More than a year has passed since the C.A.F.C. handed down its Exergen decision, holding that inequitable conduct is akin to conventional fraud and, therefore, must be pled in considerable detail. Apparently, not everyone has gotten the message. (ACQIS LLC v. Appro International, Inc. et al.)
ACQIS sued over half a dozen of the world’s largest corporations for patent infringement. In response, two of the defendants filed answers including affirmative defenses and counterclaims alleging that the patents-in-suit were unenforceable due to inequitable conduct; namely, that the patentee withheld key prior art references from the patent examiner during the prosecution of the patents.
ACQIS countered with a motion to strike the affirmative defenses and counterclaims on the grounds that they had not been pled with the requisite “particularity.” The “inequitable conduct allegations fail to identify ‘what’ claims and which limitations in those claims the withheld references are relevant to … and ‘how’ the examiner would have used that information in assessing the claims patentability.” The defendants responded that the Exergen pleading standard did not apply where there had been no opportunity to take discovery and that they had provided, in an attachment to their brief in opposition to ACQIS’ motion, further detail as to the applicability of the allegedly withheld references.
"Not good enough," said the judge. “[G]reater specificity is required within Defendants’ actual pleadings.” (emphasis added) The Court gave the Defendants fifteen days to amend their pleadings.
THE LESSON TO BE LEARNED: When the case law says pleadings must be specific, MAKE THEM SPECIFIC.