Judge Mary Pat Thynge recently recommended the Court grant Illumina’s motion to amend its Answer and Counterclaims to assert inequitable conduct. Cornell University v. Illumina, Inc., No. 10-433-LPS-MPT (D. Del. May 27, 2016). In its motion, Illumina alleged “the applicants and prosecuting attorney of the  patents violated their duty of candor to the PTO by filing a false or misleading 37 C.F.R. § 1.131 declaration” during prosecution regarding the applicants reduction to practice of the claimed methods. Id. at 2. According to Illumina, absent the false or misleading statement, the patents would not have issued. Id. at 2-3.
Judge Thynge found that there was good cause to amend and no undue delay, despite the fact that the deadline to amend pleadings had passed, based on the fact that the underlying facts supporting the amendment were obtained and confirmed during discovery, in particular through deposition testimony. Id. at 10-13. The basis for Cornell’s opposition was futility because the proposed amended pleading did not adequately plead inequitable conduct. Id. at 13. Judge Thynge disagreed, finding that the inequitable conduct allegations were pled with particularity, “identify[ing] the specific who, what, when, where and how of the material misrepresentation or omission committed before the PT0.” Id. at 14 (citing Exergen v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1328 (Fed. Cir. 2009). The “who” identified by Illumina were the specific applicants and prosecution counsel. Id. at 14. “What” information was purportedly misrepresented to the PTO was the date of the applicants’ reduction to practice. Id. at 14-15. The “when” identified was the date of the declaration in question as well as “the actions the PTO took before and after the filing of that declaration.” Id. at 15. Illumina identified the declaration as “where” the misrepresentation occurred, and detailed “how” the declaration and purported misrepresentation resulted in the PTO’s issuance of the patents. Id. at 15-16.
Cornell responded that the proposed pleading failed to plead that the declaration was material and that the persons identified had specific intent to deceive the PTO. Id. at 16. Regarding materiality, Cornell pointed to evidence “inconsistent with defendant’s allegations and reading of the [declaration].” Id. at 18-19. Judge Thynge determined, however, that at the pleading stage “plaintiffs’ evidence is irrelevant and the court can not address the merits of that evidence.” Id. at 19. Judge Thynge concluded, therefore, that Illumina sufficiently alleged that the declaration contained a material false or misleading misrepresentation. Id. Regarding intent to deceive, Cornell argued that “there can be no finding of deceptive intent, nor a reasonable inference of deceptive intent because [the applicants] testified they believed the declaration to be true at the time of filing and that [prosecution counsel] also testified he took steps to ensure that the inventors understood what the declaration, and the specific sentence at issue, meant before they signed the declaration.” Id. at 19-20. Judge Thynge noted that Cornell’s argument again “relies on assertions of fact requiring the court to address the merits of the evidence[.]” Id. at 20. Based on the allegations in the proposed pleading, Judge Thynge determined Illumina adequately pled specific intent. Id. at 20.
UPDATE: On January 10, 2017, Chief Judge Leonard P. Stark issued a ruling which did not adopt Magistrate Judge Thynge’s report and recommendation on Illumina’s motion to amend. Cornell University v. Illumina, Inc., C.A. No. 10-433-LPS-MPT (D. Del. Jan. 10, 2017). Judge Stark found that Illumina’s proposed amendment to add inequitable conduct was futile because “it is not reasonable to infer from the applicants’ statement that the applicants intended to mislead or deceive the PTO into believing that the applicants had both conceived and reduced to practice before the critical date. Instaed, the more plausible reading is that the applicants intended to convey to the PTO that they had conceived the invention prior to June 22, 1994, and had thereafter diligently reduced it to practice. This latter representation (if true) would be sufficient to enable applicants to swear behind the prior art references the Examiner had cited in rejecting the claims.” (all emphasis in original).