The opinion of the court was delivered by: Hon. Faith S. Hochberg
This matter comes before the Court upon Plaintiff Teva Women's Health, Inc.'s ("TWH") Motion to Dismiss Defendant Watson's inequitable conduct counterclaim pursuant to Fed. R. Civ. P. 12(b)(6)*fn1 and to strike Watson's Affirmative Defense pursuant to Fed. R. Civ. P. 12(f);*fn2 and Defendant Watson having filed an opposition to the motion; and the Court having considered the parties' submissions and decided this matter without oral argument pursuant to Fed. R. Civ. P. 78;
and it appearing that in support of its inequitable conduct counterclaim and affirmative defense, Watson claims that "while obtaining the presently asserted '545 patent, TWH's patent attorneys and other representatives intentionally withheld numerous material documents from the U.S. Patent and Trademark Office ("USPTO"), all of which were produced to TWH during TWH's ongoing patent litigation in Nevada against Watson alleging infringement of the closely- related '969 patent. The withheld litigation documents explain why the invention claimed in the '545 patent is obvious in light of the prior art;"
and the Court noting that each person involved in filing and prosecuting a patent application has a duty of good faith in dealing with the USPTO;*fn3
and the Court noting that TWH argues that the inequitable conduct counterclaim should be dismissed, and the affirmative defense struck, because they fail to meet the pleading standard that Federal Rule of Civil Procedure 9(b) mandates for claims of inequitable conduct;
and the Court noting that in 2009 the Federal Circuit held that inequitable conduct is analogous to fraud, which under Fed. R. Civ. P. 9(b) must be pled with particularity, see Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1328 (Fed. Cir. 2009);*fn4
and the Court finding that Watson's allegations do not adequately allege inequitable conduct under Exergen because under the Fed. R. Civ. P. 9(b) pleading standard, Watson, inter alia, has not sufficiently identified the individuals involved or the information withheld and why it was material, nor has it alleged sufficient facts to support TWH's deceptive intent;
and the Court finding that Watson fails to identify "who" committed the alleged inequitable conduct;
and the Court further finding that Watson fails to indicate "where" the material information can be found in the documents they claim were withheld from the USPTO;
and the Court finding that Watson fails to specify "what" claims the withheld information was material to;
and the Court also finding that Watson fails to explain "why" the withheld information is material or "how" it would have been used by the USPTO in assessing patentability;
and the Court further finding that Watson fails to allege that anyone who failed to disclose information to the USPTO acted with the intent to deceive the USPTO,
IT IS THEREFORE on this 27th day of October, 2010,
ORDERED that Plaintiff's Motion to Dismiss Defendant Watson's inequitable conduct counterclaim pursuant to Fed. R. Civ. P. 12(b)(6) and to strike Watson's Affirmative Defense pursuant to ...