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Judge Stark Grants Motion to Strike Inequitable Conduct Defense

In their answer in this patent infringement action, Defendants asserted an affirmative defense of inequitable conduct. The inequitable conduct defense alleged that the inventor and prosecuting attorney of the patent-in-suit had failed to disclose to the PTO an arguably-relevant interference and that the patent-in-suit would not have been granted but for that failure to disclose the interference. The interference in question involved both a patent application and an issued patent. The patent-in-suit claims priority to one application, which in turn claims priority to the application subject to the interference. Defendants argued that because the interference concluded with a determination that this application had been invented “by another,” the subject matter of the patent-in-suit had also been invented by another. Plaintiff moved to strike the affirmative defense, and Judge Stark granted the motion, finding that the Board of Patent Appeals and Interferences had made no priority determination but instead disposed of the interference a barred by the applicable statue of repose. Thus, the interference in question was not material to patentability, rendering the inequitable conduct defense implausible. Elm 3DS Innovations, LLC v. Micron Tech., Inc., et al., C.A. No. 14-1431-LPS, Memo. Or. at 1-3 (D. Del. Aug. 10, 2015).

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