Wednesday, October 21, 2009

Submission of False Affidavit to PTO Does Not Support Inequitable Conduct Claim Without Allegations of Facts Sufficient to Infer Intent to Deceive

Plaintiff's motion for leave to amend its complaint to include a claim for inequitable conduct was denied even though the request was made shortly after plaintiff learned that one inventor submitted a false affidavit to the PTO. "[T]here is no allegation that the affiant at bar did not contribute to the invention, or that the application that matured into the [patent-in-suit] contains otherwise false representations. I certainly recognize that candor is the hallmark of the patent system and that false statements, about even ministerial acts, can have significance as to the survival of a patent in the review process. Nevertheless, I decline to allow an inequitable conduct claim to be pursued after the close of discovery when there are insufficient allegations of underlying facts from which I may reasonably infer that the material misrepresentation was made with a specific intent to deceive the PTO."

Robert Bosch LLC v. Pylon Manufacturing Corp., 1-08-cv-00542
(DED October 19, 2009, Memorandum Order) (Robinson, J.)

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