of and withheld material information with a specific intent to deceive the PTO.” Id. at 11. Judge Thynge pointed to several facts defendant relied on as evidence of plaintiff’s intent to deceive: “the interim conclusions were not submitted to the examiner, the conclusions found a similar, rather than enhanced, response rate, and plaintiff argued the interim data showed an enhanced effect.” Id.