Failure to Disclose Non-Prior Art May Support Inequitable Conduct Claim

The court denied plaintiffs' motion to dismiss defendant's inequitable conduct claim for failure to plead with particularity. "Plaintiffs . . . argue that [defendant's counterclaim] is insufficiently pleaded because [plaintiff] observed the [two cited devices] four years after [plaintiffs'] application was filed and, therefore, Defendant failed to allege prior art. However, information material to the Patent Office 'is not limited to prior art, but 'embraces any information that a reasonable examiner would be substantially likely to consider important in deciding whether to allow an application to issue as a patent.’ Defendant alleged [plaintiff] had a duty to disclose the information he obtained regarding the [two devices] and that [the patent-in-suit] would not have been issued had Defendant disclosed that information. These allegations are sufficient to allege that Defendant did not disclose material information, regardless of whether that information involved prior art."

Smith, et. al. v. Garlock Equipment Company, 5-13-cv-00104 (MOWD July 1, 2013, Order) (Fenner, J.).