Judge Richard G. Andrews recently denied a defendant’s motion for summary judgment of no unenforceability for inequitable conduct. St. Jude Medical, et al. v. Volcano Corporation, C.A. No. 10-631-RGA (D. Del. Feb. 12, 2014). Defendant had requested summary judgment either because there were no disputed material facts, or alternatively, because “even if there is a disputed material fact . . . [defendant] states that [even if inequitable conduct occurred] as a matter of law the patent-in-suit, as a ‘great-grandchild’ of the ‘tainted’ patent is too distantly related to be rendered unenforceable.” Id. at 1.
While the Court found the alternative argument “novel,” it concluded that “it would be better framed if [the Court] decided whether there actually was any underlying inequitable conduct.” Id. The Court observed that while it had “seen the inventor testify twice before,” it “would like to see him testify on the matters framed by this motion, since [the] judgment on his credibility is likely to be dispositive, and [the Court could not] make a credibility determination on a summary judgment motion.” Id.