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Judge Robinson denies motion for leave to add inequitable conduct claims and defenses


In a recent order, Judge Sue L. Robinson denied defendants’ motion for leave to file a second amended answer that would include inequitable conduct counterclaims and affirmative defenses.  Carrier Corp. v. Goodman Global, Inc. et al., C.A. No. 12-930-SLR (D. Del. June 19, 2014). With respect to its inequitable conduct allegation, defendants claimed that the Aquasmart HVAC system (“Aquasmart”) constituted prior art to the patent-in-suit, and the inventors “misrepresented and omitted information regarding Aquasmart to the USPTO during the prosecution” of the patent-in-suit.  Id. at 2.

Judge Robinson noted that defendants filed their second amended answers “ten months after the deadline to amend the pleadings and two months after the close of fact discovery,” and that a “certain prejudice to plaintiff is inherent on [such a] timeline.” Id. at 4 (quoting Asahi Glass Co., Ltd. v. Guardian Indus. Corp., 276 F.R.D. 417, 420 (D. Del. 2011)). Accordingly, under Fed. R. Civ. P. 16(b)(4),  defendants were required to show “good cause” for the Court to grant  leave to amend. Id.

Finding that defendants failed to show good cause, Judge Robinson denied defendants’ motion. Specifically, Judge Robinson explained that defendants’ inequitable conduct allegation “rests on a document produced nearly seven months prior to the filing of the motion for leave to file second amended answers, as well as upon publicly available documents [defendants] discovered independently.”  Id. Further, defendants “did not ask the inventors about Aquasmart during their depositions.”  Id.  Taken together, Judge Robinson concluded that “[t]he timing of [defendants’] motion, coupled with previously produced discovery and publicly available documents relating to Aquasmart, negate the argument for good cause.” Id.

Judge Robinson also dismissed defendants’ motion to file supplemental briefing related to inequitable conduct as moot, as that motion related only to a patent that was dismissed from the suit by stipulation. Id. at 5 n.4; 1-2 n.1.

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