Inequitable Conduct Defense Dismissed Where Defendants Did Not Even Purport To Identify An Allegedly Fraudulent Document Submitted To The PTO

Inequitable Conduct Defense Dismissed Where Defendants Did Not Even Purport To Identify An Allegedly Fraudulent Document Submitted To The PTO

Zep Solar Inc. ("Zep") filed a patent infringement action against several defendants. Two of the defendants, Lightway Green new Energy Company, LTD ("Lightway") and Brightway Global LLC ("Brightway") answered and counterclaimed with an allegation of inequitable conduct. Zep moved to strike or dismiss the counterclaim and affirmative defense.

As the district court stated, "[i]n the fourth affirmative defense, Brightway and Lightway allege that '[t]he Complaint and the purported claim for relief therein is barred because the '537 Patent, and each claim thereof, is unenforceable due to inequitable conduct.' (Docket No. 49, Answer and Counterclaims for Relief at 7:26-27.) In their second counterclaim for relief, Lightway and Brightway alleged hat the '537 Patent is 'invalid and/or unenforceable for failing to meet the conditions of patentability including but not limited to hose specified in 36 U.S. C. Sections 1 et seq., including 35 U.S.C. sections 102, 103, 112, 199, 256 and 37 C.F.R. section 1.56.'"

Relying on the Federal Circuit decision in Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1318 (Fed. Cir. 2009), the district court noted that "[t]he essential elements of a claim of inequitable conduct under Federal Circuit law are: (1) an individual associated with the filing and prosecution of a patent application affirmatively misrepresents a material fact, fails to disclose material information, or submits false material information; and (2) the individual does so with the specific intent to deceive the U.S. Patent and Trademark office ("PTO"). Exergen, 575 F.3d at 1327 n.3. To plead the circumstances of inequitable...